[Patentpractice] inventor address on patent assignment

Tue Nov 21 06:01:09 EST 2023

My apologies for any confusion I may have caused by not being more specific. In penance I make the following comments answering, I hope, some of the questions.

Pre-filing activity

In the EPO no inventor assignment is required. All that the applicant need do, so far as the EPO is concerned, is file a declaration of inventorship containing a statement indicating the origin of the applicant’s right to the European patent (Article 81 EPC). The EPO do not verify this (Rule 19)

If the application is a PCT application the EPO do not require even these formalities if the inventor has been named at the PCT stage.

In short, the EPO don’t care about the derivation of the invention, provided someone is named as inventor.

If there is any challenge to the right to the invention it has to be before the national court having jurisdiction as determined by the Protocol on Recognition https://www.epo.org/en/legal/epc/2020/prorecog.html - and under Article 6 of that protocol, for US applicants the German courts have jurisdiction.

After filing activity

If the application is assigned, under Article 72 “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.”  This had been taken to mean handwritten signature, but a practice notice from the EPO https://www.epo.org/en/legal/official-journal/2021/11/a86.html indicated that a Presidential decision concerning electronic signature on documents filed with the EPO, would also permit “qualified electronic signatures” to be used on assignment documents.

It is this practice notice that has been found improper by the Boards of Appeal in decision https://www.epo.org/en/boards-of-appeal/decisions/j230005eu1. Accordingly at present no electronic signatures should be accepted by the EPO on assignment documents, pre or post-grant [NB the EPO have very limited ability to accept assignments post-grant – national office requirements vary considerably].

Specific questions

Are no electronic signatures okay?  CORRECT – NO ASSIGNMENT SIGNED ELECTRONICALLY WILL BE RECORDED BY THE EPO
Not Docusign-type signatures? CORRECT
What is a "qualified electronic signature," and is that okay? Article 3(12) of this document contains the definition the EPO are working on “mutatis mutandis”  https://eur-lex.europa.eu/legal-content/EN/TXT/?uri=uriserv%3AOJ.L_.2014.257.01.0073.01.ENG. I hate mutants. NOT OK FOR AN ASSIGNMENT OF THE APPLICATION

Does this requirement only apply to transfers once already in the EPO?  YES
Or will it be applied to all signatures (on assignments) used to reach the EPO? THERE IS HARDLY EVER A NEED FOR INVENTOR ASSIGNMENTS TO REACH THE EPO – AND THEY DON’T CARE ANYWAY – AND UNDER RECENT DECISION G1/22 IT SEEMS THAT THEY ARE EXPANDING THE “NOTHING TO DO WITH ME” APPROACH.

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? NO.

Final comments

This would probably have been solved if the EPO had implemented a specific rule defining electronic signatures, or giving the President the power to define electronic signatures, but this did not happen and instead a shortcut was used. Of course, rule changes attract scrutiny, but this is possibly the least contentious matter on which a rule change could have been asked for.  While the EPO have on occasion ignored inconvenient decisions of the Boards of Appeal, this is one where the effect on practice is already evident. Let’s hope they can fix it soon.

Jim Boff

[Armstrong Teasdale]
JIM BOFF
 |
PARTNER
DIRECT: +44 20 7822 8877<tel:+44%2020%207822%208877>
OFFICE: 38‑43 Lincoln's Inn Fields, London WC2A 3PE
 |
PHONE: +44 20 7539 7272<tel:+442075397272>
jboff at atllp.co.uk<mailto:jboff at atllp.co.uk>
 |
atllp.com<https://armstrongteasdale.com/>

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Patent Lawyer via Patentpractice
Sent: Tuesday, November 21, 2023 1:09 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.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.
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<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Orvis via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: "For patent practitioners. This is not for laypersons to seek legal advice." <patentpractice at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Orvis <orvispc at gmail.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>:
Link to the Sept 4, 2023 decision:
https://legacy.epo.org/boards-of-appeal/decisions/pdf/j230005eu1.pdf<https://urlsand.esvalabs.com/?u=https%3A%2F%2Flegacy.epo.org%2Fboards-of-appeal%2Fdecisions%2Fpdf%2Fj230005eu1.pdf&e=b2b682c0&h=e99b81b4&f=y&p=y>
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>

====================================================================
The information contained in this e-mail message is intended only for the personal and confidential use of the
recipient(s) named above. This message may be an attorney-client communication and as such is privileged and
confidential.  If the reader of this message is not the intended recipient or an agent responsible for delivering it to
the intended recipient, you are hereby notified that you have received this document in error and that any review,
dissemination, distribution, or copying of this message is strictly prohibited.  If you have received this communication
in error, please notify us immediately by e-mail, and delete the original message.
====================================================================
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto: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<mailto:jboff at atllp.co.uk>>; 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>
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
[Armstrong Teasdale]
JIM BOFF
 |
PARTNER
DIRECT: +44 20 7822 8877<tel:+44%2020%207822%208877>
OFFICE: 38‑43 Lincoln's Inn Fields, London WC2A 3PE
 |
PHONE: +44 20 7539 7272<tel:+442075397272>
jboff at atllp.co.uk<mailto:jboff at atllp.co.uk>
 |
atllp.com<https://urlsand.esvalabs.com/?u=https%3A%2F%2Farmstrongteasdale.com%2F&e=b2b682c0&h=8d3188af&f=y&p=y>
Phillips & Leigh combined with Armstrong Teasdale LLP, a 120-year-old U.S. law firm that has forged long-term relationships with clients large and small around the globe.

