[Patentpractice] inventor address on patent assignment

Tue Nov 21 08:53:20 EST 2023

Thank you for this thread, and the links.
As an aside, there are many things I think we can agree that Europe does
better than the US, but I respectfully submit that judicial opinions are
not one of them.
Having taken a class where we were expected to read many of these,
I almost always find them unfocused and verbose, especially when
compared to US judicial opinions. I wonder why that is--maybe because
European decisions spell out the alternative arguments in detail, whereas
US decisions leave that to the dissent??  But even so I think the
explanations
could be much better focused and streamlined so that the holding and
key points were easier to discern.  Just my 2 cents.

On Mon, Nov 20, 2023 at 8:07 PM Scott Nielson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Here is the money quote:
>
> 2.9 In conclusion, the Board, applying the general rule of interpretation
> pursuant to Article 31 VCLT to the term "signature" in Article 72 EPC, i.e.
> interpreting this term in good faith according to its ordinary meaning in
> the applicable context and taking account of the purpose of this legal
> provision, holds that this term - in the absence of a different definition
> in the Implementing Regulations (see point 2.11 below) - *must be
> understood as referring to a handwritten depiction of someone's name,
> written on the assignment "contract" referred to in Article 72 EPC. In the
> absence of any such handwritten signature, an assignment agreement does not
> comply with the formal requirements under Article 72 EPC and, under Rule
> 22(3) EPC, has no effect vis-à-vis the EPO.* It follows from Rule 22(3)
> EPC that it is beyond the EPO's jurisdiction whether or not such a
> contract, in cases of non-compliance with the requirements of Article 72
> EPC, also has no effect between the parties to the contract themselves. If
> necessary, this question must be decided by the competent national court
> according to the applicable law regulating the consequences of
> non-compliance with formal requirements for contracts.
>
> I can think of one assignment right off hand that was killed by this
> decision. It is one of those that was signed with Adobe sign, which tracks
> the history of the assignment (who opened it, etc.) and shows it was signed
> by the person indicated. It was difficult for the client to get everyone's
> signatures. It's going to be a PIA to get it signed again by hand.
>
> *Scott Nielson*
>
> 801-660-4400
> ------------------------------
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Orvis via Patentpractice <patentpractice at oppedahl-lists.com>
> *Sent:* Monday, November 20, 2023 6:00 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
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> 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> on
> behalf of Jim Boff via Patentpractice <patentpractice at oppedahl-lists.com>
> *Reply-To: *Jim Boff <jboff at atllp.co.uk>
> *Date: *Monday, November 20, 2023 at 6:44 PM
> *To: *"E. Victor Indiano" <vic at im-iplaw.com>, "James E. Lake" <
> jel at randalldanskin.com>, "patentpractice at oppedahl-lists.com" <
> 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> on
> behalf of E. Victor Indiano via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Sent:* Monday, November 20, 2023 11:13:58 PM
> *To:* James E. Lake <jel at randalldanskin.com>;
> patentpractice at oppedahl-lists.com <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
>
> 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>
>
>
>
>
>
>
>
>
>
>
> *From:* Patentpractice <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
> *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> *On
> Behalf Of *Umair A. Qadeer via Patentpractice
> *Sent:* Sunday, November 19, 2023 8:18 AM
> *To:* 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
>
>
>
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