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 on: 07-16-18 at 05:54 pm 
Started by ameshere4u - Last post by CRfan
Once the US Copyright Office (“Office”) RECEIVES your correctly-filled copyright registration application, your deposit (the creative work you’re registering), and payment of the application fee, your work is immediately (officially) registered, though it may take several months or longer for you to receive your Certificate of Registration (your Certificate of Registration's effective date of registration will be back-dated to the day the Office received all your materials).  REGISTRATION PROCESSING TIMES:

“You do not have to receive your certificate of registration before you publish or produce your work.”  See (page 5).

 on: 07-16-18 at 04:56 pm 
Started by ameshere4u - Last post by Robert T Nicholson
Where are you located?

What is your client's reason for this belief?

In the United States, there is no reason to delay publication.  The work is fully protected.

 on: 07-16-18 at 03:11 pm 
Started by ameshere4u - Last post by ameshere4u
My client is under the belief that she can't publish anything for at least 1.5 years after filing a copyright registration. That's so long! Is there any reason to wait for a period of time to publish?

 on: 07-16-18 at 12:00 pm 
Started by Tobmapsatonmi - Last post by Euro-Pat-Att
Obviously you know a lot more about these things than I do, but I find some aspects of what you write hard to believe. I'd appreciate if you could comment further for my enlightenment.

I doubt that the right to file a US patent (not the patent application itself) can not be transferred under the laws of a different jurisdiction.

Party A and party B, both in Germany for instance, can agree to transfer between them, under German law, the ownership of a bicycle that happens to be in the US. Right?
Party A can also transfer the voting rights associated with his Microsoft shares, to be exercised only in the US, to party B, under German law, right?
Why can then the right to apply for a patent on an invention, made by A, but paid for by B, not be transfered under German law (together with all the other results from the labour agreement)?

Further, I wonder what happens if a court in Germany decides that, under German contract and labour laws, all expolitable results from an employment contract in Germany, including the right to apply for a patent, or not, worldwide, were transfered to the employer (or worse, were never even the employee's).

I'd find it hard to believe that a US court would then shift this decision, which was clearly within the competence of the German courts, aside. There are plenty of case in which the US courts recognise foreign decisions, eg relating to property disputes, or in relation to getting married or getting divorced.

Now you may argue that a decision wrt the right to apply for a US patent is outside the competence of the German court, and 'all exploitable results', as in the example above, do not include the right to apply for a US patent.

This may de-facto well be the case in practice (indeed, as you say, patent rigths have only as much value as the ability to enforce them). In my view that would then be a case of the US courts assuming this competence and getting away with it, contrary to the logical consequences of international contract law, and, dare I say, contrary to the spirit of  international contract law.

I am not so much doubting that the US courts assume they are competent, and that in practice you are right.

I am instead abhorred by the logical consequence: that a German court is NOT exclusively competent to decide on all ownership conflicts between two Germans in Germany resulting from a contract under German law with the work done exclusively in Germany.

 on: 07-16-18 at 08:03 am 
Started by MR - Last post by EvilLost
Generally speaking, if you are the filing attorney, you do not need a PoA to prosecute the application. There are some exceptions to this, but we have not used PoAs for well over a year now and only obtain one when the situation specifically requires it.

I don't believe an "all purpose" PoA exists with the USPTO, but I could be wrong.

 on: 07-16-18 at 07:44 am 
Started by Tobmapsatonmi - Last post by EvilLost
I beg to differ in relation to points 2 and 3

In an employment situation, it's not the patent rights (as in 'patent' or 'patent application') that are usually transferred by law and/or employment contracts. Instead it is, in general, the right to determine what happens with an invention (does it get commercialized or shelved, will a patent be applied for or not, will there be any further development work or not). This is in line with the general entitlement of the employer to the fruits of the work of the employee performed under the employment contract.

This was why I included the "rite of first refusal"; generally, I agree (and in some cases if the employer does not with to exercise the patent, the inventor-employee will be given an opportunity to do so).

Therefore, based on national law, the employer obtains ALL rights to the invention, including the right to apply for a patent, worldwide, or alternatively, to publish the invention, or to shelf it, or to sell it to the biggest competitor.

It is perfectly possible to transfer, under the laws of country A, the right to apply for a patent for an invention in country B. Now country B can be difficult and not recognize this transfer, or require confirmation in conformity with its own laws, or whatever, but those are just the intricacies of international law.

I have to disagree here. In theory, "anyone" can do "anything."
This isn't "just an intricacy" of international law; it is a core tenet of jurisidiction.

Patent rights are national rights. They only have as much value as the ability to enforce them. Enforcing a patent right can only be done in accordance with THAT nation's patent laws. Thus, regardless of what any other nation (or entity, really) says about Nation B's patent rights, ONLY Nation B can dictate how nation B's patent rights are transferred (and enforced). If another entity attempts to transfer nation B's patent rights, the transfer is only meaningful in so far as it was done in accordance with nation B's laws. Anything else is wholly irrelevant with respect to the patent rights.

Note, however, that other remedies may exist in country A (i.e. contractual).

