nunc pro tunc assignment language

IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and Copyright Law

March 22, 2023 By John DiGiacomo

Like any valuable business asset, patents, trademarks and copyrights can be sold, assigned and licensed. Indeed, assignment and licensing is common with respect to intellectual property. In legal terms, an “assignment” is a transfer of ownership, either full ownership or partial. In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning “now for then.”A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date.

For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc assignment provision might look like this:

Now, therefore, for good and valuable consideration, ASSIGNOR agrees that ASSIGNOR hereby assigned unto ASSIGNEE nunc pro tunc effective as of October 1, 2020, all right, title and interest in and to the May 1, 2017 trademark described herein … In testimony whereof, ASSIGNOR, has signed this instrument this 1st day of October 2020.”

In this example, the assignment is deemed to have been granted on May 1, 2017, but has an effective date of October 1, 2020.

In business terms, nunc pro tunc assignments are often used where past IP assignments are made verbally or via conduct. In the rush to get IP “to market,” it is not uncommon for assignments to be granted, but not reduced to writing. Nunc pro tunc assignments are also commonly used to bridge gaps in the “chain of title” for IP. This can happen when corporations and/or assets are sold, but proper paperwork is missing. Purchasers believe that they have ownership to certain patents, trademarks, or copyrights, but the missing documents cause “gaps” in the chain of title. These “gaps” can be cured by obtaining a nunc pro tunc assignment from the original owner of the IP. In the same manner, nunc pro tunc assignments are often used as part of settlements for litigation involving claims of patent, trademark and/or copyright infringement or disputes over ownership

For litigation purposes, nunc pro tunc assignments are often used to give a party legal standing to initiate litigation. To have “standing” to initiate litigation, a party must have some ownership interest in the patent, trademark or copyright. However, for courts, “standing” is based on the effective date of the assignment, not the earlier date listed in the nunc pro tunc assignment.

However, for other purposes, the earlier assignment date listed in the nunc pro tunc assignment is the credited date. For example, an assignment of a registered trademark must be recorded with the US Patent & Trademark Office (“USPTO”). This is done electronically. The assignment must be uploaded along with the proper recordation form and applicable fee. For the USPTO, the trademark assignment is based on the date designated for the assignment rather than the date of execution of the nunc pro tunc assignment.

So, when should you use a nunc pro tunc assignment for a trademark? The most common situations include:

When a trademark was previously assigned but not recorded – Sometimes, an assignment of trademark ownership may occur but the paperwork is not properly filed or recorded with the United States Patent and Trademark Office (USPTO). In this case, a nunc pro tunc assignment can be used to correct the oversight and retroactively assign the trademark to the new owner.
When the original assignment was not effective – A nunc pro tunc assignment can also be used to correct a defective assignment. For example, if the original assignment was not properly executed or lacked essential terms, the nunc pro tunc assignment can be used to correct those issues and make the assignment retroactively effective.
When there is a change in business structure – A nunc pro tunc assignment may be necessary when there is a change in the business structure of the trademark owner, such as a merger or acquisition. In this case, the new owner may need to retroactively assign the trademark to themselves to ensure that they have proper ownership and control over the trademark.
When there is a dispute over ownership – If there is a dispute over the ownership of a trademark, a nunc pro tunc assignment may be used to resolve the issue. This can occur when multiple parties claim ownership of a trademark, or when there is confusion over who actually owns the trademark.
When the trademark was abandoned – In some cases, a trademark may have been abandoned by the previous owner. If this occurs, a nunc pro tunc assignment may be used to assign ownership to the new owner retroactively. However, it is important to note that there are strict time limits for filing a nunc pro tunc assignment in these cases.

It is important to note that a nunc pro tunc assignment should only be used when there is a genuine need to correct an error or oversight in the assignment of a trademark ownership. It is not a tool to be used to cover up illegal or unethical behavior.

In addition, a nunc pro tunc assignment can be a complex legal process that requires the assistance of an experienced trademark attorney. The attorney can help ensure that the assignment is executed properly and in compliance with all legal requirements.

