patent assignment nunc pro tunc

IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and Copyright Law

March 22, 2023 By John DiGiacomo

Like any valuable business asset, patents, trademarks and copyrights can be sold, assigned and licensed. Indeed, assignment and licensing is common with respect to intellectual property. In legal terms, an “assignment” is a transfer of ownership, either full ownership or partial. In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning “now for then.”A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date.

For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc assignment provision might look like this:

Now, therefore, for good and valuable consideration, ASSIGNOR agrees that ASSIGNOR hereby assigned unto ASSIGNEE nunc pro tunc effective as of October 1, 2020, all right, title and interest in and to the May 1, 2017 trademark described herein … In testimony whereof, ASSIGNOR, has signed this instrument this 1st day of October 2020.”

In this example, the assignment is deemed to have been granted on May 1, 2017, but has an effective date of October 1, 2020.

In business terms, nunc pro tunc assignments are often used where past IP assignments are made verbally or via conduct. In the rush to get IP “to market,” it is not uncommon for assignments to be granted, but not reduced to writing. Nunc pro tunc assignments are also commonly used to bridge gaps in the “chain of title” for IP. This can happen when corporations and/or assets are sold, but proper paperwork is missing. Purchasers believe that they have ownership to certain patents, trademarks, or copyrights, but the missing documents cause “gaps” in the chain of title. These “gaps” can be cured by obtaining a nunc pro tunc assignment from the original owner of the IP. In the same manner, nunc pro tunc assignments are often used as part of settlements for litigation involving claims of patent, trademark and/or copyright infringement or disputes over ownership

For litigation purposes, nunc pro tunc assignments are often used to give a party legal standing to initiate litigation. To have “standing” to initiate litigation, a party must have some ownership interest in the patent, trademark or copyright. However, for courts, “standing” is based on the effective date of the assignment, not the earlier date listed in the nunc pro tunc assignment.

However, for other purposes, the earlier assignment date listed in the nunc pro tunc assignment is the credited date. For example, an assignment of a registered trademark must be recorded with the US Patent & Trademark Office (“USPTO”). This is done electronically. The assignment must be uploaded along with the proper recordation form and applicable fee. For the USPTO, the trademark assignment is based on the date designated for the assignment rather than the date of execution of the nunc pro tunc assignment.

So, when should you use a nunc pro tunc assignment for a trademark? The most common situations include:

When a trademark was previously assigned but not recorded – Sometimes, an assignment of trademark ownership may occur but the paperwork is not properly filed or recorded with the United States Patent and Trademark Office (USPTO). In this case, a nunc pro tunc assignment can be used to correct the oversight and retroactively assign the trademark to the new owner.
When the original assignment was not effective – A nunc pro tunc assignment can also be used to correct a defective assignment. For example, if the original assignment was not properly executed or lacked essential terms, the nunc pro tunc assignment can be used to correct those issues and make the assignment retroactively effective.
When there is a change in business structure – A nunc pro tunc assignment may be necessary when there is a change in the business structure of the trademark owner, such as a merger or acquisition. In this case, the new owner may need to retroactively assign the trademark to themselves to ensure that they have proper ownership and control over the trademark.
When there is a dispute over ownership – If there is a dispute over the ownership of a trademark, a nunc pro tunc assignment may be used to resolve the issue. This can occur when multiple parties claim ownership of a trademark, or when there is confusion over who actually owns the trademark.
When the trademark was abandoned – In some cases, a trademark may have been abandoned by the previous owner. If this occurs, a nunc pro tunc assignment may be used to assign ownership to the new owner retroactively. However, it is important to note that there are strict time limits for filing a nunc pro tunc assignment in these cases.

It is important to note that a nunc pro tunc assignment should only be used when there is a genuine need to correct an error or oversight in the assignment of a trademark ownership. It is not a tool to be used to cover up illegal or unethical behavior.

In addition, a nunc pro tunc assignment can be a complex legal process that requires the assistance of an experienced trademark attorney. The attorney can help ensure that the assignment is executed properly and in compliance with all legal requirements.

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A Dive into ‘Nunc Pro Tunc’

Understanding Nunc Pro Tunc in Legal Parlance

A phrase in Latin, ‘Nunc Pro Tunc,’ stands for “now for then.” However, it is also used as a term to mean correction of judicial orders. Using the same in terms of Intellectual Property Rights (IPRs) corresponds to the assignment of such assets.

Let’s Pick a General Example

The Nunc Pro Tunc assignment assumes the spotlight when a party back-dates an assignment to try to cure a standing defect. Consider Plaintiff A, who sues for the infringement of a right safeguarded by Patent Laws . Defendant B, upon research, uncovers that Plaintiff A does not actually own the same on account of some defect in the chain of title. Therefore, Plaintiff A then responds by getting the Nunc Pro Tunc assignment signed by back-dating the assignment to a date before the lawsuit was lodged and filed. To give you a head up: This does not work as a good legitimate practice in all jurisdictions.

Nunc Pro Tunc: In Business Parlance

For a trademark registered on 1 st January 2015, Nunc Pro Tunc assignment typically shall look like this:

“Now, therefore, for good and valuable consideration, the ASSIGNOR agrees that ASSIGNOR hereby assigned unto the ASSIGNEE Nunc Pro Tunc effective as of 1 st September 2022, all right, title, and interest in and to the trademark XXX bearing registration no:******. In testimony, whereof, the ASSIGNOR has signed this instrument on 1 st September 2022.”

Herein, the assignment is deemed to have been executed on 1 st January 2015; but is deemed to have been effective from 1 st September 2022.

In business terms, Nunc Pro Tunc assignments are usually used where past Intellectual Property (IP) assignments are made verbally or by mode of conduct. The same is not very unusual since it may so happen that proprietors keen to make an immediate move in the market may “leave for later” or may forget to reduce agreements in writing. In such scenarios, Nunc Pro Tunc assignments are commonly drawn and deduced to bridge the gaps in the “chain of title” for an IP asset. It can also happen when entities and/or assets are sold – but proper paperwork is misplaced. In such an event, purchasers often consider themselves as the obvious owners of such patents, trademarks, or copyright belonging to the former owner but the missing documents lead to ‘gaps’ in the chain of title. These ‘gaps’ can be cured by obtaining a Nunc Pro Tunc assignment from the original owner of the IP asset in favor of the later purchaser of the transaction. In the same manner, Nunc Pro Tunc assignments are often utilized to reach an amicable settlement in litigated matters involving claims over an IP asset, be it a patent, trademark, and/or copyright.

Nunc Pro Tunc: To Reach a Settlement in Litigation

For the purpose of litigation, Nunc Pro Tunc assignments are generally utilized to give a party a legal standing to initiate litigation, i.e., the right to sue or be sued. To have a legal ‘standing’ to initiate litigation, a party to the suit must have proof of rightful ownership or proof of title and/or interest in the patent, trademark, or copyright subject. However, as discussed earlier hereinbefore, for courts, ‘standing’ is passed based on the effective date of the assignment and not the earlier date listed in the Nunc Pro Tunc assignment.

Conclusion: An Acceptable Practice or Not?

