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

Wed Aug 21 10:45:18 UTC 2024

A kind listserv member points out to me that I misspelled the name of 
this Nobel laureate.  It is "Feynman".

On 8/21/2024 4:23 AM, Carl Oppedahl via Patentpractice wrote:
>
> 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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>> attachments, is privileged and confidential information intended only 
>> for the use of the individual or entity named above.  If //you are 
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>>
>
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