[Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment

David Boundy DavidBoundyEsq at gmail.com
Fri Oct 10 17:58:19 UTC 2025 

The magic words are crucial.  Don't be the crash test dummy.

* "**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.*"

On Fri, Oct 10, 2025 at 1:53 PM Suzannah K. Sundby <suzannah at canadylortz.com>
wrote:

> :)  I took the best of what I liked from yours and Randall’s… and
> incorporated into my assignment template.
>
>
>
> This assignment agreement applies to the invention entitled:
>
> [TITLE]
>
> and which is found in:
>
> *[Application and filing date]*
>
> The PATENT PROPERTY assigned under this agreement is:
>
> The entire right, title, and interest for the United States and its
> territorial possessions and in all foreign countries in and to the
> invention identified above, any and all improvements thereof, and any legal
> equivalent thereof in a foreign country, the right to claim priority
> including the right to claim priority to any earlier patent applications
> for said invention, and, in and to, all Letters Patent to be obtained for
> said invention by the above application or any continuation, division,
> continuation-in-part, extension, conversion to 35 U.S.C. 111(a), or
> substitute thereof, and any reissue, reexamination, or extension of said
> Letters Patent, and all rights under all International Conventions for the
> Protection of Industrial Property, and the right to sue and recover for
> any past infringement, and where applicable, the right to file and/or
> prosecute any applications for said invention as Applicant and/or the right
> to have said Letters Patent issue with the Assignee as named Applicant.
>
> The following ASSIGNEE is the recipient of the Patent Property:
>
>
> *[ASSIGNEE NAME AND ADDRESS]*
>
> which is a Corporation/Entity of Delaware.
>
> The ASSIGNORS, in consideration of good and valuable consideration paid by
> the ASSIGNEE, receipt of which is acknowledged, agree that the ASSIGNORS
> hereby sold, transferred, and *assigned Nunc Pro Tunc effective [FILING
> DATE]*, to ASSIGNEE, its successors, assigns, and legal representatives,
> the PATENT PROPERTY.
>
> Each ASSIGNOR hereby acknowledges and confirms his obligation to assign
> and transfer to ASSIGNEE his entire right, title, and interest in the
> PATENT PROPERTY at the time the PATENT PROPERTY was effectively filed on
> [FILING DATE].
>
> Each ASSIGNOR hereby confirms that he did assign to ASSIGNEE the entire
> right, title, and interest in the PATENT PROPERTY as of [FILING DATE].
>
> The ASSIGNORS also hereby assign and transfer to ASSIGNEE any and all
> right, title, and interest in the PATENT PROPERTY that was not previously
> assigned.
>
> The ASSIGNORS hereby agree that no assignment, sale, agreement, or
> encumbrance has been or will be made or entered into which would conflict
> with this agreement.
>
> Further, the ASSIGNORS hereby agree to communicate to said ASSIGNEE, its successors,
> assigns, and legal representatives, any facts known to the ASSIGNORS
> respecting said invention, promptly provide upon request all pertinent
> facts and documents relating to said invention and said Letters Patent and
> legal equivalents as may be known and accessible to ASSIGNORS, testify in any
> interference, derivation, post grant review, inter partes review,
> litigation, or legal proceeding relating to the PATENT PROPERTY, sign all
> lawful papers, execute all divisional, continuation, substitute, renewal,
> reexamination, and reissue applications, execute all necessary assignment
> papers to cause any and all Letters Patent to be issued to said ASSIGNEE,
> make all rightful oaths and generally do everything necessary or desirable
> to aid said ASSIGNEE, its successors, assigns, and legal representatives,
> to obtain and enforce proper protection for said invention.
>
>
>
>
>
> 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
>
> Confidentiality Notice:  This message is being sent by or on behalf of a
> lawyer.  It is intended exclusively for the individual or entity to which
> it is addressed.  This communication may contain information that is
> proprietary, privileged or confidential, or otherwise legally exempt from
> disclosure.  If you are not the named addressee, you may not read, print,
> retain, copy, or disseminate this message or any part.  If you have
> received this message in error, please notify the sender immediately by
> e-mail and delete all copies of the message.
>
>
>
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> *On
> Behalf Of *David Boundy via Patentpractice
> *Sent:* Friday, October 10, 2025 1:42 PM
> *To:* David Boundy <DavidBoundyEsq at gmail.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] Exemplary Nunc Pro Tunc Patent Assignment
>
>
>
> 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
>
> Confidentiality Notice:  This message is being sent by or on behalf of a
> lawyer.  It is intended exclusively for the individual or entity to which
> it is addressed.  This communication may contain information that is
> proprietary, privileged or confidential, or otherwise legally exempt from
> disclosure.  If you are not the named addressee, you may not read, print,
> retain, copy, or disseminate this message or any part.  If you have
> received this message in error, please notify the sender immediately by
> e-mail and delete all copies of the message.
>
>
>
> --
> 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?>
>
>
>
> --
>
>
> <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?>
>


-- 


<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/20251010/fc242352/attachment.html>

More information about the Patentpractice mailing list