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Author Topic: 'extra' assignments - any potential effect on a priority claim?  (Read 596 times)

Jonathan

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Hello - Perhaps I am thinking too hard on this but here goes:

I am involved in an IP audit for a set of patent applications and the 'auditor'' has deemed that a non-provisional patent
application, that claims the benefit of a provisional application's filing date, contains new matter.

Due to this, the auditor has requested for the inventor to sign an additional assignment specifically referencing the non-provisional application. (The inventor had previously assigned the provisional and that assignment was recorded against the provisional and the same assignment document was also then recorded against the current non-provisional.)

My take on it all is that there is no new matter in the first place but one other item popped into my head as well.

That other item is that if we actually do this extra assignment, of sorts for the non-provisional, it can be perhaps interpreted as admitting that there is new matter. And if a patent later issues that is dependent on the provisional filing date - this extra assignment could perhaps be used to detract from the validity of the issued claims.

A lot of what ifs - am I being paranoid? Anything else I ought to consider too?



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still_learnin

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I am involved in an IP audit for a set of patent applications and the 'auditor'' has deemed that a non-provisional patent application, that claims the benefit of a provisional application's filing date, contains new matter.

Due to this, the auditor has requested for the inventor to sign an additional assignment specifically referencing the non-provisional application. (The inventor had previously assigned the provisional and that assignment was recorded against the provisional and the same assignment document was also then recorded against the current non-provisional.)

... if we actually do this extra assignment, of sorts for the non-provisional, it can be perhaps interpreted as admitting that there is new matter. And if a patent later issues that is dependent on the provisional filing date - this extra assignment could perhaps be used to detract from the validity of the issued claims.

Sure, seems like the kind of argument that a litigator would think up when attempting to invalidate the patent. The argument has a sort of intuitive appeal, I guess ("gee, timing is kind of suspicious, why else would the inventor sign a new assignment").

However, I don't know of any case law or doctrine that says a new, utility-only assignment is an admission of any kind. Hopefully someone else will chime in with a more specific answer.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.
 



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