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

[Rick Neifeld]

Kathy - I think you are hung up on the fact that you do not know the 
facts.  An assignment presupposes rights exist in one party and both 
parties desire to assign those rights to another party.
I guess you do not know (1) if a written assignment document has already 
been executed that transferred rights one party to another. Such as from 
a named inventor to a company.
I guess you do not know which law governs in case there is such a document.
I guess you do not know which law governs in case there is no such document.

I do see that the PCT application filed in RO/GB has "two GB priority 
applications." So it is almost certain that there is one or more written 
assignment documents executed prior to the date of the PCT filing that 
transferred ownership and the right of priority to the applicant named 
in the PCT application. But that is besides the point.

Normally, national stage filing orders specify the follow-on documents 
you will get, and normally that specification of documents answers your 
questions.  But if not, then the prudent thing to do is obtain the 
relevant facts from the FA.

(You will note that I did not address your choice of law related 
questions. Sorry.)


Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
Mobile: 1-7034470727
*Email: richardneifeld at gmail.com*
Web: https://neifeld.com/
This is ***NOT*** a confidential communication of counsel.

On 8/20/2024 9:51 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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