It can be simply contemplated that where a non-owner or licensee is given the right to sue, it would give impetus to enmesh the judiciary in abstract legal battles while creating a risk of multiple litigations. It would also provide an incentive for parties to acquire assignment rights to expand their scope of operation and litigation. Inevitably, it would result in a delay in justice delivery and an increase in expenses. The same would defeat the cause of the judicial organ.

It is for this reason that in some countries, such Nunc Pro Tunc assignments are recorded, while in others, no acquiescence of retroactive effect assignments is admitted.

Documenting deeds of assignments after a transaction that has been assumed to be in effect is most certainly not a best practice and can affirmatively lead to several issues. However, it is the only way to attempt to fix an error that has occurred sometime in the past.

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Intellectual Property: Assignments and Transfers | Practical Law

Intellectual Property: Assignments and Transfers

Practical law practice note w-005-5845 (approx. 23 pages).

Federal Circuit Finds Nunc Pro Tunc Agreement Does Not Confer Standing

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Patent Assignment (Nunc Pro Tunc)

This precedent is a basic patent assignment by which the assignor assigns and/or confirms the assignment of a Canadian patent application, which assignment is to take nunc pro tunc effect (i.e., retroactive legal effect). This precedent includes practical guidance and drafting notes. Nunc pro tunc is a Latin expression meaning "now for then". Accordingly, nunc pro tunc patent assignments are often used to retroactively correct earlier patent assignments which may have contained errors in relation to information identified in them, such as the name of the assignor or the assignee. Nunc pro tunc patent assignments may also be used to fill gaps in the chain of title for patents or patent applications, as assets may often be sold or transferred without the necessary paperwork pertaining to transfers of intellectual property. For more information, see the practice notes: Patent Fundamentals and Transfer of Patents and Patent Applications, the checklists: Patent Assignment Checklist and ...

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Practice areas, benefits & limitations of uspto patent ownership records.

April 20, 2021

By: Brian T. Moriarty

Bloomberg Law

To evaluate a patent's legitimacy, whether it relates to litigation or a deal, one must first determine who owns the patent. This inquiry requires a visit to a far corner of the U.S. Patent and Trademark Office (PTO) known as the Assignment Recordation Branch—the patent world's version of a local county's recorder of deeds. The Assignment Recordation Branch keeps records of ownership of U.S. patents and applications, as it has done since Thomas Jefferson's days, except now the records are easily accessible through the internet.

The PTO Assignment Recordation Branch database is an important repository of patent records that should be reviewed by all parties that have or seek any interest in a patent. Interested parties should understand that the records filed with PTO are not vetted by the PTO, are not necessarily reliable, authentic, or complete, but are important evidence of ownership

These records are best viewed as a starting point and might be followed by additional actions to clarify ownership, such as through representations in deal documents or additional discovery in litigation. In sum, a party searching for patent ownership records at the PTO can gather valuable information searching the assignment database, but its search of the assignment database should be a start, not the end of the inquiry.

This article explores the value of and the significant limitations of the database.

Overview The PTO allows for the filing of assignments and other records that evidence current ownership, and it maintains records of prior owners. The PTO permits filing of records to fix flaws in ownership records. The PTO also allows the filing of other records that do not evidence present ownership but instead relate to potential future ownership rights or licensed patent rights.

The PTO's assignment database contains millions of records. It is a veritable social and business history of patent owners’ lives, often including records of birth and marriage, divorce and death of individuals; and mergers, acquisitions, sales, and dissolutions of corporate parties, and name changes. The records also reflect potential future ownership or limits on transferability, such as security agreements, notices of litigation, IRS tax liens, gifts, inheritances, and court orders. Records are filed by parties from virtually every country globally, and some non-countries, like Antarctica.

The patent assignment recordation statute, section 261 of the Patent Laws, provides some protection for current assignees against claims of other purchasers who fail to diligently record ownership records. In 2012, the section was amended to permit recordation of interests that are less than a present ownership interest. This amendment, however, did not provide any additional rights, benefits, or priorities for recording these lesser interests. The PTO noted that its database allows for “notification of equitable interests or other matters relevant to the ownership of a patent or application.”

Limitations Many records filed with the PTO seem to protect important rights but often fall short of expectations. For example, many technology companies pledge patents as collateral to secure funding. The lending bank obtains security interests in the patents and then files a security agreement with the PTO to attempt to enhance its security interests. While the filing of the security agreement with the PTO might give notice to others, it does not perfect the security interests. Only by filing a UCC-1 financing statement with a state regulator (not with the PTO) is a security interest perfected.

Another type of filing that often provides little value are nunc pro tunc agreements used to attempt to repair errors in the chain of title. A purchaser of a patent may realize that there is a flaw in the chain of title and seek to correct title by filing a “nunc pro tunc” assignment to retroactively fix the mistake. Courts have noted that a nunc pro tunc correction can operate to govern the relationship between the parties to the agreement, but such efforts are ineffective as attempts to rewrite history as to third parties. This approach echoes U.S. Supreme Court Justice Anthony Kennedy's comment in a related context that “the charming utility of the nunc pro tunc device cannot obscure its outright fiction.” Thus, traditional nunc pro tunc patent assignments may only act to signal that there is a flaw in patent ownership.

In 2020, the U.S. Court of Appeals for the Federal Circuit in Schwendimann v. Arkwright, created confusion about nunc pro tunc agreements. The court held that if a technically faulty assignment is repaired, but not replaced, under state laws under the doctrine of contract reformation, then by “virtue of the reformation, the written instrument was corrected nunc pro tunc to the point of assignment.” In other words, an assignment agreement that is reformed can have a retroactive effect, but a new nunc pro tunc assignment agreement cannot be retroactive. The likely result of the confusing decision may be the birth of a new PTO filing: “Assignment by Reformation.”

Further, all the records are not original records but are electronic copies that may or may not be authentic. The records are created by interested parties, not the PTO, and the PTO does not validate or verify any of the records. The PTO considers its act of adding records to the database to be “ministerial” and not a substantive review of rights. The party submitting the records does not sign an oath, attestation, or otherwise vouch for the validity of the records.

Also, no party has any legal obligation to file ownership records with the PTO assignment database. There are many ownership records filed with the PTO that are not filed in its assignment database, but instead are filed as part of the PTO's Patent Application Information Retrieval (PAIR) system that stores the records of the patent prosecution process. There are also patent owners who choose not to publicly file ownership records or who simply overlook the matter.

In addition, no one has any legal obligation to even review patent ownership records, with the exception of certain assignees who are charged with constructive knowledge of the current patent assignments. Thus, the PTO records in the assignment database are not necessarily complete, valid, or authentic. At best, courts presume the ownership records are valid and operable but are subject to challenge to overcome the presumption.

Brian T. Moriarty

Principal t. 609.937.7951 Email Brian

IP Litigation

APPLICATION FILING

Ownership transfer of intellectual property rights in general, what are assignments of intellectual property rights.

An assignment is the act of transferring ownership of the Intellectual Property Right from the assignor to the assignee. Often, the assignment document is simply referred to as the “assignment”. The two parties can be individuals or legal entities. Intellectual Property Rights typically need to be assigned on a country by country basis complying with the various national assignment requirements. However, international or regional Intellectual Property Right applications often can be assigned centrally before the respective international or regional authorities such as the respective international or regional patent or trademark offices. Examples for such authorities are the International Bureau handling International Patent Applications under the Patent Cooperation Treaty (PCT), the European Patent Office (EPO) handling European Patents and the European Union Intellectual Property Office (EUIPO, formerly named OHIM) handling European Union Trademarks (EUTM) and Registered Community Designs (RCD).

