[Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment

Fri Oct 10 19:14:48 UTC 2025

It is case law that "the right to sue for prior infringement is not
transferred unless the assignment agreement manifests an intent to transfer
this right"  Minco v. Combustion, citing Moore v. Marsh.  However, " all
rights to sue for pas" infringement does not specify expressly all remedies
attendant do the right to sue.  Reasonable royalty, lost profits, or
whatnot.

On Fri, Oct 10, 2025 at 2:04 PM Suzannah K. Sundby via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> Okay… Thanks!
>
>
>
> 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
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>
> *From:* David Boundy <DavidBoundyEsq at gmail.com>
> *Sent:* Friday, October 10, 2025 1:58 PM
> *To:* Suzannah K. Sundby <suzannah at canadylortz.com>
> *Cc:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>; David Boundy <
> DavidBoundyEsq at gmail.com>
> *Subject:* Re: [Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment
>
>
>
> 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.
>
>
>
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> *David Boundy *| Partner | Potomac Law Group, PLLC
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> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA  02459
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> Tel (646) 472-9737 | Fax: (202) 318-7707
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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
>
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Best regards
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Neifeld IP Law PLLC
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