Assignments of international patent rights

[David Boundy]

Have you ever gotten pushback on an assignment that just says "all rights in any country of the world" from a country that wants its specific rights to be assigned by name in the specific country?

Years ago, I asked a colleague (who had cut his teeth at Fish & Neave when F&N was the biggest fish in our pond) why the F&N form assignment had a long list of countries, instead of "all rights in any country of the world."  This colleague told me that he was aware of some countries that insist that the country be specifically named in an assignment.  I didn't ask "which one?"  So for 20 years, my form assignment has had a half-page list of countries that my client could potentially be interested in.

Yet most assignments just say "all rights in any country of the world" or something like that.  If this were a genuine problem, I doubt I'd be the only person I know who has the laundry list in my form assignment.

It's time to reexamine an assumption.  If you are an "any country of the world" type, have you ever gotten pushback, to require that an assignment have the specific name of a specific country?

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David Boundy | Partner | Potomac Law Group, PLLC

P.O. Box 590638, Newton, MA  02459

Tel (646) 472-9737 | Fax: (202) 318-7707

dbo...@potomaclaw.com | www.potomaclaw.com

Articles at http://ssrn.com/author=2936470

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[Rick Neifeld]

"in any country" is one thing specified and "all rights" is another thing specified. I note that "all rights" does not indicate the thing for which "all rights" are conveyed. And case law tells me that is important. The up front and obvious issue is whether "all rights" pertains to what is claimed, or what is disclosed.  However, there are additional issues, such as right to past infringement. Typically, right to past infringement does not convey, unless expressly conveyed. And then there is whether the assignor has the right to assign, which can be an issue when marital rights exist in a spouse and when other equitable rights exist in other parties.  Cases pertaining to these issues appear in my book.  The forms I generated and us and offered up to others on my firm's website take most of these issues into account.

Best regards, Rick Neifeld, Ph.D., Patent Attorney

Neifeld IP Law PLLC
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