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

[Jamie Sheridan]

Ricky –

As soon as I saw the name “Kathy” – I had to stop reading and check in with one of my colleagues. My inquiry:

“Do you know if Katherine Koenig has the nickname “Kathy” or if Rick just happens to know her better that I do?...”

The response:

“I know Katherine very well.  She is not a Kathy… she’s a Katherine like I am a…[cue up “Dragnet” – the names are changed to protect the innocent]…”

“I dare you to write a reply and call him “Ricky”…”

So, even though I’m wasting the bandwidth of this Listserv, I feel that names are important and I could not resist taking the dare.

Thank you for indulging me and I hope that you forgive me for sending this message as we do not personally know one another.

All the best,
-- Jamie

James A. Sheridan | Registered Patent Attorney | Member Manager | Sheridan Law LLC
14143 Denver West Parkway, Suite 100 | Golden, CO 80401 | T: 303-953-9083 x101 | F: 720-548-9810
jsheridan at sheridanlaw.com<mailto:jsheridan at sheridanlaw.com> | www.sheridanlaw.com<http://www.sheridanlaw.com> | Connect on LinkedIn: www.linkedin.com/in/jamiesheridan<http://www.linkedin.com/in/jamiesheridan>

[signature_2050086367]


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Rick Neifeld via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Monday, August 26, 2024 at 1:26 PM
To: patentpractice at oppedahl-lists.com <patentpractice at oppedahl-lists.com>
Cc: Rick Neifeld <rneifeld at neifeld.com>
Subject: Re: [Patentpractice] Assignment of US National Phase of foreign-origin PCT
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<mailto: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>

[cid:part1.l3nXcehx.f0KiJWvA at neifeld.com]
Targeted Intellectual Property Strategy

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