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

[Sarah Adriano]

Thanks Rick!

CONFIDENTIALITY NOTICE--This email is intended only for the person(s) named in the message header.  Unless otherwise indicated, this email contains information that is confidential, privileged and/or exempt from disclosure under applicable law. If you have received this message in error, please notify the sender of the error and delete the message.  Even if you are an intended recipient of this E-Mail, the author requests that you not forward it to any other person without written prior consent. E-Mail is covered by the Electronic Communications Privacy Act, 18 U.S.C. Section 2510-2521 and is legally privileged. Thank you.

From: Patentpractice [mailto:patentpractice-bounces at oppedahl-lists.com] On Behalf Of Rick Neifeld via Patentpractice
Sent: Monday, August 26, 2024 12:39 PM
To: patentpractice at oppedahl-lists.com
Cc: Rick Neifeld <rneifeld at neifeld.com>
Subject: Re: [Patentpractice] Assignment of US National Phase of foreign-origin PCT

Carl's posts are always engrossing, and often funny. Thank you, Carl.

As to the "married" issue and patent rights, that has been an ongoing issue from some years.

Long ago, when that legal issue arose, I  drafted, for corporate use, a form to help shore a company's inventive rights of prospective and ongoing employees of a company.  This was a form for execution by the spouse of the prospective/ongoing employee's spouse, identifying consideration for surrendering community rights in inchoate IP to the company, and "automatically assigning" (per Federal Circuit, automatic assignment law) those rights to the company upon their creation by the employee spouse.   But I do not think any of the companies I worked implemented a practice of using that form.

I have attached one version of that form.  Rick





On 8/21/2024 6:23 AM, Carl Oppedahl via Patentpractice wrote:

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<mailto:katherine at koenigipworks.com>

[cid:image001.jpg at 01DAF7B5.54989D00]
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/20240826/f4ec7402/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 2839 bytes
Desc: image001.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240826/f4ec7402/attachment.jpg>