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[mybrainisfull]

Problem: An Inventor files a patent application electronically and indicates (on the ADS) the Inventor's company is the Assignee, which 100% owned by Inventor (w/ no other employees). The Patent ultimately issues and the Inventor's company is indicated on the issued patent as the Assignee. An assignment agreement however was never recorded at the USPTO (and the 3 month time frame is long gone). Also, that assignment agreement (between inventor and inventor's company) is currently misplaced, and might not be found.

What is the best way to resolve this? Write a new assignment and record it?

Thanks in advance for any suggestions.

[bleedingpen]

Problem: An Inventor files a patent application electronically and indicates (on the ADS) the Inventor's company is the Assignee, which 100% owned by Inventor (w/ no other employees). The Patent ultimately issues and the Inventor's company is indicated on the issued patent as the Assignee. An assignment agreement however was never recorded at the USPTO (and the 3 month time frame is long gone). Also, that assignment agreement (between inventor and inventor's company) is currently misplaced, and might not be found.

What is the best way to resolve this? Write a new assignment and record it?

Thanks in advance for any suggestions.

Yes.  Write the assignment as nunc pro tunc.

[khazzah]

What is the best way to resolve this?

You should be clear about what you're trying to resolve and/what outcome you wish to achieve. Are you resolving a problem with ownership? Or simply a problem with notice of ownership?

If no assignment was ever executed, then the inventor(s) owns the patent, and if you wish to change that, you need to get the inventors to assign to the company. There are very good reasons to record the assignment, although it's not strictly required.

If if instead the "problem" is the discrepancy between the actual ownership (inventor) and the stated ownership on the face of the patent (corp), then the fix depends on whether you're talking about a pending patent application or an issued patent. If it's a pending app, filing a supplemental or corrected ADS naming the inventor as assignee (or maybe leaving it blank?) should do the trick. If it's an issued patent, you should instead file a certificate of correction naming the inventor as assignee. But note that a certificate is a separate page of the patent, and won't affect the assignee name on the first page.

[mybrainisfull]

Thanks for both replies.

The objective is to: 1) document that the inventors company became assignee at the time the application was filed; 2) not void any of the company's rights to later re-assign the patent (if desired).

Basically, I'm not clear on 35 U.S.C. 261, that states:

"An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage".

So, choice #1: Write a whole new assignment agreement with today's date. That way it could be recorded within 3 months no problem, and preserve future assignment rights of company. But wouldn't doing it that way certainly imply the company WAS NOT the assignee before today?

Or, choice #2: Write a new assignment with today's date, but say someting like this assignment replaces an earlier executed assignment between inventor and inventor's company at the time the application was filed. This would get on record an acknowledgment that the transfer actually first occured at time of filing, but also make it a current assignment. Not sure if this is proper, or even how that would play in with the 3 month rule if recorded nunc pro tunc, and the earlier application filing date is entered as the effective date.

Or choice #3: Record the assignment originally signed between inventor and inventor's company. (Only possible if inventor can find it). Again, doing it this way, the execution date was long before 3 months. So Company can't re-assign patent rights?     

[bleedingpen]

What that statute means is basically you have 3 months from once you sign the assignment to actually record it.  If you fall outside of that 3 month window, then everything is still OK so long as the prior owners don't sell the patent to someone else in the interim. 

Choice 3 works best if you can find it.  If not, I suggest choice 4 which is to write up a new assignment nunc pro tunc as the original execution date. 

[JimIvey]

I think bleedingpen has it right, but I'll see if I can't simplify it even more.

First, like real property, the last bona fide purchaser without notice of a prior sale takes title.  You record assignments so the inventor can't assign the application to someone else later -- the recordation is effective notice to everyone.

The 30 days is that the date of recordation can be backdated to execution of the assignment up to a maximum of 30 days.  If you record the assignment within 30 days of its execution, it's recordation date is its execution date.  Otherwise, it recorded as of its recordation date only, leaving a window of time in which the inventor could effectively assign the application to another.

nunc pro tunc

I don't know why, but that phrase reminds me of Vietnamese noodles.

Regards.