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Home » Trademark Assignment

A trademark assignment transfers all rights in a trademark to another party. Registering trademarks with the U.S. Patent and Trademark Office (USPTO) offers several rights, and one of those is the ability to record a trademark assignment.

When considering the transfer of any trademark though, it’s important for both parties to have a sound understanding of the legal implications. Failure to properly execute an assignment could result in disagreements over ownership, exposure to litigation, and other adverse outcomes.

What is a Trademark Assignment?

A trademark assignment transfer all rights, title and interest in a trademark to the recipient. Around 20 percent of trademarks registered with the USPTO will at some point be transferred in this manner. Once complete, the original owner no longer has a legal interest in the trademark. Both parties may benefit from these agreements since the assignor typically receives a payment and the assignee takes control of a valuable piece of intellectual property.

If you’ve secured trademark registration from the USPTO, you’ll need to record the assignment. This will provide public notice regarding the transfer of ownership. This should be done within three months following the assignment date. This creates prima facie evidence of the transfer. The USPTO does not accept Asset Purchase Agreements as evidence of an assignment.

Trademark Assignment Agreement

When ownership of a trademark is being transferred, it’s important to have a written trademark assignment agreement. A properly crafted contract can protect all parties involved. The USPTO will also not consider agreements to transfer trademarks valid unless they’re in writing.

The following qualifications should be met at a minimum:

All involved parties – the assignor and assignee – should be identified.
The trademark being assigned should be identified along with relevant ownership information (e.g. registration number).
Consideration must be listed (i.e. what each party is receiving).
List the effective date of the transfer.
Contract must be duly executed.
Trademark goodwill must be specifically transfered.

These minimum requirements will typically ensure that the transfer assignment agreement is valid and holds up in court. The onus of creating a valid contract is on the assignor and assignee. Including information regarding payment of the transfer fee and how disputes between the two parties will be handled is also recommended.

Trademark Goodwill

Trademarks are valuable pieces of intellectual property, and this value comes from their inherent goodwill. Trademark goodwill is the positive associations and feelings that the trademark creates in the consuming public. It is an intangible asset that is linked to the consumer recognition of a brand.

Any trademark assignment must explicitly state that all goodwill is also being transferred. Each transfer is unique and could result in differences in a final contract, but every valid assignment must contain language signifying transference of goodwill. The agreement will otherwise be viewed as an “assignment in gross” and could cause the loss of trademark rights.

Assignments involving both common law trademarks and those registered with the USPTO must include a transfer of trademark goodwill. This is what inherently makes a brand identifier valuable. The importance of this element of assignment relates to consumer trust. The source of a product/service should match what a consumer was led to believe.

Reasons for Trademark Assignments

Even though a trademark is seen as one of the most valuable assets a business can own, there are a variety of reasons why a trademark assignment may be desired. These are just a few of the reasons behind trademark assignments:

Business changes : An assignment may be required if a business owner forms a new entity or dissolves an old one.
Sale of business : A trademark owner may decide to focus on a different business or retire.
Manufacturing or Marketing costs : A trademark may become more valuable to another party due to manufacturing or marketing costs.

There are many reasons why a brand owner may choose to assign their trademark to a third party. These transfers are permanent when properly executed. This makes it important for registrants to understand all implications. There are other options available – such as licensing agreements, discussed further below – if a trademark owner wants to maintain some control over the trademark.

Before Taking Ownership

Most of the focus on trademark assignments rests on assignors, but those taking ownership of a trademark have many considerations as well. In addition to the rights they’re gaining through the transfer of ownership, they’re also taking on the risks and responsibilities of owning a trademark. Assignees should consider all the following concerns before finalizing an agreement:

Reputation of brand : Purchasing a trademark is essentially purchasing the reputation of a brand. If consumers do not view a trademark favorably, you’ll have a difficult time changing their minds.
Confirm ownership : Performing a thorough trademark search prior to entering an agreement is essential. This will confirm ownership and give you an idea of whether trademark disputes may arise in the future.
Intent-to-use identifiers : Trademark assignment involving Intent-to-Use Trademarks must meet specific criteria. If an identifier is not yet in commercial use, the assignment must be to a business successor.
Potential disputes of ownership : If proper documentation is not recorded with the USPTO, the assignment could be deemed invalid.
Third-party disputes : Failure to properly transfer ownership can also leave the assignee open to claims of trademark infringement from third parties.
Transfer of trademark goodwill : Always make sure trademark goodwill is explicitly transferred in the assignment agreement.

