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Topic: Assignment and Efile (Read 963 times) |
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JimIvey
Moderator
Senior Member
 
Posts: 2584
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Re: Assignment and Efile
« Reply #5 on: Aug 14th, 2006, 3:34pm » |
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Just as a bit of a backgrounder, recording the assignment in the PTO is like recording a deed with the county registrar -- provides constructive notice to all subsequent purchasers. Remember, in property, the last bona fide purchaser without notice of prior purchasers takes title. So, if you'd like to actually take title for a patent (application) you've purchased, you'd like your assignment recorded as soon as possible so that no subsequent bona fide purchasers can take title.
And, since the assignment becomes a public document, it's nice to have it as a separate appendix in (or supplement to) an agreement you'd otherwise like to keep private (like an employment contract where you give stock and special compensation to a new employee in exchange for ownership of some of their patents or applications -- don't want other employees to see those terms). You can record the assignment appendix (or appendix supplement) only, leaving the remainder of the contract confidential.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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dab2d
Junior Member
Posts: 73
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Re: Assignment and Efile
« Reply #6 on: Aug 14th, 2006, 4:38pm » |
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So what do you tend to do when you have an assignment. Do you file it with the application? Or do you just file the application with the inventors and then file the assignment later.
I really prefer to use the EFile system. I am just that more corfortable with it.
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| « Last Edit: Aug 14th, 2006, 4:39pm by dab2d » |
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Jonathan
Full Member
Posts: 611
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Re: Assignment and Efile
« Reply #7 on: Aug 14th, 2006, 5:32pm » |
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At my workplace, we paper-file new applications with an executed assignment. If EFS gets upgraded to accept assignments, we will start e-filing new applications with the assignment.
I don't see any particular benefit of doing things that way except not having to train staff in using the assignment electronic filing system. The express mail cost savings and trips to the post office seems to tip the scale in favor of learning the assignment efile system but it was not my decision to make.
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dab2d
Junior Member
Posts: 73
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Re: Assignment and Efile
« Reply #8 on: Aug 14th, 2006, 5:38pm » |
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What do you do with provisionals? Do you need assignments with provisionals.
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Jonathan
Full Member
Posts: 611
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Re: Assignment and Efile
« Reply #9 on: Aug 14th, 2006, 5:51pm » |
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You certainly can have an assignment recorded for a provisional - it's usually a decision for your client to make. I suppose it could be beneficial in the event an inventor refuses to sign documents for the eventual utility application.
We occasionally do file an assignment for a provisional. We will also have a second assignment recorded when the utility application is filed that claims priority to the provisional.
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| « Last Edit: Aug 14th, 2006, 5:52pm by Jonathan » |
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