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

Thu Aug 22 19:02:50 UTC 2024

Another thing to never do -- electronic signatures.  An electronic
signature is no better -- no, it's worse -- than a plain old ink
signature.  Remember that if a signature isn't notarized, the burden is on
the patent owner to prove up authenticity of the signature.  So say the
inventor goes to work for a competitor, and all you've got is a Docusign
signature.  The inventor sure isn't going to testify "Oh yeah, I remember
Docusigning that.   It's genuine."  No.  You're going to have to roll this
stone up every inch of the hill all by yourself.  The only real argument or
verification you've got is an IP address.  Yeah right.  Suppose there's one
IP address for the whole building, or that the building has a floating IP
address that changes day to day.  How ya gonna prove that the signature
wasn't forged by the boss who was under the gun to get some patent filing
metric?

On Wed, Aug 21, 2024 at 9:20 AM David Boundy <PatentProcedure at gmail.com>
wrote:

> The one thing to NEVER do -- the US PTO used to have a form assignment.
> It was flamboyantly incompetent -- it didn't include necessary magic words
> for the U.S., and it granted a license to use to the attorney!   If the
> assignment you're using still has the language "use and behoof" and "for
> use of representatives" you're creating trouble!
>
> On Wed, Aug 21, 2024 at 9:05 AM Ed Welch via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> Perhaps WIPO should task itself with creating a “universal” assignment,
>> which endeavors to address the critical elements/requirements of the major
>> countries, and then seeks adoption of that assignment document by its
>> member countries.  Those that accept it are bound to it, at least with
>> respect to an International PCT patent application and its national phase
>> siblings; regardless of conflicting national language.  The form would not
>> be a requirement, but an option; whereby a US originated case may not adopt
>> its use to account for state laws.  Maybe I’m being too simplistic!
>>
>>
>>
>> Ed Welch
>>
>>
>>
>>
>>
>>
>>
>> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
>> Behalf Of *Carl Oppedahl via Patentpractice
>> *Sent:* Wednesday, August 21, 2024 6:23 AM
>> *To:* For patent practitioners. This is not for laypersons to seek legal
>> advice. <patentpractice at oppedahl-lists.com>
>> *Cc:* Carl Oppedahl <carl at oppedahl.com>
>> *Subject:* Re: [Patentpractice] Assignment of US National Phase of
>> foreign-origin PCT
>>
>>
>>
>> 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
>>
>>
>>
>> *Targeted Intellectual Property Strategy*
>>
>>
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