What IP rights can be assigned?

Most Intellectual Property Rights can be freely assigned in part or in its entirety between any assignor and assignee. Certain partial rights may be assignable separately and independently from the underlying IP right, for instance the priority right determining the time rank of an IP right.

What is required for valid assignments of Intellectual Property Rights?

National laws, rules and formalities apply for recordation of country by country assignments by a variety of national, regional or international recording authorities. When looking at a bigger Intellectual Property Rights family, a one fits all assignment fulfilling this wide variety of requirements is virtually impossible. Typically, national representatives should be retained for complying with this variety of requirements. If possible, some international or regional Intellectual Property Rights should be assigned centrally while still pending for avoiding the hassle of dealing with such wide variety of national requirements that may be required after the issue date of the international or regional Intellectual Property Right.

What are typical form requirements for assignments?

Assignments typically need to be made in writing and typically require the signatures of both the assignor and the assignee. In case of a legal entity, the signatory needs to be entitled to sign on behalf of that legal entity, typically an officer of the legal entity, or needs to have received the signatory authorization from such officer. Although in some countries the signature of the assignor only may suffice, more commonly, the signatures of both parties are required. It is good practice to assume that both signatures are required everywhere. The signatures are typically required in ink. As an alternative to filing the original with the signatures in ink, an increasing number of authorities have waived the requirement to file the original but accept copies, or when filed electronically, scans of the assignment document signed in ink. If not filed, the original should be kept in a safe place. Some countries may require notarization and maybe even require some form of legalization, e.g. “Apostille”, for effectively recording an assignment.

What assignment document content is typically required for assignments?

In most countries, the assignment document just identifies the right that is assigned and the parties, but some countries require a specific text using specific language. From a practical standpoint, a good way of looking at assignments from a formal point of view is to treat these like a contract, although the assignment may have comparatively little content in comparison to other types of contracts. A few authorities may require the use of a specific form.

Why are assignments important?

If the assignee likes to exercise certain rights, the assignment must be recorded. A proper assignment and recordation thereof may for instance be required for the assignee = applicant to act in the proceedings before the various authorities. The failure to properly assign and record may also result in enforceability delays of the assigned IP right by the assignee until recordation has been finalized. In some countries, this may cause significant enforceability delays. Also, a proper assignment is required for claiming priority rights. Further, it is helpful for the assignee to become an assignor for yet another assignment after the first assignment is recorded.

What is a “nunc pro tunc” assignment?

A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded.

What are the most common assignment deficiencies?

Although the assignment document has only limited content a variety of deficiencies may occur. Just to mention a few: The assignor may not be the owner of the assigned IP right at the date of assignment; the incorrect IP right is assigned; at least one of the signatories lacks signatory authorization; a required language or form is not used; certain assignment document form requirements are missed, formalities such as signatures in ink, notarization or legalization are missed; some recordation form requirements such as request and recordation fee payment are missed; the signature by one party such as the assignee is missed; the parties are not properly defined to be clearly identifiable, for instance due to incorrect name and/or address; or the date of the assignment is too late for taking certain legal effects.

What are the legal consequences of a deficient assignment?

Although it may be possible to overcome some consequences by correcting deficiencies without losing the initial assignment date, or time permitting simply by executing and recording a new assignment, in some cases these remedial measures may come too late. For example, for validly claiming priority rights, the priority right needs to be actually owned by the applicant of the later application within the priority time period. Unless recognizing nunc pro tunc assignments, an assignment after the priority period may come too late. The risk with assignments is that some deficiencies may not be noticed until it is too late to fix the problem. For this reason, assignment formalities should be observed scrupulously.

About author Alexander Schlee

Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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Introduction
Recent Case Highlights
Public Policies Limiting Patents
Under-Utilized Defenses
Who Decides What When?
a) general canons of construction
b) role of other claims
c) role of specification
d) role of prosecution history
e) role of prior art, experts, and extrinsic evidence
f) claim preamble
g) claim transition
h) method claims
i) non-method claims
j) particular claim language
Content And Form Of A Claim Construction
Relationship To Certain Defenses
a) whether sec. 112(6/f) treatment invoked
b) construction of sec. 112(6/f) claim element
c) relationship to claim differentiation
a) preamble
b) printed matter, instructions on use, mental steps
c) non-functional descriptive material
d) intended use
e) wherein and whereby clauses
f) intended result
g) process portion of product-by-process claim
h) source or process restrictions in product claim or product limitation
i) optional, conditional steps
j) input signals in a circuit
k) theory of operation
Non-Infringement
Expiration of Patent; Extension Of Term
Dedication to Public
a) sec. 112(6/f) element
b) product-by-process claim
c) reverse doctrine of equivalents
a) required evidence
b) matter of law restrictions
c) prosecution history estoppel
d) disclosure-dedication restriction
e) relationship to sec. 112(6/f)
Sec. 271(a) (Direct) Infringement Of Any Type Of Claim
a) "use" of claimed method
b) "offer to sell" a method
a) “makes” claimed invention
b) “uses” claimed invention
c) “sells” or "imports" claimed invention
d) “offers to sell” claimed invention
Sec. 271(a) (Direct) Multi-Actor (Divided; Joint) Infringement
Sec. 271(a) (Direct) Infringement To Support Indirect Infringement
Indirect Infringement Requires Knowledge Of Patent
a) communication to direct infringer
b) knowledge of infringement
c) relevance of litigation defenses
d) relevance of clearance opinion
e) relevance of non-infringing uses
f) relevance of instructions to users
g) relevance of efforts to avoid infringement
a) knowledge of infringement
b) “offers to sell or sells”
c) “component,” “material or apparatus”
d) “material part of the invention”
e) substantial non-infringing use
Sec. 271(e)(2) Infringement (e.g., ANDA)
Sec. 271(e)(1) “Safe Haven”
a) “component”
b) sec. 271(f)(1)
c) sec. 271(f)(2)
a) “a product”
b) “made by a patented process”
c) sec. 295 shifting burden of proof
d) sec. 287(b) restriction on damages
a) abatement
b) intervening rights
c) “substantially identical” claim scope
d) relationship to pending litigation
Presumptions And Burdens
Assignor And Licensee Estoppel
Person Having Ordinary Skill In The Art (“PHOSITA”)
a) Alice step one
b) Athena Diagnostics En Banc Rehearing Denial
c) improvement to computer or machine functionality
d) categories of patent-ineligible subject matter
f) Alice step two
g) idea’s breadth immaterial
h) idea’s novelty immaterial
i) idea’s utility immaterial
j) preemption of idea
k) machine-or-transformation “test”
l) non-method claims
m) when decided?
Utility (Sec. 101)
Regards As The Invention (Sec. 112(2/b))
a) post-Nautilus decisions
b) ambiguous claims
c) unclear how to test for compliance
d) requiring forward-looking assessments of likely future results
e) terms of degree
f) functional (and result) claims
g) coined terms
h) hybrid claims
i) “consisting essentially of” claims
j) impossibility in claim
k) correction of errors in claim
l) who decides what when?
Particular And Distinct Claims (aka Indefiniteness) (Sec. 112(2/b) + Sec. 112(6/f))
a) which disclosure governs
b) support “full scope” of claim
c) omission of non-optional element
d) original claims
e) functional claims
f) genus claims
g) relationship to enablement
b) enable “full scope” of claim
c) undue/unreasonable experimentation
d) teaching away
Best Mode (Sec. 112(1/a))
a) "filed before"
b) patent owner’s burden
“Invention” Date (Sec. 102(g))
(FITF) U.S. Patents/Published Apps Qualifying As Prior Art (Sec. 102(a)(2) (AIA))
(FITF) Other Prior Art (Sec. 102(a)(1) (AIA))
a) ready for patenting
b) commercial offer for sale
c) may be secret
d) method claims
Public Use Bar
Experimental Sale Or Use
a) third-party on sale/public use
b) “printed publication” (sec. 102(a), (b))
c) sec. 102(e) prior art
d) applicants’ “publications”/disclosures
e) patent owner’s other patents
f) prior invention (sec. 102(g)) [by one of the co-inventors]
g) prior invention (sec. 102(g)) [by third party]
h) derivation from others; derived knowledge (sec. 102(f))
i) “known or used by others” in U.S. (sec. 102(a))
j) applicant admitted prior art and knowledge
k) overcoming putative prior art
a) inherent disclosure
b) genus - species
c) method claims
d) apparatus claims
e) reference enabling
f) single reference
g) expert testimony
h) relationship to written description support
a) analogous art
b) what a reference teaches
c) teaching away
d) motivation to combine or modify art
e) reasonable expectation of success
f) the manner in which the invention was made
g) objective indicia of non-obviousness (secondary considerations)
h) nexus to claimed invention
i) objective indicia of obviousness
j) admissions and omissions supporting obviousness
k) genus – species
l) method claims
m) obvious as a matter of law
Sec. 135 Repose
a) same invention
b) obviousness-type (non-statutory)
c) terminal disclaimer
d) safe harbor for “divisionals”
Broadening Reissue, Reexam, IPR Or PGR (Secs. 251, 305, 314, 316, 326)
Inventorship (Secs. 101, 102(f), 116, 256)
Abandonment Of Invention (Sec. 102(c))
Disclaimer Of Claim (Sec. 253(a))
Oath Defect
Other Defects
Unclean Hands
Likely Survives Therasense
Pleading Requirements
Effect Of Finding Inequitable Conduct
Ownership/Standing

