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

Wed Aug 21 18:41:58 UTC 2024

Thank you to everyone to replied!  My thought was as David and Suzannah note – do the best you can, and if there’s anything that contradicts the first assignment or purports to make a transfer of something that’s already been assigned, it’ll just be disregarded.  But at least we have something to record with the USPTO.

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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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Patentpractice
Sent: Wednesday, August 21, 2024 8:39 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <PatentProcedure at gmail.com>
Subject: Re: [Patentpractice] Assignment of US National Phase of foreign-origin PCT

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<mailto: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.

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Katherine Koenig via Patentpractice
Sent: Tuesday, August 20, 2024 9:52 PM
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Cc: Katherine Koenig <katherine at koenigipworks.com<mailto: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>

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