[Patentpractice] Would assignment affect patent validity?

Mon Jun 9 15:13:55 UTC 2025

I agree with David.

It seems that the basic question is who owns a patent assigned by the inventors to COMPANY when the actual name of the entity is COMPANY PTY LTD? I think this is a contract law issue, which would be highly state/country specific.

Scott Nielson

801-660-4400

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of David Boundy via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Monday, June 09, 2025 7:18 AM
To: Katherine Koenig <katherine at koenigipworks.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] Would assignment affect patent validity?

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<mailto: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 --> 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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