Assignments

Bona Fide Purchaser (Sec. 261)
Constitutional And Statutory (fka “Prudential”) Standing
Co-Ownership Of Patent
License/Exhaustion
Exhaustion; First Sale Doctrine
Implied License
Acquiescence
Legal Estoppel
Equitable Estoppel
Increased Damages; Non-Willfullness- Basics
Willfulness
Pre- Halo Willfulness And Increased Damages
Opinion Of Counsel
Waiver Of Privilege
Who Decides Willfulness Or Misconduct?
Enhancement of Damages
Damages and Other Monetary Remedies – Basics
a) time limitation on damages
b) sec. 287 marking; notice of claim; impact on damages
c) indirect-infringement damages limited to extent of direct infringement
d) apportionment
e) limits re: extraterritorial reach (foreign activities)
f) failure to mitigate damages
g) “benefit rule” in mitigation of damages
a) lost sales
b) reduced prices/price erosion
Lost Royalties
Established Royalty
a) Georgia-Pacific factors
b) hypothetical negotiation
c) royalty base; entire market value rule
d) royalty rate
e) rejected reasonable royalties methodologies
f) FRAND standard essential patents
Supplemental Damages
Prejudgment Interest
Provisional Rights; Pre-Issuance Reasonable Royalty (Sec. 154(d))
Post-Judgment (“Ongoing”) Royalties
Equitable Principles Governing Injunction
Irreparable Harm
Legal Remedies Inadequate
Balance of Hardships
Serves Public Interest
Preliminary Injunction
Scope Of Injunction
Contempt Of Injunction
ITC Remedies
Court Of Federal Claims
Claim Preclusion
Issue Preclusion
Kessler Doctrine
Judicial Estoppel
AIA Trial-Based Estoppel
Prosecution Laches
Reissue Recapture Rule
Reissue/Reexamination Defects
Improper Claim Structure Under Sec. 112(4/d)
Improper Adjustment Or Extension Of Patent Term
Cross-Appeal Rule
Scope Of Issues Limited After Appeal
Sovereign Immunity
Medical Practitioner Immunity
Lack Of Personal Jurisdiction
Improper Venue
Sanctions and Fees Against Patent Owner- Basics
Cases Awarding Fees
Cases Denying Fees
“Exceptional Case”: Factors For And Against
Prevailing Party
Amount Of Fees Award
Rule 11 Sanctions
Counter-Attacks
BASICS : Although an assignment must be in writing, 35 U.S.C. § 261 , ownership can be transferred by other means not requiring a writing, such as through intestate succession laws. Sky Tech. (Fed. Cir. 08/20/09); see Vapor Point (Fed. Cir. 08/10/16) (O’Malley, J., Concurring) (recommending court overrule precedent suggesting in-writing requirement can be superseded under state law). Exclusive license with right to sue need not be in writing. Bard Peripheral III (Fed. Cir. 01/13/15). Written assignment or document memorializing prior assignment must be made pre-suit. Bard Peripheral III (Fed. Cir. 01/13/15). Post-complaint “nunc pro tunc assignments are not sufficient to confer retroactive standing” under Sec. 281, even if preceded supplemental or amended complaint. Alps South (Fed. Cir. 06/05/15) (although patent owner can be added post-complaint to cure standing defect); but see Sealant (Fed. Cir. 06/11/15) (non-precedential) (standing is claim-by-claim and need exist at time claim first made in the action).
Must Convey Undivided Interest Or Exclusive Patent Right To Constitute Assignment : “‘To create an assignment, a contract must transfer: (1) the entire exclusive patent right, (2) an undivided interest in the patent rights, or (3) the entire exclusive right within any geographical region of the United States.’” Diamond Coating (Fed. Cir. 05/17/16) (no assignment of all substantial rights where original patent owner retains a right to make, use and sell patented products, plaintiff’s rights to license or enforce are restricted, and plaintiff did not obtain right to practice the patent).
“Hereby Grants” (Present Tense Active Verbs) Conveys Legal Title; “Agrees To Assign” (Passive Verbs In Indefinite Or Future Tense) Conveys Only Equitable Title : A party with legal title to a patent has standing to sue even if it may not have equitable title and, conversely, a party with equitable title but no legal title lacks standing. The issue normally arises where someone agrees to assign patent rights in future inventions, but fails to actually assign them. If one uses “does hereby grant [or “assign”]” (rights in any future inventions to the assignee) language, then legal title will pass by operation of law once the invention comes into existence. See Stanford (Fed. Cir. 09/30/09) (where inventor first entered an “agree to assign” contract with Stanford giving it equitable rights in future inventions, but then inventor entered a “hereby assign” contract with defendant’s predecessor in interest, and then made invention and application was filed, legal title automatically transferred to that predecessor upon filing of the application, so legal title was in defendant when inventor later assigned rights to Stanford; and Stanford not “bona fide purchaser as it had constructive notice of the “hereby assign” contract), aff’d on other grounds , Bd. of Tr. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. (U.S. 06/06/2011) (but two Justices question Fed. Cir. distinction between “agree to assign” and “hereby assign”); Omni Medsci (Fed. Cir. 08/02/21) (2-1) (aff’g denial of R. 12(b)(1) mtn. for lack of standing; bylaws’ provision that certain patents “shall be the property of the University” did not “automatically and presently assign[] legal title” to the inventions, in part because does not use present-tense active verbs); Preston (Fed. Cir. 07/10/12) (aff’g Summ. J. of no standing because plaintiff employee’s employment agreement automatically assigned (“does hereby assign” any invention conceived or made while employed) patent rights to employer (the defendant)); Advanced Video II (Fed. Cir. 01/11/18) (2-1) (aff’g dismissal of complaint for lack of standing: “will assign” provision in employment agreement was a mere promise to assign to employer (putative predecessor in interest to plaintiff)); Filmtec (Fed. Cir. 07/22/91) (vacating preliminary injunction in view of serious doubts re who has title to patent; an assignment of rights in an invention made prior to the existence of the invention is an assignment of an expectant interest conveying equitable title to the assignee which, “once the invention is made and an application for patent is filed,” conveys legal title to the assignee and the assignor has nothing left to assign). But “will be assigned” or “agree to assign” language transfers only equitable title, not legal title. Speedplay (Fed. Cir. 03/01/00) (aff’g plaintiff obtained substantially all rights in patent from the inventor via a “hereby … assigns” provision); SiRF Tech. (Fed. Cir. 04/12/10) (aff’g that petitioner in ITC had standing, because respondent failed to show that invention fell within scope of one inventor’s automatic assignment to another company; recording in PTO an assignment from inventor to the plaintiff shifts burden of proof (production?) to challenger to challenge that assignment by, e.g., proving earlier assignment by inventor to another company); Abraxis (Fed. Cir. 11/09/10) (plaintiff lacked standing when complaint was filed because promise to assign was not present assignment, and attempt to cure retroactively failed), rehearing en banc denied (Fed. Cir. 03/14/11); Gellman (Fed. Cir. 11/30/11) (non-precedential) (“this court has consistently required that present assignments of future rights expressly undertake the assigning act at the time of the agreement, and not leave it to some future date”).
