[Patentpractice] Assignment of US National Phase of foreign-origin PCT

Katherine Koenig katherine at koenigipworks.com
Wed Aug 21 01:51:37 UTC 2024


Hi everyone,

A FA has asked me to file the US National Phase application of a PCT application (RO/GB, with two GB priority applications).  They've also asked me to send an Assignment of the US application for signature.

My brain is hanging up on this for some reason - does it make sense (would it be unauthorized practice) for me to send them a US assignment of a US patent application, if the applicant and inventor are both in the UK?  Would the contract be governed by UK law, and therefore I couldn't prepare it for them?  I've asked the FA for a copy of any assignment that's already been made, but I've so far only received the request to prepare one for the US.  If they're unable to send me prior assignment(s), would a better approach be to prepare a confirmatory assignment (but what if I don't know the terms of prior assignment(s))?

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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