RE: Non-assigned items in published applications

Eve et al. - The interaction of assignee data, how and what are
recorded, why it is recorded, and what that data actually means is a
fascinating topic. I posted on that topic a couple years ago; you can
find my comments in the short introductory IP article at:
http://www.neifeld.com/assignmentdata_031108.htm
<http://www.neifeld.com/assignmentdata_031108.htm> explaining what is
actually recorded in the USPTO. My comment below expand upon the legal
motivations for filing assignments in the USPTO. You can find other
introductory IP articles at http://www.neifeld.com/intidx.html
<http://www.neifeld.com/intidx.html> .
 
    The US patent assignment statutory section provides the same legal
benefit as a recording of a deed of land. That is, for patents, the
benefit of protection against a subsequent fraudulent conveyance by a
former owner of the patent, such as the inventor. Absent a recording =
in
the USPTO, a former patent owner can effectively sell the patent to a
third party such that, if the third party records the assignment in the
USPTO, and the third party had no knowledge that the former owner no
longer owned the patent, and the actual owner had not recorded the
assignment from the former owner, then the third party would actually
take title to the patent, with no legal liability to the entity to =
which
the former owner had originally sold the patent. The third party in
that situation is a called a BFP (Bona Fide Purchaser For Value Without
Notice).
 
    There is substantial U.S. case law on the related subject of =
whether
recording an assignment in the USPTO perfects a security interest in =
the
patent or trademark, for example, in case the patent owner goes belly =
up
and the creditors want to take ownership of the patent as compensation.
You will note a large number of recorded assignments in the name of
banks for this reason. In most cases, the bank is not the actual owner
because the assignment document recorded in the USPTO is a security
agreement, not an assignment. However, the statutory right conferred
under the U.S. patent statutory sections for patents is the protection
against a BFP in case of subsequent fraudulent conveyance by the former
patent owner.
 
    For anyone interested in the fascinating issue of security =
interests
in patents and trademarks in relation to where to record them to =
perfect
the security interest, I suggest you start your research with the
following cases:

In re Together Development Corp., ___ F.Supp. ___ (Bankr. D. Mass
97-47830-JFQQ December 04, 1998);

National Peregrine Inc. v. Capitol Federal Savings and Loan Ass'n of
Denver, 116 B.R. 194 (C.D. Calif. 1990)

In re cybernetic Services, B.A.P, (U.S. Bankruptcy Panel of the 9th =
Cir.
September 29, 1999)

In re Transportaion and Design Inc., 48 B.R. 635 (Bankr. S.D. Calif.
1985)

 
thanks, RICK
 
Rick Neifeld, Ph.D. Patent Attorney
President
Neifeld IP Law, PC URL: www.Neifeld.com
StockPricePredictor.com, LLC URL: www.PatentValuePredictor.com

Postal address until April 1, 2005:
2001 Jefferson Davis Highway, Suite 1001
Arlington, VA 22202

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Our web, email, facsimile, and telephone numbers will not change:
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URL: <http://www.Neifeld.com> www.Neifeld.com


 

 

 
-----Original Message-----
From: simmons.es_at_pg.com [mailto:simmons.es_at_pg.com]
Sent: Monday, March 28, 2005 8:58 PM
To: Eve Zhou
Cc: owner-piug-l_at_derwent.co.uk; PIUG-L_at_derwent.co.uk
Subject: Re: Non-assigned items in published applications



Eve,

The lack of assignee data in US patent publications is a natural result
of US patent law, which defines the owner of of any invention as the
inventor or inventors. Ownership of patents resulting from =
applications
filed on behalf of employed inventors is usually assigned to the
employer, but the law doesn't require assignment and it doesn't require
registering the assignment with the USPTO. Since most companies want
the public to know them as the patent owner, they normally file
assignments with the USPTO prior to grant, but they don't have to file
the assignment until the patent is ready to be granted. Many of them
wait until the last minute to file the assignment.

The fee for recording an assignment is only $40, but there are some
pretty good reasons for delaying recording the assignment. If no =
patent
is granted, the fee would be wasted. If the company changes ownership,
the application would have to be reassigned; for a company with =
hundreds
of pending applications that would cost a lot of paperwork and a lot of
money. Until very recently, the USPTO didn't require that the "real
party of interest" be identified during patent prosecution, and some
people believe that individual inventors get more generous treatment
from patent examiners than big corporations do.

Until 2001, the USPTO has always kept information about pending patent
applications, including registered assignments, inaccessible. Its file
of reassignment registrations was available to database vendors, but
most databases didn't trace reassignments. Now that pre-grant
publications have appeared, pregrant assignments are available on the
USPTO website at http://assignments.uspto.gov/assignments/q?db=pat, =
and
you can look up the owner of some published applications before they're
granted. The assignment information isn't part of the patent
prosecution file, so it isn't in the PAIR file; you have to look at the
assignment database.




        "Eve Zhou" <evez_at_ip-partner.com>
Sent by: owner-piug-l_at_derwent.co.uk


03/28/2005 07:48 PM


        
        To: PIUG-L_at_derwent.co.uk
        cc: (bcc: Edlyn Simmons-ES/PGI)
        Subject: Non-assigned items in published applications



Hi PIUG colleagues:

In several occasions, I have found a very higher % of non-assigned
documents
in published applications compared to that in granted patents. Some
times the
increase is quite dramatic. I am not sure if this is a trend or due to =

errors in database. I remember to recall that a recent email from this
group
mentioned that the assignee field is often missing in published
applications.

- Is it true that the assignee fields are often missing at the
application
stage?
- If so, what's the likely cause? Is it because the filing party failed
to
provide the info. or that the patent office (or database vendors) =
failed
to
enter them in an electronic database?

Thank you in advance for your help.

Eve Y. Zhou, Ph.D.
IP Partner
Realizing Value from Intellectual Property
www.ip-partner.com
Phone: 303.596.8239





Received on Tue Mar 29 2005 - 19:30:20