Transfer Of Ownership Of Software Developed Does Not Necessarily Assign Patent Rights : A software development contract giving company exclusive rights to the software does not necessarily grant ownership rights in any patentable methods or systems invented in creating such software. James (Fed. Cir. 04/20/18) (rev’g dismissal of suit for correction of inventorship for lack of standing; if plaintiff proves sole inventorship then he may own the patents).
Bayh-Dole Act Does Not Assign Inventors’ Rights To Their Federally Funded Employers : It is a “basic principle of patent law that inventors own their inventions.” Bayh-Dole Act does not deprive inventors of their interest in federally funded inventions. 201(e)’s “any invention of the contractor” does not refer to all inventions of the contractor’s employees, but rather to “those owned by or belonging to the contractor.” “The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have.” Bd. of Tr. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. (U.S. 06/06/2011).
State Law Governs Interpretation Of Contract Purportedly Assigning Invention, But Federal Law Governs Whether Automatic Assignment : Abbott Point (Fed. Cir. 01/13/12) (2-1) (aff’g plaintiff did not own patent or have standing); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (aff’g dismissal for lack of standing; “whether a patent assignment clause creates an automatic assignment or merely an obligation to assign” is a question of federal law); Schwendimann (Fed. Cir. 05/13/20) (2-1) (aff’g assignment valid, and properly reformed under state law, despite misnaming assignee, in view of other writings showing correct intended assignee; “by virtue of the reformation, the written instrument was corrected nunc pro tunc , to the point of the assignment”).
Termination Upon Failure Of Condition Subsequent Does Not Necessarily Defeat Transfer Being Deemed An Assignment : “An assignment of a patent ‘may be either absolute, or by way of mortgage and liable to be defeated by non-performance of a condition subsequent.” Vaupel (Fed. Cir. 09/13/91) (transfer granted all substantial rights, despite retaining “1) a veto right on sublicensing by Vaupel; 2) the right to obtain patents on the invention in other countries; 3) a reversionary right to the patent in the event of bankruptcy or termination of production by Vaupel; and 4) a right to receive infringement damages.”) But see Propat (Fed. Cir. 01/04/07) (grant did not transfer all substantial rights; the power “to terminate the agreement and end all of Propat’s rights in the patent if Propat fails to perform up to the specified benchmarks, although not dispositive, is yet another indication that Authentix retains a significant ownership interest in the patent”).

Patent Defenses is a research tool maintained by Klarquist since 2004. Visit klarquist.com to learn more about us.

Privacy Overview

United States: Precedential No. 28: Nunc Pro Tunc Assignment Confirming Oral Agreement Suffices To Establish Priority

In this dubiously precedential decision, the Board granted Petitioner Narita Export's motion for summary judgment, unsurprisingly finding the registered mark TONOSAMA for gift baskets containing candy to be confusingly similar to Narita's identical common law mark for candy. The only real dispute concerned Narita's priority of use, which hinged on the validity of a nunc pro tunc assignment and an oral assignment. Narita Export LLC v. Adaptrend, Inc. , 2022 USPQ2d 857 (TTAB 2022) [precedential].

The Board first dealt with a procedural issue, ruling that because Respondent Adaptrend had withdrawn its affirmative defenses of abandonment and nonownership (albeit "without prejudice pending further discovery"), it could not raise those two issues in connection with the summary judgment motion. The Board did not cite any authority for this ruling.

Petitioner Narita submitted declarations from its president, Mr. Narita, and from the former president of a company referred to as "TI Express." Mr. Izumi. Mr. Izumi asserted that TI Express created the TONOSAMA mark and first sold branded candy in the United States on March 27, 2016. He provided an Amazon screenshot showing a sale on that date. He further declared that on October 20, 2020, he executed a nunc pro tunc assignment of the mark to petitioner with an effective date of November 2, 2016, memorializing an "oral agreement" between the parties. Mr. Izumi also described the sales of TONOSAMA products prior to the assignment. Mr. Narita echoed those assertions regarding the assignment and regarding sales of the product.

Aptrend argued that the declarations constituted inadmissible hearsay and lacked foundation, claiming that the declarations do not say that Mr. Narita or Mr. Izumi personally participated in the oral agreement. FRCP 56(c)(4) states that declarations may be submitted on summary judgment motions i they are "made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the matters stated." "The determinative factor is whether the testimony is characterized by contradictions, inconsistencies, and indefiniteness' and whether it carries with it conviction of accuracy and applicability."

A declaration may adequately support a summary judgment motion "when the declarant's position with the employer renders the declarant competent to provide the testimony on the particular issues which the declaration concerns." The Board found that Mr. Narita and Mr. Izuma "are positioned to know or have access to information relevant to the substance of their respective declarations and the assignment referenced therein."

The Board concluded that the declarations made a sufficient showing of personal knowledge of the stated facts. Each declaration was based on the declarant's position as president and on personal knowledge or regular business records.

