[Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment

Sat Oct 11 18:41:11 UTC 2025

In a bankruptcy, the client is the bankruptcy estate.  The trustee is just
the trustee -- roughly analogous to the CEO.   The trustee is not the
client.

So an Assignment document that grants rights to "successors and assigns"
does the right thing in bankruptcy.

The purpose of  “for Assignee, and its successors and assigns" is to make
clear that the assignment is analogous to a fee simple, not an encumbered
fee tail.  I don't remember where I came across this, but I remember it
mattered once in my career.  Remember that patents aren't always a favored
form of property in every country your application will ever see.  So you
have to take the belt-and-suspenders approach to ensure that you assign ALL
rights under the law of EVERY country.

To take an example, intuitively, you'd think that mere assignment of a
patent would transfer all rights for past present and future infringement,
and all priority claim rights.  Not so.  You have to say so.

So for that reason, I include "successors and assigns."  But I can't see
why "representative" should be there (except that that was in the
brain-dead form assignment the PTO had on its web site in the 1990s.)

On Fri, Oct 10, 2025 at 3:12 PM <steve at hoffberglaw.com> wrote:

> 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
>
> 29  Buckout Road
>
> West Harrison, NY 10604
>
> (914) 949-2300 tel
>
> (845) 625-2547 fax
>
> steve at hoffberglaw.com
>
> https://www.linkedin.com/in/hoffberg/
>
>
>
> Emails and attachments received from us may be confidential and/or
> protected by the attorney-client privilege, as attorney work-product or
> based on other privileges or provisions of law. If you are not designated
> as an intended recipient of this email, do not read, copy, use, forward or
> disclose the email or any of its attachments to others. Instead,
> immediately notify the sender by replying to this email and then delete it
> from your system. We strictly prohibit any unauthorized disclosure,
> copying, distribution or use of emails or attachments sent by us to other
> than the intended recipient. This communication does not create any legal
> obligations on behalf of the sender, unless executed in a manner indicating
> an intent to be bound.
>
>
>
> *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/20251011/2ce9bbd3/attachment.html>