The moral here is to always perform due diligence before taking ownership of another party’s trademark.

Trademark Assignment with the USPTO

To ensure appropriate transfer of ownership, a trademark assignment must be recorded with the USPTO. This is done through the Electronic Trademark Assignment System. In addition to uploading your Transfer Assignment Agreement, you must complete an online form and pay the respective fees. Failure to do so will harm assignees in future litigation and prevent them from renewing the trademark .

When filing a trademark assignment with the USPTO it must be accompanied by a Recordation Form Cover Sheet. This lists the basic required information for transferal. The USPTO typically processes assignments within a month or two and then they become public record.

Nunc Pro Tunc Trademark Assignment

Not all assignments of trademark rights are immediately put into writing. This creates unnecessary risks for both parties. In these situations, a nunc pro tunc trademark assignment can retroactively document the transfer of ownership. Nunc pro tunc is Latin for “now for then,” so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing.

This written document can be filed with the USPTO, but unlike a traditional assignment, it’s effective from the date of oral assignment rather than the date of execution. Documenting assignments after the fact is definitely not a best practice and can lead to many issues. It is however the only way to try to fix an error that has occurred in the past.

Trademark Licensing

Assigning ownership of a trademark isn’t necessary to grant certain rights. Trademark licensing can give third parties permission, for instance, to use a trademark without the original owner relinquishing rights. This is the type of business relationship that exists for more than 900,000 franchised business establishments across the country.

The owners of trademark registrations typically strive to prevent outside parties from using their intellectual property. By licensing use to certain brands or individuals, though, they garner a variety of benefits. These may include gaining expertise, assistance in shouldering the burden of a growing business, increased brand recognition, creation of a passive revenue source, and expansion into new markets.

The three basic types of trademark licensing agreements are exclusive, sole and non-exclusive. An exclusive license means that the licensee has the exclusive ability to sell the goods or services at issue. A sole license means that the licensee has the right the sell the goods or services but the right is shared with the licensor. A non-exclusive license means that the licensor retains the right to license the trademark to other third parties and continue to sell the goods or services themselves.

Licensing agreements should always be in writing and preferably they should be notarized. Failing to have a license agreement in writing will lead to many issues if trademark litigation or other disputes arise. Having the agreement notarized will also reduce the likelihood of disputes over the validity of the license.

The agreements used for trademark licensing and assignment have some similarities, but there are important distinctions. Licensing documents, for example, should include quality control provisions, the type of license granted, the effective dates of the license, and any specifications regarding the renewal of the agreement. These terms are typically not part of assignments.

If you are considering a trademark assignment, please do not hesitate to contact us with any issues or questions that you may have.

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Intellectual Property: Assignments and Transfers | Practical Law

Intellectual Property: Assignments and Transfers

Practical law practice note w-005-5845 (approx. 23 pages).

Morris E. Turek | (314) 749-4059 | [email protected]

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Home > Trademark Blog > Trademark Assignment > What is a Trademark Assignment? How Do I Assign Trademark Rights?

What is a Trademark Assignment? How Do I Assign Trademark Rights?

A trademark assignment (which is different than a trademark license ) is simply the transfer of ownership of a trademark from one person or entity to another. In order for an assignment to be valid and enforceable, it must include the underlying goodwill associated with the trademark, or in other words, the recognition the trademark has with the public. Otherwise, the transfer of ownership will be considered an assignment in gross and the trademark may be deemed abandoned by the parties and all rights could be lost forever.

The Trademark Assignment Should Be in Writing

Although an assignment need not be in writing to be effective, it’s strongly recommended that it be in the form of a written document signed by both the assignor and the assignee. In the event the parties fail to memorialize the trademark assignment in writing at the time of an oral assignment, they can later prepare what’s called a nunc pro tunc assignment. This type of assignment is similar to an ordinary assignment of trademark rights, but instead of it being effective on the date it’s executed (which could be years after the trademark was orally assigned), it’s considered effective from the date the oral assignment was made.