EvilLost is right that an assignment of a patent(application) is bound by contract principles. I do not know enough of international contract law to determine whether a US patent may be assigned by one party in Germany to another party in Germany under by a contract drafted according to German law (but my gut feeling is: yes), and whether a US judge or German judge would then be competent do decide on disputes.

This is a general contract matter. You seem to be combining two different points though; under a "choice of law" provision, any places law could be chosen as prevailing law by the contracting parties. However, choice of law does not have any impact on venue; simply because German law was chosen does not mean a German venue is that case (assuming a US court was the appropriate venue) a US judge would apply German choice of law in interpreting the contract.

However, choice of law simply decides which countries laws interpret the contract. It does not mean that other (i.e. non-contractual) law would necessarily be applied.

But, the assignment of the right to all the fruits of the employees work, including the right to apply for a patent on a invention made by the employee, is a different matter. That is clearly governed by national law.

I would even go so far as to say that, by making an invention in an employment situation, the invention never is legally owned by the employee to begin with (but always by the employer), so that no assignment is needed.

I do not agree with this at all.

Under US law, the US patent right (i.e. the national right) -always- vests in the INVENTOR.

It is not possible for any other nation to say "...but, under German law, the US national patent right goes to the employee!" German law has no power over the US national patent right. German law can only control the German national patent right.

If you do not have a proper assignment under US law, then your entire chain of ownership is broken. If an employer cannot establish a proper chain of ownership, then the employer will have no standing to enforce or defend the patent rights.

There is a huge difference between satisfying the USPTO (i.e. to be allowed to prosecute an application)  VS.  effecting a legally valid transfer of rights. A transfer of patent rights is no different than any other legal right and the assignment used is the same as any assignment under general contract principles.

 on: 07-16-18 at 07:17 am 
Started by EvilLost - Last post by EvilLost
Just to be clear, I understand the "one-way" rejoinder for practical purposes. Absent the special section for product-by-process, it seems that the general language of 821.04 would apply to electing the process and rejoining the product (even though logic dictates that this should not be possible).

My post was more directed at the fact that the MPEP does not seem to correctly address this specific situation.

 on: 07-16-18 at 04:12 am 
Started by En-trance - Last post by En-trance
Yah, in addition to the antibody drug "Humira" (mentioned by Toot Aps Esroh), the daily earning of the small molecule drug "Prilosec" (~USD $11 million dollars) was in the same ball park as well.

But I do see your point "Robert K S", will pass on your advice. Thanks very much all!

 on: 07-15-18 at 11:24 pm 
Started by screwed - Last post by Toot Aps Esroh

For those of you that are lawyers as well as patent agents, have any of you done both "transactional" IP work (e.g. patent licensing, advising on IP language in agreements, R&D support from a legal perspective) and pure patent work (e.g. drafting, prosecution, freedom to operate, etc)? If so, what did you prefer? I am asking because I have done both, and I found the transactional work a little easier compared to patent prosecution (for example, I found the time constraints given what clients are willing to pay hard when it comes to responding to office actions). However, I like the technical aspects of patents. I am trying to decide between a patent prosecution and a transactional IP job.

Thanks in advance.

I think any in-house guy is going to have had at least some chance to do both, and for many it's routine to do both.  I do and always have while I've been in-house.

I like the variety I get by doing both aspects (and I also get a lot of IP due diligence in business development dealmaking).  But if I had to pick pure prosecution/FTO vs. pure transactional/legal, I'd pick the prep/pros.   But as in-house, I don't have the issues you mention regarding prosecution.  And it's also not a super clean split in-house in that if I'm doing the prep/pros I'm still going to be very close to RDE and will still be doing a lot of their legal support.

 on: 07-15-18 at 04:38 pm 
Started by Toot Aps Esroh - Last post by snapshot
Examiners gs-12+ have "auto-count" of non-finals, so they get credit immediately.

So, if it's a weekend before "count Monday", and the examiner desperately needs counts, then it's a sure thing to post the non-final, rather than hope the SPE reviews the allowance in time.

In my experience, some GS-12 examiners do not deserve to have auto-count. 

If they did away with it entirely, it would not be a bad thing.

I think the biggest part of the problem is that the Office has no flexibility.  Everything is tied to grade.  Production factor is tied to grade. Pay is tied to grade.  Signatory authority, negotiating authority, autocount, whether you have to share an office, all tied to grade. 

There are some examiners who are very competent, but not very fast.  I think they should be able to have full sig with a lower production (and lower pay, too).  But if you want full sig, you have to take the high production requirement that goes with it.  Similar for autocount.  There are some examiners who work quickly and maybe should have a higher production required, but still need review of their actions, so maybe they should be GS-12, but no autocount.  But for now, it's an all or nothing thing.

Just some thoughts. . .

I find your views intriguing and wish to subscribe to your newsletter.

But in all seriousness, you may be on to something there.  Unfortunately, I don't think it would ever work - everything is tied to grade, as you said, and I can't see POPA going along with anything that would create an uneven playing field for examiners.  Especially when some POPA delegates (including ones running for officer positions) are objectively bad examiners.

On a different count related note, CCI is another program I have issues with.  It's a good idea in theory, but there are zero consequences to falling into the program (thanks again, POPA) or having a director meeting through the program (though I would feel so awful if I ever had a meeting with my director for that I'd try my best to never have one again), so why even have the program?

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