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

[Suzannah K. Sundby]

I do a US only assignment for foreign inbound cases*, which my foreign clients/associates understand (because I told them) that while their country of origin may have its own ownership laws which apply, the assignment for the US is needed for the USPTO to accept a Power of Attorney.

Note, not all foreign countries require an assignment for a company to be the owner/applicant.  For example, in some countries an employer automatically owns what their full-time employee invented during the scope of employment.  Thus a confirmatory assignment is meaningless because there was no assignment to confirm.

Imo, using US only assignment is best because one cannot assign what one does not own at the time.  That is, if already assigned or already owned by the owner/applicant, then no harm, no foul... it's just for POA purposes.

*Except for the rare few US provisionals that are foreign inbound... for these I tell them the necessity of an assignment and counter-signature requirements for, e.g., UK, and needing to record the assignment before claiming the benefit of the provisional.  And I leave it to them whether they want my US-based world-wide assignment or their own, etc. after telling them I am only competent as US laws and US-origin inventions.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Katherine Koenig via Patentpractice
Sent: Tuesday, August 20, 2024 9:52 PM
To: patentpractice at oppedahl-lists.com
Cc: Katherine Koenig <katherine at koenigipworks.com>
Subject: [Patentpractice] Assignment of US National Phase of foreign-origin PCT

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>

[cid:image001.png at 01DAF399.4BB15670]
Targeted Intellectual Property Strategy

The information contained in this communication, including any attachments, is privileged and confidential information intended only for the use of the individual or entity named above.  If you are not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any review, dissemination, distribution, or copying of this communication is strictly prohibited.  If you have received this communication in error, do not read it.  Please immediately reply to the sender that you have received this communication in error and then destroy all paper and electronic copies.  Thank you.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240821/591f50f3/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 7679 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240821/591f50f3/attachment.png>