[Patentpractice] inventor address on patent assignment

Thu Nov 30 13:46:07 EST 2023

I love this list. This chain just made me look like I am on top of things.
I have learned so much just by watching over the years. Thanks all!

On Tue, Nov 21, 2023 at 11:13 AM Jim Boff via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> COMMENTS below
>
>
> [image: Armstrong Teasdale]
> JIM BOFF
>  |
> PARTNER
> DIRECT: +44 20 7822 8877 <+44%2020%207822%208877>
> OFFICE: 38‑43 Lincoln's Inn Fields, London WC2A 3PE
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> jboff at atllp.co.uk
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>   
>
> *From:* Patent Lawyer <patentlawyer995 at gmail.com>
> *Sent:* Tuesday, November 21, 2023 3:25 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* Jim Boff <jboff at atllp.co.uk>
> *Subject:* Re: [Patentpractice] inventor address on patent assignment
>
>
>
> Jim, thank you for your reply.
>
>
>
> Here’s the issue I am trying to figure out:
>
>
>
> In the US, inventions are owned by the inventors unless otherwise
> assigned.  (See 35 USC 261
> <https://urlsand.esvalabs.com/?u=https%3A%2F%2Fwww.law.cornell.edu%2Fuscode%2Ftext%2F35%2F261&e=b2b682c0&h=b8762f95&f=y&p=y>).
> [I’m sure someone will correct me on the exact language here.]
>
> *COMMENT* – No such presumption in Europe. The invention can belong to
> the inventor, their successor in title, or their employer depending on
> national law [Article 60 EPC].
>
>
>
>
>
> So, for a non-inventor applicant to file, the application (invention)
> should be assigned to that applicant.
>
> *COMMENT *– No such presumption in Europe, *anyone* can apply [Article 58
> EPC] they just can’t get a patent until they have met the (minimal)
> requirements of showing their right to apply.
>
>
>
> This is typically done in the US with an assignment document.
>
> Among other things, that assignment document will assign the right to
> claim priority.
>
> *COMMENT* – Excellent – failure to do this has led to problems in Europe
> in the past.
>
>
>
> Now, suppose that inventors assign to applicant and applicant files a PCT
> and that PCT enters the regional phase in Europe.
>
> The assignment of the right to claim priority is in the assignment
> document.
>
> If that assignment document is electronically signed, has there been no
> assignment of any rights (as far as the EPO is concerned)?
>
>
>
> *COMMENT *– the assignment of the priority right is an independent issue
> from assignment of the European patent application. Anything that was good
> under US law to effect the assignment of the priority right generally has
> effect so far as the EPO is concerned.
>
>
>
> Can the EPO deny a priority claim because an assignment document
> (including the assignment of the right to claim priority) was
> electronically signed?
>
> *COMMENT* – Not for that reason alone.
>
>
>
> Can someone now challenge the priority claim on a granted European patent
> (e.g., in an opposition) because the assignment of the right to claim
> priority was electronically signed?
>
> *COMMENT *– they can try, but the recent decision of the Enlarged Board
> of Appeal in G1/22
> https://link.epo.org/web/case-law-appeals/Communications/G1_22-G%202_22-Decision-of-the-EBA-of-10-October-2023.pdf
> erects a rebuttable presumption that the priority was properly transferred.
> The barrier to challenge at the EPO level has been raised considerably. Of
> course this does not alter the possibility that priority might be
> challenged in national proceedings or before the UPC, but most national
> courts are not as anally retentive as the EPO.
>
>
>
>
>
>
>
> *From: *Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Jim Boff 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: *Tuesday, November 21, 2023 at 6:03 AM
> *To: *"For patent practitioners. This is not for laypersons to seek legal
> advice." <patentpractice at oppedahl-lists.com>
> *Cc: *Jim Boff <jboff at atllp.co.uk>
> *Subject: *Re: [Patentpractice] inventor address on patent assignment
>
>
>
> 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
> <https://urlsand.esvalabs.com/?u=https%3A%2F%2Fwww.epo.org%2Fen%2Flegal%2Fepc%2F2020%2Fprorecog.html&e=b2b682c0&h=169d3248&f=y&p=y>
> - 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
> <https://urlsand.esvalabs.com/?u=https%3A%2F%2Fwww.epo.org%2Fen%2Flegal%2Fofficial-journal%2F2021%2F11%2Fa86.html&e=b2b682c0&h=d7ecd896&f=y&p=y>
> 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
> <https://urlsand.esvalabs.com/?u=https%3A%2F%2Fwww.epo.org%2Fen%2Fboards-of-appeal%2Fdecisions%2Fj230005eu1&e=b2b682c0&h=0546b920&f=y&p=y>.
> 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
> <https://urlsand.esvalabs.com/?u=https%3A%2F%2Feur-lex.europa.eu%2Flegal-content%2FEN%2FTXT%2F%3Furi%3Duriserv%253AOJ.L_.2014.257.01.0073.01.ENG&e=b2b682c0&h=81367858&f=y&p=y>.
> 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
>
>
>
>
>
>
>
>
>
>
>
>
>
>
>
> [image: Armstrong Teasdale]
>
> *JIM BOFF*
>
>  |
>
> PARTNER
>
> *DIRECT:* +44 20 7822 8877 <+44%2020%207822%208877>
>
> *OFFICE:* 38‑43 Lincoln's Inn Fields, London WC2A 3PE
>
>  |
>
> *PHONE:* +44 20 7539 7272 <+442075397272>
>
> 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>
>
>   
>
> *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> 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
> <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
>
>
>
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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
>
> [image: Armstrong Teasdale]
>
> *JIM BOFF*
>
>  |
>
> PARTNER
>
> *DIRECT:* +44 20 7822 8877 <+44%2020%207822%208877>
>
> *OFFICE:* 38‑43 Lincoln's Inn Fields, London WC2A 3PE
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>  |
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> *PHONE:* +44 20 7539 7272 <+442075397272>
>
> jboff at atllp.co.uk
>
>  |
>
> atllp.com
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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
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>
>
> 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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