Recording a Trademark Assignment

If the trademark being transferred is the subject of an existing US trademark registration or pending trademark application, the assignment should be recorded with the Assignment Services Division of the United States Patent and Trademark Office (USPTO). This should be done electronically using the Electronic Trademark Assignment System ( ETAS ). You must complete the online form, upload the assignment, and pay the government filing fees (which are quite minimal). It’s important to promptly record the assignment so that the USPTO records remain accurate and so that the public is put on notice as to the rightful owner of the trademark. In addition, a trademark registration renewal cannot be filed in the name of the new owner unless the assignment has been recorded with the USPTO.

Be Very Careful…

Although a pending trademark application may be assigned prior to maturing into a trademark registration, you may not assign a trademark application filed under Section 1(b) ( intent to use ) until the trademark itself is in use in commerce , meaning that there’s an existing and ongoing business related to the mark. If an intent-to-use application is prematurely assigned, any resulting trademark registration will be considered void and subject to a trademark opposition or trademark cancellation .

Need Help Preparing or Recording a Trademark Assignment?

In conclusion, there are many pitfalls that must be avoided when making an assignment of trademark rights in order to ensure that the transfer of ownership is valid, legal, and binding.

I’m experienced US trademark attorney Morris Turek. If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059 , via email at [email protected] , or through my contact form located below. I look forward to hearing from you soon.

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A Dive into ‘Nunc Pro Tunc’

Understanding Nunc Pro Tunc in Legal Parlance

A phrase in Latin, ‘Nunc Pro Tunc,’ stands for “now for then.” However, it is also used as a term to mean correction of judicial orders. Using the same in terms of Intellectual Property Rights (IPRs) corresponds to the assignment of such assets.

Let’s Pick a General Example

The Nunc Pro Tunc assignment assumes the spotlight when a party back-dates an assignment to try to cure a standing defect. Consider Plaintiff A, who sues for the infringement of a right safeguarded by Patent Laws . Defendant B, upon research, uncovers that Plaintiff A does not actually own the same on account of some defect in the chain of title. Therefore, Plaintiff A then responds by getting the Nunc Pro Tunc assignment signed by back-dating the assignment to a date before the lawsuit was lodged and filed. To give you a head up: This does not work as a good legitimate practice in all jurisdictions.

Nunc Pro Tunc: In Business Parlance

For a trademark registered on 1 st January 2015, Nunc Pro Tunc assignment typically shall look like this:

“Now, therefore, for good and valuable consideration, the ASSIGNOR agrees that ASSIGNOR hereby assigned unto the ASSIGNEE Nunc Pro Tunc effective as of 1 st September 2022, all right, title, and interest in and to the trademark XXX bearing registration no:******. In testimony, whereof, the ASSIGNOR has signed this instrument on 1 st September 2022.”

Herein, the assignment is deemed to have been executed on 1 st January 2015; but is deemed to have been effective from 1 st September 2022.

In business terms, Nunc Pro Tunc assignments are usually used where past Intellectual Property (IP) assignments are made verbally or by mode of conduct. The same is not very unusual since it may so happen that proprietors keen to make an immediate move in the market may “leave for later” or may forget to reduce agreements in writing. In such scenarios, Nunc Pro Tunc assignments are commonly drawn and deduced to bridge the gaps in the “chain of title” for an IP asset. It can also happen when entities and/or assets are sold – but proper paperwork is misplaced. In such an event, purchasers often consider themselves as the obvious owners of such patents, trademarks, or copyright belonging to the former owner but the missing documents lead to ‘gaps’ in the chain of title. These ‘gaps’ can be cured by obtaining a Nunc Pro Tunc assignment from the original owner of the IP asset in favor of the later purchaser of the transaction. In the same manner, Nunc Pro Tunc assignments are often utilized to reach an amicable settlement in litigated matters involving claims over an IP asset, be it a patent, trademark, and/or copyright.

