[Patentpractice] Would assignment affect patent validity?

[Katherine Koenig]

Hi everyone,

I'm wondering if this situation is one of a faulty assignment / priority claim that could affect patent validity / ability to enforce:

AU application naming COMPANY as applicant --> PCT application claiming priority to AU application and naming COMPANY as applicant --> US application filed as bypass continuation to PCT application naming COMPANY as applicant.  US application is filed with a USPTO one-page form assignment to COMPANY (shows in the file wrapper coded as 3.73 statement, but no other executed document that I can see, no records turn up in the assignment recordation search).

During examination of the US application, the applicant is updated to COMPANY PTY LTD (corrected ADS and POA were filed).  However, I don't see that an assignment to COMPANY PTY LTD was recorded, and now the applicant doesn't match the applicant of the priority chain applications.

The applicant in the US was the same as that of the AU and PCT applications at the time of filing, so I don't immediately see a problem with the priority chain.  But does changing the applicant in the US application without recorded assignments have any effect whatsoever on the validity of the patent or the owner's ability to enforce it?  Since no assignment was recorded, is it true that COMPANY PTY LTD (I believe the correct way to identify the entity) wouldn't have standing to sue, which couldn't be corrected by nunc pro tunc assignment?

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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