[Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment

Sun Oct 12 23:59:39 UTC 2025

That makes sense for a power of attorney, but not for an assignment.
Ownership rights shouldn't automatically flow to those representatives.

On Sun, Oct 12, 2025 at 7:38 PM <steve at hoffberglaw.com> wrote:

> Lexis AI provides the following explanation of “legal representatives”:
>
>
>
> Under U.S. law, in the context of an assignment of rights clause that
> refers to "successors, assigns, or other legal representatives," the term
> "legal representatives" is generally interpreted to include individuals or
> entities who stand in the place of another with respect to their property
> or legal interests. This can encompass executors, administrators, trustees
> in bankruptcy, or other fiduciaries who are appointed by law to manage the
> legal affairs of another. It may also include assignees or agents who have
> been granted authority to act on behalf of another, either by operation of
> law or through a legal act such as an assignment
>
>  Bowles v. Cardinal Cutlery Corp., 69 F. Supp. 435, New York Mut. Life
> Ins. Co. v. Armstrong, 117 U.S. 591, Merritt v. United States (In re Camp
> Lejeune Water Litig.), 719 F. Supp. 3d 486.
>
>
>
> The U.S. Supreme Court in Mutual Life Insurance Co. v. Armstrong clarified
> that "legal representatives" is not necessarily restricted to personal
> representatives of a deceased individual but is broad enough to include all
> persons who, with respect to property, stand in the place of the original
> party and represent their interests, whether by their act or by operation
> of law
>
>  New York Mut. Life Ins. Co. v. Armstrong, 117 U.S. 591, Merritt v. United
> States (In re Camp Lejeune Water Litig.), 719 F. Supp. 3d 486. Similarly,
> in  Louisville Trust Co. v. Ky. Nat. Bank, 102 F. 442, the court emphasized
> that legal representatives are those appointed by law, such as executors,
> administrators, or trustees in bankruptcy, distinguishing them from
> voluntary assignees under common law
>
>  Louisville Trust Co. v. Ky. Nat. Bank, 102 F. 442.
>
>
>
> In the context of the Lanham Act, the term "legal representatives" is
> defined to include those who act on behalf of a registrant or applicant,
> such as successors, assigns, or agents, and is often used to ensure that
> the rights and obligations of the original party are carried forward by
> their legal representatives
>
>  Fed. Treasury Enter. Sojuzplodoimport v. SPI Spirits Ltd., 726 F.3d 62,
> 15 USCS § 1127. This interpretation aligns with the broader understanding
> of the term across various legal contexts.
>
>
>
> Therefore, in the specific context of an assignment of rights clause,
> "legal representatives" of the assignee would include those who are legally
> authorized to act on behalf of the assignee, such as executors,
> administrators, trustees, or agents, depending on the circumstances and the
> nature of the assignment
>
>  Bowles v. Cardinal Cutlery Corp., 69 F. Supp. 435, Merritt v. United
> States (In re Camp Lejeune Water Litig.), 719 F. Supp. 3d 486, Louisville
> Trust Co. v. Ky. Nat. Bank, 102 F. 442.
>
>
>
> 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/
>
>
>
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>
> *From:* Rick Neifeld <richardneifeld at gmail.com>
> *Sent:* Saturday, October 11, 2025 3:46 PM
> *To:* For patent practitioners. This is not for laypersons to seek legal
> advice. <patentpractice at oppedahl-lists.com>
> *Cc:* steve at hoffberglaw.com; David Boundy <DavidBoundyEsq at gmail.com>
> *Subject:* Re: [Patentpractice] Exemplary Nunc Pro Tunc Patent Assignment
>
>
>
> 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/
>
>
>
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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>
> 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
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> T: 202.486.8020
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> F: 202.540.8020
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> suzannah at canadylortz.com
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> www.canadylortz.com
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