Nunc Pro Tunc: To Reach a Settlement in Litigation

For the purpose of litigation, Nunc Pro Tunc assignments are generally utilized to give a party a legal standing to initiate litigation, i.e., the right to sue or be sued. To have a legal ‘standing’ to initiate litigation, a party to the suit must have proof of rightful ownership or proof of title and/or interest in the patent, trademark, or copyright subject. However, as discussed earlier hereinbefore, for courts, ‘standing’ is passed based on the effective date of the assignment and not the earlier date listed in the Nunc Pro Tunc assignment.

Conclusion: An Acceptable Practice or Not?

It can be simply contemplated that where a non-owner or licensee is given the right to sue, it would give impetus to enmesh the judiciary in abstract legal battles while creating a risk of multiple litigations. It would also provide an incentive for parties to acquire assignment rights to expand their scope of operation and litigation. Inevitably, it would result in a delay in justice delivery and an increase in expenses. The same would defeat the cause of the judicial organ.

It is for this reason that in some countries, such Nunc Pro Tunc assignments are recorded, while in others, no acquiescence of retroactive effect assignments is admitted.

Documenting deeds of assignments after a transaction that has been assumed to be in effect is most certainly not a best practice and can affirmatively lead to several issues. However, it is the only way to attempt to fix an error that has occurred sometime in the past.

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Patent and Trademark assignments

The uspto epas/etas assignment process, and legal chain of title principles, help the public determine who owns a given patent or trademark. “ nunc pro trunc assignments ” are sometimes used to clear up gaps in the record..

Who owns that patent? Some countries automatically assume that patents belong to the employer. However the US legal system presumes that patents originally belong to their human inventors. This is based on various “right of capture” cases involving foxes and other critters that go back to medieval/roman times.

The chain of title

A “chain of title” shows how ownership and other rights to a piece of property changed over time. The underlying concepts are based on real estate law. Over over hundreds of years, this law developed methods to protect the innocent against various real estate scams. Here we will skip over many years of colorful and sometimes bloody history and focus on modern-day IP.

The law requires an unbroken series of records handing off ownership from one owner to the next. This chain must extend from the original owners (the inventors) to the present owners. The USPTO helps manage this process through their online “Electronic Patent Assignment System” (EPAS). The USPTO also has a similar system for Trademarks, called the “Electronic Trademark Assignment System” (ETAS).

EPAS – Electronic Patent Assignment System

The EPAS system automatically records (and display s) the chain of title from the original inventors to the present owner(s). It is often useful to see “who” owns “what.”

Real estate history is full of frauds, such as selling the same property multiple times to unsuspecting purchasers. So, various legal anti-fraud measures have evolved.

In particular, the law tends to treat innocent “good faith” (bona fide) purchasers more kindly. But the purchasers must show some prudence, such as by looking up assignment records before purchasing. This system won’t work if the assignment records are not current. To keep the system up-to-date, the USPTO follows 35 USC § 261 , which states:

35 USC § 261: An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a 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.

What does this legalese mean? It means you should register your patent (or trademark) assignments within three months .

Nunc Pro Trunc Assignments

In the real world, businesses are often bought and sold with long contracts. The IP list usually ends up in the appendix of these contracts. As an intangible property, everyone tends to overlook this appendix. Then, sometimes much later (often as part of due diligence for a later sale), someone notices that the IP was not correctly assigned. The results are often quite exciting. Can you say “ SNAFU?”

Retroactive assignments : You can usually fix late assignments by filing the assignments retroactively. The USPTO calls these “ Nunc Pro Tunc Assignments ” (Latin for “now for then”). However, the drawback of such late assignments is that the “automatic” anti-fraud legal protection no longer operates. You don’t need these automatic protections if there is no fraud. However, the automatic protection occurring with on-time filing is preferable.

Illustration: Blockchain by James Fok from the Noun Project

Practical Law

Intellectual Property: Assignments and Transfers

Practical law practice note w-005-5845 (approx. 23 pages).

United States

APPLICATION FILING

Ownership transfer of intellectual property rights in general, what are assignments of intellectual property rights.

