[Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment

Fri Oct 10 19:12:27 UTC 2025

I think a bankruptcy trustee or other fiduciary is a “legal representative” and not a “grantee”. Therefore, this protects the estate of the Assignee.

The better question is why, in an “unencumbered” assignment, is the assignment limited by “for Assignee’s own use and benefit and for the use and benefit of its successors, assigns or other legal representatives.”  What negotiation led to this limitation?  For example, if the assignee files a disclaimer, is that binding on the assignor?

Very truly yours,

Steven M. Hoffberg

Hoffberg & Associates

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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 <mailto: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 <mailto: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 <mailto: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 <mailto:patentpractice at oppedahl-lists.com> 
Cc: Suzannah K. Sundby <suzannah at canadylortz.com <mailto: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?

 <http://www.linkedin.com/in/ssundby/> Suzannah K. Sundby | Partner

 <http://www.canadylortz.com/> canady + lortz LLP

1050 30th Street, NW

Washington, DC 20007

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F: 202.540.8020

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