[Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment

Sat Oct 11 19:45:42 UTC 2025

The clause "successors, assigns or other legal representatives” is a non
sequitur.  My successors are not my legal representatives.  My assigns (aka
assignee) is not my legal representative. Rick

On Sat, Oct 11, 2025 at 2:43 PM David Boundy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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?>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>

-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com;
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20251011/b55385d5/attachment.html>