Petitioner Narita submitted rebuttal declarations of the two declarants ,stating that the two individuals were friends and personally reached the oral agreement at issue. The Board found that those declarations constituted proper rebuttal evidence.

The Board made short work of the Section 2(d) claim. Adaptend asserted a first use date of June 13, 2016. Narita's declarations established a first use date of May 27, 2016. The marks are identical, the goods overlap, and it was undisputed that the goods travel in the same channels of trade. And so the Board found that Narita was entitled to judgment on its Section 2(d) claim as a matter of law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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How Can I Correct An Assignment?

Post author By Austen Zuege

Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document .

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b) ) and the U.S. Copyright Office (in Compendium 2308.1 ) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive ( nunc pro tunc ) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed ( nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Trademark Assignment

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Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party. Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient. Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement. A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

All involved parties – the assignor and assignee – should be identified.
The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
Consideration must be listed (i.e. what each party is receiving).
List the effective date of the transfer.
Contract must be duly executed.
Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public. It is an intangible asset that is linked to the consumer recognition of a brand.

Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust. The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
Sale of business : A trademark owner may decide to focus on a different business or retire.
Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution. Documenting assignments after the fact is definitely not a best practice and can lead to many issues. It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive. An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue. A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor. A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized. Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

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World Politics

The pro-democracy protests rocking Moscow, explained

In July, Moscow election officials banned opposition candidates from running for city council. This weekend, protests swelled to 50,000 in Moscow.

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A crowd fills a street in Moscow as people carry flags in protest.

Tens of thousands of people protested in Moscow on Saturday, marking the fifth weekend people have rallied in the Russian city to demand fair elections.

The demonstrations began in July after election officials barred opposition candidates from running for the Moscow city council, disqualifying their ballots because of what officials claimed were irregularities in the 5,000 signatures each had to gather to run.

That decision — to block the opposition from participating — turned a sleepy municipal election into a political controversy that intensified amid police crackdowns against demonstrators and opposition figures.

Saturday’s rally in Moscow was the largest yet, and one of the biggest political protests in Russia in years. Estimates put the crowds at about 50,000 , although authorities suggested the official number was closer to 20,000. The rally was sanctioned — meaning people had a permit to protest — although police reportedly arrested about 200 people . Russians in other cities, including St. Petersburg, also joined in on the demonstrations, a sign that the unrest and dissatisfaction may extend beyond Moscow.

Moscow’s municipal elections are very much the focus of these protests, but it’s hard to divorce it completely from larger political and economic issues within Russia, specifically President Vladimir Putin’s authoritarian regime.

“As with many other protests and uprisings all around the region, they’re much more fluid when it comes to reason, but they’re still emblematic of what is happening with the general dissatisfaction with the state of affairs, in this particular case, the policies of Putin’s administration at the moment,” Maksym Eristavi, a senior fellow at the Atlantic Council in Prague, told me.

The Moscow city council elections are expected to move ahead on September 8, and it seems extraordinarily unlikely that authorities will give in to protesters’ demands and let the opposition stand for the vote. But if the protests continue or continue to spread, the uproar over the municipal elections may be just the beginning.

Opposition leaders followed the onerous rules to get on Moscow’s city council ballot. Election officials still denied them the chance to run.

All 45 seats in the Moscow city council are up for reelection on September 8. The legislative body is controlled by the pro-Kremlin ruling United Russia party. But the party is pretty unpopular right now, so the Moscow United Russia candidates came up with an ingenious plan to run as independents in the city council instead.

A bunch of people actually wanted to run as legit independents — opposition candidates. To do so, they had to meet some pretty onerous requirements, specifically garnering 5,000 signatures each from voters.

But officials on Moscow’s electoral commission invalidated many of the signatures for these opposition candidates, claiming they were faked or had incorrect details; some opposition leaders accused election officials of altering the signatures themselves.

About 30 opposition candidates were initially disqualified from running, and many just happened to be outspoken critics of the Kremlin. In another funny coincidence, none of those United Russia-candidates-turned-independents were disqualified, although critics claimed they didn’t even bother to actually collect signatures or that their applications were barely verified by election officials.

On July 14, about 2,000 protesters — including opposition candidates — rallied outside Moscow’s election headquarters to protest the disqualification of the candidates and to demand a meeting with Moscow’s election commissioner . Dozens were arrested, including some opposition candidates.

The protests continued. On July 20, more than 20,000 protesters met in Moscow to demand the opposition candidates be included on the ballots.

Opposition leader and anti-corruption advocate Alexei Navalny — a major Putin critic who was blocked from running against him for the presidency in 2018 — had called for another protest on July 27 and was promptly arrested on July 24 and sentenced to 30 days in jail for organizing an unauthorized protest. While in prison, he was hospitalized with a severe allergic reaction, with some allies worrying that he might have been poisoned.

Other opposition candidates have since been arrested, including Dmitri Gudkov, who once served as an opposition voice in the state duma (legislature) and has now been sentenced to 30 days in jail for organizing an unauthorized election protest ; and Ilya Yashin, a prominent opposition figure arrested for organizing an unauthorized protest after the July 14 rally. Yashin is also calling for Moscow to cancel the September 8 elections.

But the demonstration still went ahead on July 27, where Russian police arrested nearly 1,300 people and reportedly beat back protesters with batons.

A fourth round of protests took place on August 3, with several hundred detained. And on August 10, 50,000 people gathered, including some high-profile Russian celebrities, even though many of the opposition leaders are now jailed. Lyubov Sobol, an opposition candidate who is now on a hunger strike in protest of her exclusion from the Moscow ballot, posted a video on Twitter that appeared to show police barging into her apartment ahead of the protest.

The protest on August 10 — like that on July 20, where 20,000 participated — was sanctioned, meaning protesters had a permit. Brian Taylor, a professor in the Maxwell School at Syracuse University, told me that might have made it more likely for people to come out and protest, as the risk of arrest is a bit lower than during those unauthorized protests.

“Even so,” Taylor said, “we do seem to be seeing a ramping up in tension around this rather than a successful repression of protest on the part of authorities so far.”

Eristavi, the senior fellow at the Atlantic Council, told me it’s important to keep in mind that people were still detained, but that authorities were careful to avoid arresting people in large numbers, and largely did so away from the cameras.

He described this as part of the Kremlin’s “larger disinformation narrative” to sow confusion. “You’re not acting out as completely authoritarian places like North Korea, or some places that just don’t care about the optics — you have to preserve some kind of a confusion,” Eristavi said. “If I’m abroad, or even I’m somewhere else in Russia, and I’m seeing this, I don’t know what to make of it; it could be worse.”

But beneath the optics, there’s corruption and a skewed justice system and media and internet restrictions. And these bigger issues are what the Moscow protestors may be demonstrating about going forward.

“It started off fairly small, but it’s obviously now mushroomed into something more than just can they stand for election to the municipal council,” Angela Stent, author of Putin’s World: Russia Against the West and with the Rest , told me. “But it’s a much broader issue of people’s rights, people’s right to vote, to choose who represents them.”

The protests are a powerful statement — but it’s hard to predict what comes next

What prompted the protests in Moscow is very much authoritarianism 101: the government using all the tools available to sideline and stamp out the opposition.

