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

Wed Aug 21 12:39:25 UTC 2024

I acknowledge all the issues Carl and Suzannah raise, but I don't think
that throwing up hands in despair is a terribly helpful approach to
actually representing a client.

In particular, the nettle must be grasped when I've got non-U.S. inventors
on a U.S. application.  Two reasons: (a) U.S. formalities, and (b) the
thing none of us know -- when does the law of country x *not* assign to our
client by operation of law?  When are there facts or law that I don't know
about such that an assignment is required in country x?   Once a document
solves those two problems, as a lawyer with a client to represent, I have
to assume that my document solves the other problems.

I have an assignment that does the best I can do with my limited licensure
and limited knowledge. I've had it reviewed by local counsel in the U.K.,
Germany, Japan, Korea, and India (I had them write some of the language, so
I'm not practicing foreign law).  The reps and warranties are limited -- "I
haven't assigned this particular Brooklyn Bridge before", but not "I own
the Brooklyn Bridge" or "This assignment conveys good title."   I get the
inventor(s) to sign it, and I record it in the U.S.  If this application
changed hands at any time in its first 30 months, I include it in the PCT
file history (else I let the U.S. chain of assignment do the work, since,
as mentioned above, in all likelihood, initial ownership vested in the
employer anyway).

If it assigns rights that the inventor doesn't currently own to assign, or
assigns future inventions in a country that doesn't allow assignment of
future inventions, what of it.  Severability clause.  No harm no foul.

David

On Wed, Aug 21, 2024 at 7:18 AM Suzannah K. Sundby via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>
> 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
>
>
>
> *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.*
>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>

-- 

*       [image: Cambridge Technology Law LLC]
<https://www.iam-media.com/strategy300/individuals/david-boundy>*

Listed as one of the world's 300 leading intellectual property strategists
<https://www.iam-media.com/strategy300/individuals/david-boundy>

Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

* David Boundy
<https://www.iam-media.com/strategy300/individuals/david-boundy>*

DBoundy at cambridgetechlaw.com <dboundy at cambridgetechlaw.com> / +1
646.472.9737 <%2B1%206464729737>

Cambridge Technology Law LLC
686 Massachusetts Avenue #201, Cambridge  MA  02139
http://www.CambridgeTechLaw.com
http://www.linkedin.com/in/DavidBoundy
mailing address
PO Box 590638
Newton MA   02459

This communication is a confidential attorney-client communication intended
only for the person named above or an authorized representative.  Any
dissemination, distribution, or copying of this communication is strictly
prohibited, whether by the author or recipients.  Any legal, business or
tax information contained in this communication, including attachments and
enclosures, is not intended as a thorough, in-depth analysis of specific
issues, nor a substitute for a formal opinion, nor is it sufficient to
avoid legal or other adverse consequences to the recipient. Unless you are
the addressee (or authorized to receive for the addressee), you may not
copy, use, disclose or distribute this communication or attribute to the
Firm any information contained in this communication. If you have received
this communication in error, please advise the sender by replying to this
message or by telephone, and then promptly delete it.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240821/2500da10/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 7679 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240821/2500da10/attachment.png>