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

[Carl Oppedahl]

Yes I have had such questions from foreign associates a dozen times in 
the past thirty years, and I am always troubled by it.

Indeed think how this kind of project could blow up.  One reason it 
could blow up is that what is often at least implied in such a question 
is a hope that somehow you are smarter than anybody anywhere in the 
world, because you somehow know what ten or twenty sets of "magic words" 
need to be inserted into a proposed Assignment that would make it 
legally enforceable in the whole world, in every country of the world.

We already know this cannot possibly be within the abilities of any 
particular single practitioner, no matter how smart they are. I am told 
by some European practitioners that one of the requirements for an 
Assignment to work in some European countries is, the document is 
required to be signed not only by the Assignor but also by the 
Assignee.   I am also told that in some European countries, the mere 
fact of the inventor drawing paychecks from an employer might mean the 
rights are not owned by the inventor.  In which case maybe if someone 
were to stick a would-be Assignment under the nose of the inventor to 
sign might not lead to any rights being assigned because the inventor 
has no rights to assign.

I am told by some Japanese practitioners that in Japan, even if an 
American-style assignment were to be signed by a Japanese inventor, it 
probably does not settle the question of who owns what, because there 
are laws about how much compensation needs to be paid to the inventor.

Just within the US, we have questions that might make for a surprise 
about who owns what, questions that are state-specific within our 50 
states.  In California there have been cases where it made a difference 
whether or not the inventor was married at the time the invention was 
made.  I am absolutely sure that I lack competency to give legal advice 
in Louisiana not only because I am not admitted to practice there, but 
because that law is based not on US common law but instead is based upon 
the Napoleonic Code. There is some word "usufruct" that absolutely means 
something super important about property rights in Louisiana (see 
https://en.wikipedia.org/wiki/Usufruct#Louisiana ) but that does not 
arise in 48 other states.  Whatever "usufruct" means legally in 
Louisiana, I lack competence to say whether it does or does not apply in 
any particular would-be patent assignment

Think of the Assignments that we have all seen over the years, where the 
drafter of the document larded it with language requiring the hapless 
inventor to make lots of representations and warranties that the 
inventor owned all rights, and was of sound mind, and had consulted 
counsel, and was delivering good title, and conveyed it all to the 
Assignee.

Think of the Assignments we have seen where the document fails to recite 
any consideration.  Recall that in law school we were taught that 
depending on what jurisdiction we are drafting to meet, maybe it is 
required to recite consideration.  Maybe we need to recite at least One 
Dollar?  A peppercorn?  Think of the Assignments we have seen where the 
hapless inventor is being required to make a party admission that the 
(unspecified) consideration is "good and sufficient".

Now maybe your request from the FA is narrower.  Maybe they are only 
asking you to draft up a document that conveys "the US patent rights" or 
"the US designation from the PCT application".  Even then there are 
things to go wrong.  We have our fifty-states issue for one thing.  And 
even a document which superficially seems to assign only US rights will 
often have some word-creep that sort of purports to assign "the 
invention set forth in" or "the invention", which sounds a lot like 
assigning "everything" regardless of geography.

Sometimes I sort of give up and draft up something that is a mere 
quitclaim deed.  A document which, correctly understood and interpreted, 
amounts to nothing more than "who knows whether or not I have any rights 
in the US, but to the extent that I do, I hereby convey them".  Again is 
a peppercorn enough?  One US dollar?  An unspecified "good and 
sufficient consideration"?

One of the nice anecdotes in "Surely you're joking, Mr. Feinman" is the 
place where somebody demanded he sign some patent assignment at Los 
Alamos, and it said he was being paid one dollar, and he said he would 
only sign if he actually were to receive the dollar.  And of course the 
government bureaucracy and paperwork to carry out the payment of the one 
dollar took weeks or months to satisfy.

In the "Oppenheimer" movie there is the half-a-second bit of film, a 
throwaway quick action cut, that shows a fellow slapping away on bongo 
drums shortly after the big test explosion in New Mexico.  That's a true 
story and it was Feinman.

Anyway, yes, I don't even think I could draft a document that I could 
promise would work in all fifty of the United States.  If I don't think 
I could do that, how could I possibly add to the mix the need to deal 
with whatever is different about the law when you get to foreign countries?

I was born in a place in New Mexico that is walking distance from the 
place where that first big test happened.  Thank goodness it was more 
than a decade later than the test.  But occasionally a friend or 
relative will ask whether this geography somehow explains one or another 
of my personality quirks.

On 8/20/2024 7:51 PM, Katherine Koenig via Patentpractice wrote:
>
> 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>
>
> /Targeted Intellectual Property Strategy/
>
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