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[ldmcduffy]

Assignment issues seem to keep cropping up for me.

If company ABC changes its name to ABC-1 (very similar names) and an assignment is executed by inventors of the company after the name change, but the assignment erroneously lists the assignee as ABC rather than ABC-1, then do the inventors need to initial a corrective document that is filed at the PTO?  The PTO is telling me no, the assignee (or attys of assignee) can submit it and just cross out the assignee name on a copy of the assignment and pencil in the new name, but I don't believe it.  It seems that the MPEP 323 is clear on this.  Am I missing something?

Has anyone done this before?

[Oh, Crud]

Assignment issues seem to keep cropping up for me.

If company ABC changes its name to ABC-1 (very similar names) and an assignment is executed by inventors of the company after the name change, but the assignment erroneously lists the assignee as ABC rather than ABC-1, then do the inventors need to initial a corrective document that is filed at the PTO?  The PTO is telling me no, the assignee (or attys of assignee) can submit it and just cross out the assignee name on a copy of the assignment and pencil in the new name, but I don't believe it.  It seems that the MPEP 323 is clear on this.  Am I missing something?

Has anyone done this before?

I added some underlining in your OP.  I'm sorry but I think I have more questions than answers (i.e., advance warning that I don't think I have solid legal answers for you). 

What does "changes its name" mean?  Is the new ABC-1 name just a D/B/A of the ABC corp, and the ABC Corp is still the registered legal entity?  Or has ABC corp actually had a change of legal entity and ABC-1 Corp is its successor in all its interests?

If there was no legal entity change (ABC-1 is a D/B/A of existing ABC), note you can record a name change certificate if you want, but I wonder whether this is really needed, particularly if ABC may decide to D/B/A "ABC-1-Prime" next year...


If there was an actual change to the legal entity and ABC-1 now owns ABC's prior interests:  See the second part underlined - inventors of which company, ABC Corp or ABC-1 Corp?  Maybe they have been employees of both, of course.  But to which entity did the inventors owe an obligation of assignment at the time they made their invention? 

 - If to ABC, then the original assignment is correct, and ABC-1 should be able to record documents showing it now owns ABC's interest in the invention.

 - If to ABC-1, then I agree with your reading of the main part of 323 where it states the inventors ("party conveying") must initial the corrections.  But note the later section 323.01(b) relating to typos - if the inventors are not available to sign, an affidavit explaining the circumstances can be filed by the assignee. 

[ldmcduffy]

If there was no legal entity change (ABC-1 is a D/B/A of existing ABC), note you can record a name change certificate if you want, but I wonder whether this is really needed, particularly if ABC may decide to D/B/A "ABC-1-Prime" next year...

The entity legally changed its status (e.g., partnership to corporation) in the state of incorporation with a very slight change to its name as well. 

If there was an actual change to the legal entity and ABC-1 now owns ABC's prior interests:  See the second part underlined - inventors of which company, ABC Corp or ABC-1 Corp?  Maybe they have been employees of both, of course.  But to which entity did the inventors owe an obligation of assignment at the time they made their invention? 

Good point - For an inventor joining the entity after the name change, then the obligation would be to ABC-1, so let's assume they all joined the company after the name change.
 
 - If to ABC-1, then I agree with your reading of the main part of 323 where it states the inventors ("party conveying") must initial the corrections.  But note the later section 323.01(b) relating to typos - if the inventors are not available to sign, an affidavit explaining the circumstances can be filed by the assignee.

This section is what I find difficult to process.  If the assignment actually said ABC, not ABC-1 (and assuming all employees were obligated to assign to ABC-1, and there was no misspelling, then I don't understand how the Patent Office has the authority to decide it was a 'typographical error' with no input from the conveying parties/inventors.  So if it was challenged in court, and the company prevailed on the issue of the inventors being obligated to assign (which I believe would happen), then the question to me seems to be:  Would the assignment be effective as to the date of the 'correction' by the assignee/patent office, which had no validation from the conveying parties?

Thank you for your response.  You raised some good points, and my responses above are italicized (if I did it correctly!). 

[Oh, Crud]

Thanks for clarifying the situation.

Okay, so let's say the obligation runs to ABC-1, but the assignment document conveyed the patent app to ABC.

Please do not conflate PTO recordation of one's assignment and the legal effect (or not) of any particular assignment document.  It seems to me that you are mixing these together.

Whether or not you have a valid assignment is likely a question of contract law in your state.  PTO recordation of assignment or other documents is a method of providing notice.  It has zero legal effect as it relates to the validity of your assignment.  At best, recordation of an assignment may have the effect of helping to show what the intent of the parties was.  Whether or not this is of use as it relates to an incorrect assignment will depend on how your state courts view the use of parole/extrinsic evidence in contract interpretation.

Putting myself in ABC-1's shoes, I would get another (correct) assignment document executed.  Or at a minimum, have an in-state lawyer (with good knowledge of how the relevant state construes assignment contracts) review the situation.  For me, recordation of the current (potentially flawed) document would be of secondary concern.

If anyone else reading has different views or experiences, please jump in. 

EDIT:  Is this patent application being filed internationally?  If so, note jurisdictions vary widely on what constitutes a valid assignment.  There was a recent case of a US-based BigCorp (can't remember name) that was found by the (notoriously anti-patent) UK High Court to have an ineffective assignment and so lost the ability to prosecute their patent infringement case in England.  Anyway, moral here is if I have international filings, I want a bullet proof assignment document, not just one that passes muster in the jurisdiction stated to be controlling as to law (the UK High Court decided it could ignore the statement in the assignment document saying that a particular US state's laws governed).

[ldmcduffy]

Thank you - that makes perfect sense - and yes I was confusing the issue of recordation and the legal effect of the assignment. 

The one issue remaining is whether the employment agreements (assuming they were made with ABC-1) had language that effected an automatic assignment (DDB v. MLB).  But even so, I also agree I would prefer to have another correct assignment executed - especially in light of your edited note above.  But of course this is the real world and none of the inventors are to be found.  Thank you for you help.