________________________________
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>

www.indyiplaw.com<https://urlsand.esvalabs.com/?u=http%3A%2F%2Fwww.indyiplaw.com%2F&e=b2b682c0&h=108844a6&f=y&p=y>

www.im-iplaw.com<https://urlsand.esvalabs.com/?u=http%3A%2F%2Fwww.im-iplaw.com%2F&e=b2b682c0&h=b10f27e7&f=y&p=y>

[cid:image002.png at 01DA1C61.FE7D2230]

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

-----

Umair A. Qadeer

Registered Patent Attorney

Qadeer LLC

312.248.3020

umair at qadeerip.com<mailto:umair at qadeerip.com>

CONFIDENTIALITY NOTICE: This e-mail, and any attachments thereto, is intended only for the designated recipient. It may contain legally privileged or confidential information and may be subject to the attorney-client privilege or other privilege. If you have received this e-mail in error, please immediately return it to the sender, delete it, and destroy any copies. If you have any questions, please contact the sender, Umair A. Qadeer, by e-mail at umair at qadeerip.com<mailto:umair at qadeerip.com> or by telephone at (312) 248-3020.

Sent from my T-Mobile 5G Device

********** PRIVATE AND CONFIDENTIAL**********
This transmission and any attached files are privileged, confidential or otherwise the exclusive property of the intended recipient, Armstrong Teasdale LLP or its subsidiaries. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is strictly prohibited. If you have received this transmission in error, please contact us immediately by email (admin at atllp.com<mailto:admin at atllp.com>) or by telephone (+1 800.243.5070) and promptly destroy the original transmission and its attachments. Opinions, conclusions and other information in this message that do not relate to the official business of Armstrong Teasdale LLP or its subsidiaries shall be understood as neither given nor endorsed by it. Armstrong Teasdale LLP and its subsidiaries may monitor email traffic data. Please read our Global Privacy Policy<https://urlsand.esvalabs.com/?u=https%3A%2F%2Fwww.armstrongteasdale.com%2Fprivacy&e=b2b682c0&h=1bb04bec&f=y&p=y> to find out how Armstrong Teasdale LLP and its subsidiaries process personal information.

Armstrong Teasdale LLP is a Missouri-registered limited liability partnership organised under the laws of the State of Missouri, USA. The London office of Armstrong Teasdale LLP is operated by Armstrong Teasdale Limited, a private limited company registered in England and Wales (Registration No. 08879988), that is authorised and regulated by the Solicitors Regulation Authority (SRA No. 657002). The registered office of Armstrong Teasdale Limited is 38-43 Lincoln's Inn Fields, London WC2A 3PE. Please review our International Legal Notices<https://urlsand.esvalabs.com/?u=https%3A%2F%2Fwww.armstrongteasdale.com%2Flegal-notices&e=b2b682c0&h=c2522538&f=y&p=y>.
-- Patentpractice mailing list Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com<https://urlsand.esvalabs.com/?u=http%3A%2F%2Foppedahl-lists.com%2Fmailman%2Flistinfo%2Fpatentpractice_oppedahl-lists.com&e=b2b682c0&h=9faa244c&f=y&p=y>
-- Patentpractice mailing list Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com<https://urlsand.esvalabs.com/?u=http%3A%2F%2Foppedahl-lists.com%2Fmailman%2Flistinfo%2Fpatentpractice_oppedahl-lists.com&e=b2b682c0&h=9faa244c&f=y&p=y>

********** PRIVATE AND CONFIDENTIAL**********
This transmission and any attached files are privileged, confidential or otherwise the exclusive property of the intended recipient, Armstrong Teasdale LLP or its subsidiaries. If you are not the intended recipient, any disclosure, copying, distribution or use of any of the information contained in or attached to this transmission is strictly prohibited. If you have received this transmission in error, please contact us immediately by email (admin at atllp.com<mailto:admin at atllp.com>) or by telephone (+1 800.243.5070) and promptly destroy the original transmission and its attachments. Opinions, conclusions and other information in this message that do not relate to the official business of Armstrong Teasdale LLP or its subsidiaries shall be understood as neither given nor endorsed by it. Armstrong Teasdale LLP and its subsidiaries may monitor email traffic data. Please read our Global Privacy Policy<https://www.armstrongteasdale.com/privacy> to find out how Armstrong Teasdale LLP and its subsidiaries process personal information.

Armstrong Teasdale LLP is a Missouri-registered limited liability partnership organised under the laws of the State of Missouri, USA. The London office of Armstrong Teasdale LLP is operated by Armstrong Teasdale Limited, a private limited company registered in England and Wales (Registration No. 08879988), that is authorised and regulated by the Solicitors Regulation Authority (SRA No. 657002). The registered office of Armstrong Teasdale Limited is 38-43 Lincoln's Inn Fields, London WC2A 3PE. Please review our International Legal Notices<https://www.armstrongteasdale.com/legal-notices>.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20231121/09684d23/attachment.htm>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.gif
Type: image/gif
Size: 1297 bytes
Desc: image001.gif
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20231121/09684d23/attachment.gif>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 6101 bytes
Desc: image002.png
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20231121/09684d23/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image224289.gif
Type: image/gif
Size: 1295 bytes
Desc: image224289.gif
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20231121/09684d23/attachment-0001.gif>