An assignment is the act of transferring ownership of the Intellectual Property Right from the assignor to the assignee. Often, the assignment document is simply referred to as the “assignment”. The two parties can be individuals or legal entities. Intellectual Property Rights typically need to be assigned on a country by country basis complying with the various national assignment requirements. However, international or regional Intellectual Property Right applications often can be assigned centrally before the respective international or regional authorities such as the respective international or regional patent or trademark offices. Examples for such authorities are the International Bureau handling International Patent Applications under the Patent Cooperation Treaty (PCT), the European Patent Office (EPO) handling European Patents and the European Union Intellectual Property Office (EUIPO, formerly named OHIM) handling European Union Trademarks (EUTM) and Registered Community Designs (RCD).

What IP rights can be assigned?

Most Intellectual Property Rights can be freely assigned in part or in its entirety between any assignor and assignee. Certain partial rights may be assignable separately and independently from the underlying IP right, for instance the priority right determining the time rank of an IP right.

What is required for valid assignments of Intellectual Property Rights?

National laws, rules and formalities apply for recordation of country by country assignments by a variety of national, regional or international recording authorities. When looking at a bigger Intellectual Property Rights family, a one fits all assignment fulfilling this wide variety of requirements is virtually impossible. Typically, national representatives should be retained for complying with this variety of requirements. If possible, some international or regional Intellectual Property Rights should be assigned centrally while still pending for avoiding the hassle of dealing with such wide variety of national requirements that may be required after the issue date of the international or regional Intellectual Property Right.

What are typical form requirements for assignments?

Assignments typically need to be made in writing and typically require the signatures of both the assignor and the assignee. In case of a legal entity, the signatory needs to be entitled to sign on behalf of that legal entity, typically an officer of the legal entity, or needs to have received the signatory authorization from such officer. Although in some countries the signature of the assignor only may suffice, more commonly, the signatures of both parties are required. It is good practice to assume that both signatures are required everywhere. The signatures are typically required in ink. As an alternative to filing the original with the signatures in ink, an increasing number of authorities have waived the requirement to file the original but accept copies, or when filed electronically, scans of the assignment document signed in ink. If not filed, the original should be kept in a safe place. Some countries may require notarization and maybe even require some form of legalization, e.g. “Apostille”, for effectively recording an assignment.

What assignment document content is typically required for assignments?

In most countries, the assignment document just identifies the right that is assigned and the parties, but some countries require a specific text using specific language. From a practical standpoint, a good way of looking at assignments from a formal point of view is to treat these like a contract, although the assignment may have comparatively little content in comparison to other types of contracts. A few authorities may require the use of a specific form.

Why are assignments important?

If the assignee likes to exercise certain rights, the assignment must be recorded. A proper assignment and recordation thereof may for instance be required for the assignee = applicant to act in the proceedings before the various authorities. The failure to properly assign and record may also result in enforceability delays of the assigned IP right by the assignee until recordation has been finalized. In some countries, this may cause significant enforceability delays. Also, a proper assignment is required for claiming priority rights. Further, it is helpful for the assignee to become an assignor for yet another assignment after the first assignment is recorded.

What is a “nunc pro tunc” assignment?

A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded.

What are the most common assignment deficiencies?

Although the assignment document has only limited content a variety of deficiencies may occur. Just to mention a few: The assignor may not be the owner of the assigned IP right at the date of assignment; the incorrect IP right is assigned; at least one of the signatories lacks signatory authorization; a required language or form is not used; certain assignment document form requirements are missed, formalities such as signatures in ink, notarization or legalization are missed; some recordation form requirements such as request and recordation fee payment are missed; the signature by one party such as the assignee is missed; the parties are not properly defined to be clearly identifiable, for instance due to incorrect name and/or address; or the date of the assignment is too late for taking certain legal effects.

What are the legal consequences of a deficient assignment?

Although it may be possible to overcome some consequences by correcting deficiencies without losing the initial assignment date, or time permitting simply by executing and recording a new assignment, in some cases these remedial measures may come too late. For example, for validly claiming priority rights, the priority right needs to be actually owned by the applicant of the later application within the priority time period. Unless recognizing nunc pro tunc assignments, an assignment after the priority period may come too late. The risk with assignments is that some deficiencies may not be noticed until it is too late to fix the problem. For this reason, assignment formalities should be observed scrupulously.

