[Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment

[David Boundy]

I just saw this after it's been in my form for 20 years.  Why on God's
green earth would an assignment convey a license to "representative" -- the
lawyers?  That's cuckoo.  I changed my form to "for the use and benefit of
its successors, assigns or other grantees."

On Fri, Oct 10, 2025 at 1:10 PM David Boundy <DavidBoundyEsq at gmail.com>
wrote:

> The essence of a nunc pro tunc assignment is that it's a present
> reaffirmation of a past tense assignment.  Probably the reason you're doing
> this is that the earlier assignment was goofed up somehow.  Never
> underestimate how, if you detect one flaw, there are others.  So you also
> want a present assignment of any residual that was missed at the time, and
> assigns the other appurtenant rights. I do that by a definition that
> includes the magic words "all rights of priority and to claim priority,
> the right to apply for and be granted a patent, the right of Assignee to
> make application in its own name, and all rights to sue for past, present,
> or future infringement under any of the aforesaid."
>
> 1.      *Confirmatory assignment*.  Each Assignor hereby confirms that
> the Assignor did assign to Assignee its entire right, title, and interest
> in and to <*whatever yoru defined term is--in mine, *the Invention> <*tailor
> the following words to your situation*> <by a signed writing on or about
> ___,> <as of the earliest of the date of conception, or the filing date
> or priority date of any patent application drawn to the Invention><within
> the scope of my employment obligation>.  Each Assignor hereby sells,
> assigns and transfers to Assignee its entire right, title, and interest in
> and to the Invention, for Assignee’s own use and benefit and for the use
> and benefit of its successors, assigns or other legal representatives.  Assignor
> hereby acknowledges an obligation of assignment and transfer of this
> invention to Assignee at the time the invention was made.
>
>
>
>
>
>
> On Fri, Oct 10, 2025 at 12:22 PM Randall Svihla via Patentpractice <
> patentpractice at oppedahl-lists.com> wrote:
>
>> Hi, Suzannah
>>
>>
>>
>> I use this language:
>>
>>
>>
>> For good and valuable consideration, the receipt and sufficiency of which
>> are hereby acknowledged, [Assignor] (herereinafter "Assignor"), agrees
>> that the Assignor hereby assigned Nunc Pro Tunc effective [date] to
>> [Assignee] the following [description of properties].
>>
>>
>>
>> Best regards,
>>
>>
>>
>> Randall S. Svihla
>>
>> NSIP Law
>>
>> Washington, D.C.
>>
>>
>>
>>
>>
>> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
>> Behalf Of *Suzannah K. Sundby via Patentpractice
>> *Sent:* Friday, October 10, 2025 12:12 PM
>> *To:* patentpractice at oppedahl-lists.com
>> *Cc:* Suzannah K. Sundby <suzannah at canadylortz.com>
>> *Subject:* [Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment
>>
>>
>>
>> Anyone have a template Nunc Pro Tunc assignment for a patent application,
>> please?
>>
>>
>>
>> Suzannah K. Sundby <http://www.linkedin.com/in/ssundby/> *|* Partner
>>
>> *canady + lortz** LLP* <http://www.canadylortz.com/>
>>
>> 1050 30th Street, NW
>>
>> Washington, DC 20007
>>
>> T: 202.486.8020
>>
>> F: 202.540.8020
>>
>> suzannah at canadylortz.com
>>
>> www.canadylortz.com
>>
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>
>
> --
>
>
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> *David Boundy *| Partner | Potomac Law Group, PLLC
>
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>
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>
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*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>*

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