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Author Topic: Backdating an assignment?  (Read 1469 times)

MYK

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Backdating an assignment?
« on: 05-19-16 at 10:56 pm »

Company has artwork prepared for it by an employee in the ordinary course of his work.

Does this need any sort of assignment document at all, in order for the artwork to be considered assigned to the company?  I'm assuming not, since it appears to fall under the first clause of the work-for-hire test.

If an assignment is necessary, or even if it isn't necessary in the U.S. but is necessary elsewhere to show rights, is it legal to backdate the assignment to when the artwork was created, or must ownership only run from when the assignment is signed?  How about for a contractor?
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

ThomasPaine

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Re: Backdating an assignment?
« Reply #1 on: 05-20-16 at 02:32 pm »

Do a nunc pro tunc assignment.
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PhilBurns

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Re: Backdating an assignment?
« Reply #2 on: 02-27-18 at 12:45 am »

Do a nunc pro tunc assignment.

A nunc pro tunc assignment (ie specifying a prior effective date in the agreement) may be sufficient in the US (although, not always (see Google search reults for "nunc pro tunc assignment") , but this will certainly not be accepted in Europe - EP Patent Courts (EPC) have repeatedly refused cases where the assignment was not already in place before the filing date of the relevant European application (e.g. the PCT filing date).  This is specifically related to the ability of a patent application to claim priority to an earlier basic (e.g. provisional) patent application - the applicant of the new application must have the necessary rights in order to validly file the new application with a priority claim. see for example EPC decisions T14/1201 and T11/0577
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