“Wherever the opposition goes right now, they’re meeting what we might consider soft repression, manipulation,” Taylor said. At first, election officials tried to ban the Moscow candidates from the local elections; when that didn’t work, authorities started arresting those opposition leaders and protesters.

The question is why they would go to such lengths. It would seem that letting a few opposition candidates into the Moscow city council to debate budgets and discuss trash pickup might not be much of a threat to Putin’s regime. Voter turnout tends to be pretty low for local elections, anyway.

But that’s not how the Kremlin is looking at it — or dealing with it.

“In the past, you might have expected, even this time, the Kremlin to say, ‘okay fine, a couple of people can run,’ and then just figure out a way to manipulate the ballot so that they don’t actually win, even if they do win — or if they win, then figure out some excuse to have them removed,” Evelyn Farkas, a senior fellow at the German Marshall Fund who served as Deputy Assistant Secretary of Defense for Russia, Ukraine, and Eurasia from 2012 to 2015, told me.

But instead, Moscow basically dug in. And the opposition, this time, responded in kind. “‘The Kremlin is digging in its heels, so let’s test it,’” Farkas said.

Moscow, of course, is a major city, with more than 12 million residents, so Putin’s regime is going to be particularly attuned to what’s going on in the city. And Putin may have particular reasons to be a little sensitive these days.

Putin and the ruling United Russia party have been slipping in popularity as more Russians become disillusioned with the state of the Russian economy, including rising inequality and falling incomes. Declining oil prices and sanctions have squeezed the Kremlin, and the government had to push through unpopular measures last year, including increasing the retirement age.

Though Russian media is tightly controlled, citizens are also starting to express frustration about Russian government corruption and mismanagement and the country’s increasing isolation in the world. And many, especially younger generations, have basically known no other leader but Putin. They’re beginning to wonder about Russia’s political future when Putin’s term is up in 2024 . Many are unsure about what will happen after —or if there will actually be an after.

“I think a lot of this is about the future of the country, and are these young people now, if you’re 30-years-old, are you going to continue to have to live under a system like this, where you really don’t have a lot of political choices and where the economy isn’t doing so well?” Stent said.

Stent and others pointed out that the protests are being led by young people, similar to the protests that have rocked Hong Kong for weeks . And while there are definitely visible opposition figures, they’re both largely leaderless and rely on grassroots organizing — making them more fluid and spontaneous, and maybe just a bit harder for authorities to squash fully.

Putin, meanwhile, has accused Western democracies, specifically the United States , of meddling and fomenting the unrest — a talking point that he’s famously used before .

Putin’s problems are likely closer to home, although it’s far too early to say what these protests will accomplish — and what it means for Russia. Experts pointed out that this weekend saw other cities join in protests, including St. Petersburg, where about 80 or so people were detained . If that continues, that’s a sign that discontent might be more widespread.

But few thought Moscow’s protests were a legitimate threat to Putin’s regime, at least in their current form. The government has been able to keep the opposition off the ballot and to largely deal with the protests through arrests. And Putin has faced politics protests in the past, notably in 2011, 2012, and 2013 over the electoral system, all of which faded without much changing.

“We shouldn’t assume the days of the Putin regime are numbered,” Stent said. “We’re not there yet.”

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FEIG ELECTRONIC: Moscow-City Skyscrapers Streamline Parking Access and Control with Secure RFID

Feig electronic partners with isbc group to deploy ucode dna rfid security and parking access control solution in moscow business district.

Weilburg, Germany — December 3, 2019 — FEIG ELECTRONIC , a leading global supplier of radio frequency identification (RFID) readers and antennas with fifty years of industry experience, announces deployment of the UCODE DNA RFID security and parking contactless identification solution in the Moscow International Business Center, known as Moscow-City, one of the world’s largest business district projects.

The management of Moscow-City not only selected long-range, passive UHF RFID to implement in its controlled parking areas, it also chose to implement UCODE DNA , the highest form of secure RAIN RFID technology, developed by NXP Semiconductors.

Panoramic view of Moscow city and Moskva River at sunset. New modern futuristic skyscrapers of Moscow-City – International Business Center, toned

“Underscoring NXP’s innovation and leadership in developing advanced RAIN RFID technologies, our UCODE DNA was chosen to be incorporated with the FEIG and ISBC implementation of the contactless identification system in the prestigious Moscow-City,” said Mahdi Mekic, marketing director for RAIN RFID with NXP Semiconductors. “This exciting project represents yet another successful deployment of NXP’s contactless portfolio, and showcases our continued ability to meet the high-security requirements of highly demanding applications without compromising user convenience.”

“UCODE DNA is considered the only identification technology to match the physical protection of a barrier with the cybersecurity necessary to truly protect entrances from unauthorized access,” said Manuel Haertlé, senior product manager for FEIG Electronic. “As a respected contactless payment technology company, FEIG applies security know-how from its payment terminals, which are fully certified according to the latest high-class security standards, into our RFID systems. FEIG vehicle access control RFID readers incorporate advanced secure key storage elements, supporting various methods for secure key injection.”

FEIG’s partner ISBC Group provided the knowledge and support for this successful implementation using FEIG’s long-range UHF RFID . The resulting system enables authorized vehicle entry into areas reserved for private residential use or corporate tenants, while also allowing availability of temporary, fee-based visitor parking. Thanks to the cryptographic authentication of UCODE DNA, both the tag and reader must go through an authentication procedure before the reader will validate the data from the tag, which is transmitted wirelessly. This level of authentication is typically used in the most secure data communication networks.

“The system’s two-step authentication means that only authorized equipment can handle the secure protocol and the data exchange with the UCODE DNA based tag. Without the required cryptographic secrets, other readers would query the tag in vain, because the tag’s response cannot be interpreted or understood,” said Andrey Krasovskiy, director of the RFID department at ISBC Group. “On top of this, each data exchange in the authentication process is unique, so even if a malicious actor were to intercept the communication, the transmission is only good for a single exchange and the tag’s unique identity is protected from cloning.”

Established in 1992 and still growing, Moscow-City is the revitalization and transformation of an industrial riverfront into a new, modern, vibrant and upscale business and residential district. A mix of residential, hotel, office, retail and entertainment facilities, it is located about four kilometers west of Red Square along the Moscow River. Twelve of the twenty-three planned facilities have already been completed, with seven currently under construction. Six skyscrapers in Moscow-City reach a height of at least 300 meters, including Europe’s tallest building, Federation Tower, which rises more than 100 stories.

Partnering with ISBC and deploying FEIG Electronic RFID solutions, the Moscow International Business Center is delivering security and access control to its city center today, as it grows into the city of tomorrow.

