[Patentpractice] inventor address on patent assignment

Mon Nov 20 20:08:43 EST 2023

I’m stilll trying to figure it out.  Are no electronic signatures okay?
Not Docusign-type signatures?
What is a "qualified electronic signature," and is that okay?
Does this requirement only apply to transfers once already in the EPO?  Or will it be applied to all signatures (on assignments) used to reach the EPO?

Inventor assigns first application to Company.  Company files PCT application (Company = applicant).  Company enters European regional phase off PCT.
Does it matter how the inventor signed the assignment to the company?

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Orvis via Patentpractice <patentpractice at oppedahl-lists.com>
Reply-To: "For patent practitioners. This is not for laypersons to seek legal advice." <patentpractice at oppedahl-lists.com>
Date: Monday, November 20, 2023 at 8:03 PM
To: "For patent practitioners. This is not for laypersons to seek legal advice." <patentpractice at oppedahl-lists.com>
Cc: Orvis <orvispc at gmail.com>
Subject: Re: [Patentpractice] inventor address on patent assignment

Thank you for sending the decision. Wow. 20 plus pages to decide if an electronic signature is really a signature. Apparently not.

Nov 20, 2023 7:45:00 PM Maureen Mazza via Patentpractice <patentpractice at oppedahl-lists.com>:
Link to the Sept 4, 2023 decision:
https://legacy.epo.org/boards-of-appeal/decisions/pdf/j230005eu1.pdf
Maureen
Maureen Mazza
Patent Agent
Bergman LLC
Intellectual Property Law

P.O. Box 400198
Cambridge, MA 02140
Tel:  781-648-8870
Fax: 781-648-8873
mmazza at bergmanco.com<mailto:mmazza at bergmanco.com>

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Patent Lawyer via Patentpractice
Sent: Monday, November 20, 2023 6:47 PM
To: Jim Boff <jboff at atllp.co.uk>; E. Victor Indiano <vic at im-iplaw.com>; James E. Lake <jel at randalldanskin.com>; patentpractice at oppedahl-lists.com
Subject: Re: [Patentpractice] inventor address on patent assignment
Please send a link to this EPO decision requiring handwritten signatures on assignments.
Thanks.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Jim Boff via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: Jim Boff <jboff at atllp.co.uk<mailto:jboff at atllp.co.uk>>
Date: Monday, November 20, 2023 at 6:44 PM
To: "E. Victor Indiano" <vic at im-iplaw.com<mailto:vic at im-iplaw.com>>, "James E. Lake" <jel at randalldanskin.com<mailto:jel at randalldanskin.com>>, "patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>" <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Subject: Re: [Patentpractice] inventor address on patent assignment
On top of which, a recent decision of the EPO Boards of Appeal overturned a decision of the EPO President, and held that only handwritten signatures were effective on assignments, not electronic signatures.
One more poop on the pile we have to shovel.
Jim Boff
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of E. Victor Indiano via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Monday, November 20, 2023 11:13:58 PM
To: James E. Lake <jel at randalldanskin.com<mailto:jel at randalldanskin.com>>; patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Subject: Re: [Patentpractice] inventor address on patent assignment

This is the first time you've received an email from this sender. Make sure this is someone you trust.

Something else that you should be aware of is that many foreign countries require the Assignee  to also execute the assignment. This is different than the US, which only requires the assignor to execute the assignment.

Vic Indiano

The Indiano Law Group, LLC

E. Victor Indiano

9795 Crosspoint Blvd. Suite 185

Indianapolis, IN 46256

Direct Phone:317-927-8465

E-Mail Vic at IM-iplaw.com<mailto:Vic at IM-iplaw.com>

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[cid:image002.png at 01DA1BED.5C2A0DF0]

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of James E. Lake via Patentpractice
Sent: Monday, November 20, 2023 5:59 PM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] inventor address on patent assignment

You will have to ask this question of each foreign associate in the states where your client may wish to file. Send them your draft assignment for review.

In my experience, it is very difficult to anticipate all of the possible informalities in a single assignment form that covers every foreign state. If you start with a proper assignment, then it should require the assignor to cooperate in preparing follow-on assignments complying to local rules. Depending on where you file, the biggest problem you may have is not enough originally-signed and notarized copies if you file in any states that are not parties to the Hague Convention on Apostilles https://www.hcch.net/en/instruments/conventions/specialised-sections/apostille<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.hcch.net_en_instruments_conventions_specialised-2Dsections_apostille&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=P8C-YGsnS8Dh5nmYuabWokBy6XWFpcRpPMLQrRWSk5A&m=DT3qTLLUoGx2EUVTRxcEBkeuJ1WY3pEEEKR4Jw55tLvR-ieZKLUuiFw80TyHCw9q&s=9AvV5dgblW72w2IZyZOXsH5qMV21UElGQaAuxHzs9NU&e=> or otherwise require an original. Some states also require a special form.

That said, I generally list the assignor residence city, state, and country only and, if necessary, mailing address as their office address, often the same as the assignee (corporate) residence address. When some foreign associate assignment forms I received asked for an assignor address, I used their office mailing addresses, the same as the assignee and have not received a complaint.

James Lake

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Umair A. Qadeer via Patentpractice
Sent: Sunday, November 19, 2023 8:18 AM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] inventor address on patent assignment

[External Email]

Hi all,

As most of you are likely aware, the USPTO does not require the assignor's address to be provided on a patent assignment.

Are any of you aware of any foreign jurisdictions which require the residence address of the assignor to be listed, or will providing an office address suffice?

We are trying not to have to go back and cure assignments for an invention that will likely have a lot of national phase applications, but we'd rather avoid having inventor home addresses become part of the public record.

Thanks in advance!

Best,

Umair

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Umair A. Qadeer

Registered Patent Attorney

Qadeer LLC

312.248.3020

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