[Patentpractice] Would assignment affect patent validity?

[David Boundy]

Oh very interesting question.

The AU -> PCT link in the chain has to satisfy Paris Article 4.   As you
note, at least the public record suggests that that is valid.

The PCT -> U.S. national bypass has to satisfy § 120, which requires the
four continuities (inventorship, pendency, disclosure, priority/benefit
claim -- continuity of applicant is* irrelevant*).  That isn't something
you discuss, but I'd be very surprised if that's goofed up.

On the limited facts you give us, I agree that the relevant question is an
assignment chain that is "correct enough" to establish standing.  It's
important to draw the distinction between *assignment* and *recording*. If
the assignment is all ship-shape, then for *standing*, it doesn't matter
whether or not it was recorded.  The Assignment transfers ownership to the
right entity or it doesn't, whether or not it was recorded.  All that
recording does is protect against a subsequent transfer to a *bona fide*
purchaser for value.  Recording doesn't affect validity of the Assignment
itself.

If this is your client, I would ask a relevant legal authority for the *exactly
correct *name of the entity   (when I get a new client, I *always* go the
relevant state's Secretary of State Corporations page, and the get the
*exact* name.  I''d guess that 1/3 of my clients told me wrong when they
gave me the company name.   Get it *right*, including whether there's a
comma or not before "LLC" or "Inc."   Get it right right right.)  Then get
a *nunc pro tunc *assignment to the *right *entity, and record it.  Early
in my career, I had multiple cases (one for Digital Equipment Corp., one
for Philips, one for Bloomberg) where the assignment was goofed up, for
small misstatements of the company name.  The patent owner lost damages for
the period before the corrected assignment, or lost standing and had to
re-initiate the case (losing about 18 months of back-looking damages),
etc.   Get it *right*.



On Mon, Jun 9, 2025 at 8:53 AM Katherine Koenig via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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 à PCT application claiming
> priority to AU application and naming COMPANY as applicant à 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
>
>
>
> *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.*
>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>


-- 


<https://www.iam-media.com/strategy300/individuals/david-boundy>

*David Boundy *| Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

*dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
<http://www.potomaclaw.com>*

Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250609/06bed468/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 7679 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250609/06bed468/attachment.png>