About FEIG ELECTRONIC

FEIG ELECTRONIC GmbH, a leading global supplier of RFID readers and antennas is one of the few suppliers worldwide offering RFID readers and antennas for all standard operating frequencies: LF (125 kHz), HF (13.56 MHz), UHF (860-960 MHz). A trusted pioneer in RFID with more than 50 years of industry experience, FEIG ELECTRONIC delivers unrivaled data collection, authentication, and identification solutions, as well as secure contactless payment systems. Readers from FEIG ELECTRONIC, which are available for plug-in, desktop, and handheld applications, support next-generation contactless credit cards, debit cards, smart cards, NFC and access control credentials to enable fast, accurate, reliable and secure transactions. For more information, visit: www.feig.de/en

Founded in Moscow in 2002, ISBC Group provides knowledge and support to integrators for their successful implementation of RFID and smart card-based solutions. The company specializes in the distribution of smart card equipment, contact and contactless card manufacturing, smart card and RFID personalization services, and information security. Its Research and Design Center is focused specifically on RFID, primarily HF and UHF solutions with NXP tags, and software development for the smart card industry. For more information visit: https://isbc-cards.com/

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IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and
In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning "now for then."A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date. For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc ...
Retroactive Assignment Fails to Bring into Force Earlier ...
Therefore, R.R. Donnelley's attempted assignment to Media, and Media's subsequent attempted assignment to CTP, failed to effectively transfer ownership in the patents to CTP. The court also found that a nunc pro tunc assignment does not necessarily have a retroactive effect on bringing into force earlier assignments that were ineffective.
PDF Assignment Center Training Guide Patents
Creating a Patent Assignment Application This document will provide the steps to complete a new Patent Assignment Application. It provides details for each section of the ... Name", "Nunc Pro Tunc" or "Assignment of the entire interest and goodwill", do not select "Other".
A Dive into 'Nunc Pro Tunc'
The Nunc Pro Tunc assignment assumes the spotlight when a party back-dates an assignment to try to cure a standing defect. Consider Plaintiff A, who sues for the infringement of a right safeguarded by Patent Laws. Defendant B, upon research, uncovers that Plaintiff A does not actually own the same on account of some defect in the chain of title.
Corporations Who Fail to Properly Assign Patents as Part of ...
The New Jersey district court held that the "intent" of the related Astra entities was sufficient to imply a nunc pro tunc assignment based on the relationship between the corporate entities, and gave the March 15, 2007 assignments nunc pro tunc ("now for then") effect based on the June 2006 IP Assignment Agreement between AZ-UK and Abraxis. On ...
Intellectual Property: Assignments and Transfers
A Practice Note discussing the legal requirements for the assignment or transfer of intellectual property (IP), including patents, trademarks, and copyrights, and key considerations for an IP transferee or assignee. This Note discusses transfers by operation of law, partial assignments, nunc pro tunc assignments, priority between conflicting transfers, accrued claims for past infringement ...
Federal Circuit Finds Nunc Pro Tunc Agreement Does ...
The patent at issue was U.S. Patent No. 6,552,109, owned by Applied Elastomerics, Inc. and exclusively licensed to Alps South, LLC. ... unc pro tunc assignments are not sufficient to confer retroactive standing. ... "executing a nunc pro tunc license agreement after filing a case" does not have the same effect. The court also noted that ...
Patent Assignment (Nunc Pro Tunc)
This precedent is a basic patent assignment by which the assignor assigns and/or confirms the assignment of a Canadian patent application, which assignment is to take nunc pro tunc effect (i.e., retroactive legal effect). This precedent includes practical guidance and drafting notes. Nunc pro tunc is a Latin expression meaning "now for then".
Benefits & Limitations of USPTO Patent Ownership Records
Thus, traditional nunc pro tunc patent assignments may only act to signal that there is a flaw in patent ownership. In 2020, the U.S. Court of Appeals for the Federal Circuit in Schwendimann v. Arkwright, created confusion about nunc pro tunc agreements. The court held that if a technically faulty assignment is repaired, but not replaced, under ...
Federal Circuit law governs patent assignment interpretation and nunc
Nunc pro tunc assignments, the Court clarified, cannot retroactively confer standing (citing Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998)). One narrow exception to the ...
Bloomberg Law
Thus, traditional nunc pro tunc patent assignments may only act to signal that there is a flaw in patent ownership. In 2020, the U.S. Court of Appeals for the Federal Circuit in Schwendimann v. Arkwright, created confusion about nunc pro tunc agreements. The court held that if a technically faulty assignment is repaired, but not replaced, under ...
Federal Circuit Law Governs Patent Assignment Interpretation and Nunc
Denying Navinta's motion, the district court acknowledged the March 2007 assignment's nunc pro tunc provisions bestowing retroactive effect to the First Agreement in 2006. Following a bench trial, the district court found direct and indirect infringement of the '086 patent and indirect infringement of the '524 and '489 patents.
Changes in Assignment Practice
One additional comment stated that a nunc pro tunc assignment of the substantive rights of an assignee or assignor may be unduly affected by the requirement for recitation of the execution date. ... All records of assignments of patents recorded before May 1, 1957, and all records of trademark assignments recorded before January 1, 1955, are ...
Ownership Transfer of Intellectual Property Rights in General
A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded. What are the most common assignment deficiencies? Although the ...
Assignments
Post-complaint "nunc pro tunc assignments are not sufficient to confer retroactive standing" under Sec. 281, even if preceded supplemental or amended complaint. ... (Fed. Cir. 03/07/17) (aff'g dismissal for lack of standing; "whether a patent assignment clause creates an automatic assignment or merely an obligation to assign" is a ...
Nunc Pro Tunc Assignment to Bridge Priority
A nunc pro tunc trademark assignment is one where the parties agree the assignment was granted on an earlier date in order to retroactively document a transfer of ownership. Latin for "now for then," a nunc pro tunc document can be thought of as a backdated document. This often is used to correct an earlier oversight, such as to bridge a ...
Precedential No. 28: Nunc Pro Tunc Assignment Confirming Oral Agreement
He further declared that on October 20, 2020, he executed a nunc pro tunc assignment of the mark to petitioner with an effective date of November 2, 2016, memorializing an "oral agreement" between the parties. ... the United States Patent and Trademark Office (USPTO) issued inventorship guidance, effective immediately, for inventions created ...
How Can I Correct An Assignment?
This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to ...
Trademark Assignment
Nunc pro tunc is Latin for "now for then," so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing. This written document can be filed with the USPTO, but unlike a traditional assignment, it's effective from the date of oral assignment rather than the date of execution.
The pro-democracy protests rocking Moscow, explained
The pro-democracy protests rocking Moscow, explained In July, Moscow election officials banned opposition candidates from running for city council. This weekend, protests swelled to 50,000 in Moscow.
FEIG ELECTRONIC: Moscow-City Skyscrapers Streamline Parking Access and
"Underscoring NXP's innovation and leadership in developing advanced RAIN RFID technologies, our UCODE DNA was chosen to be incorporated with the FEIG and ISBC implementation of the contactless identification system in the prestigious Moscow-City," said Mahdi Mekic, marketing director for RAIN RFID with NXP Semiconductors.
Plot 16, Moscow City
Moscow, Russia Construction: 285,000 m² Functions : Residential, shopping mall, hotel complex Year: 2015 Architect : SOM
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It is a subdivision of Moscow State University - a self-governed state higher educational institution of the Russian Federation. The Library was founded in 1756. It is a scientific and a methodological centre for other higher institutions libraries functioning in Russia. Address: Mohovaya str. 9 | Phone: +7 (495) 203-2656.

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The pro-democracy protests rocking Moscow, explained

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Opposition leaders followed the onerous rules to get on Moscow’s city council ballot. Election officials still denied them the chance to run.

The protests are a powerful statement — but it’s hard to predict what comes next

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