About author Alexander Schlee

Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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What is a Nunc Pro Tunc Trademark Assignment?

A nunc pro tunc trademark assignment is a legal document that retroactively assigns ownership of a trademark from one party to another. The term “nunc pro tunc” is a Latin phrase that means “now for then,” and it indicates that the assignment is being made retroactive to a date in the past.

Nunc pro tunc assignments are typically used when there has been a mistake or oversight in the assignment of a trademark, and the parties involved want to correct the mistake retroactively. For example, if a trademark was assigned to the wrong party by mistake, a nunc pro tunc assignment can be used to correct the error and transfer ownership of the trademark to the correct party.

Nunc pro tunc assignments are typically used in conjunction with other legal documents, such as a trademark assignment agreement, which outlines the terms of the assignment and sets forth the obligations of the parties involved. In order to be effective, a nunc pro tunc assignment must be executed by both the assignor (the party transferring ownership of the trademark) and the assignee (the party receiving ownership of the trademark), and it must be properly recorded with the relevant trademark office.

When Should I Submit a Nunc Pro Tunc Assignment?

You should consider submitting a nunc pro tunc assignment if you have discovered that a mistake was made in the assignment of a trademark, and you want to correct the mistake retroactively. This can be important because a mistake in the assignment of a trademark can lead to confusion and potential legal issues, such as disputes over ownership or the right to use the trademark.

It’s important to note that nunc pro tunc assignments are typically only used in specific circumstances, and they may not be appropriate in all cases. For example, a nunc pro tunc assignment may not be appropriate if there is a dispute over ownership of the trademark, or if the original assignment was made fraudulently. In these cases, it may be necessary to pursue other legal remedies to resolve the issue.

If you are considering submitting a nunc pro tunc assignment, it’s a good idea to consult with a qualified attorney who can help you understand your options and determine the best course of action. An attorney can also help you draft and file the necessary documents, and ensure that the assignment is properly recorded with the relevant trademark office.

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Practice areas, benefits & limitations of uspto patent ownership records.

April 20, 2021

By: Brian T. Moriarty

Bloomberg Law

To evaluate a patent's legitimacy, whether it relates to litigation or a deal, one must first determine who owns the patent. This inquiry requires a visit to a far corner of the U.S. Patent and Trademark Office (PTO) known as the Assignment Recordation Branch—the patent world's version of a local county's recorder of deeds. The Assignment Recordation Branch keeps records of ownership of U.S. patents and applications, as it has done since Thomas Jefferson's days, except now the records are easily accessible through the internet.

The PTO Assignment Recordation Branch database is an important repository of patent records that should be reviewed by all parties that have or seek any interest in a patent. Interested parties should understand that the records filed with PTO are not vetted by the PTO, are not necessarily reliable, authentic, or complete, but are important evidence of ownership

These records are best viewed as a starting point and might be followed by additional actions to clarify ownership, such as through representations in deal documents or additional discovery in litigation. In sum, a party searching for patent ownership records at the PTO can gather valuable information searching the assignment database, but its search of the assignment database should be a start, not the end of the inquiry.

This article explores the value of and the significant limitations of the database.

Overview The PTO allows for the filing of assignments and other records that evidence current ownership, and it maintains records of prior owners. The PTO permits filing of records to fix flaws in ownership records. The PTO also allows the filing of other records that do not evidence present ownership but instead relate to potential future ownership rights or licensed patent rights.

The PTO's assignment database contains millions of records. It is a veritable social and business history of patent owners’ lives, often including records of birth and marriage, divorce and death of individuals; and mergers, acquisitions, sales, and dissolutions of corporate parties, and name changes. The records also reflect potential future ownership or limits on transferability, such as security agreements, notices of litigation, IRS tax liens, gifts, inheritances, and court orders. Records are filed by parties from virtually every country globally, and some non-countries, like Antarctica.

The patent assignment recordation statute, section 261 of the Patent Laws, provides some protection for current assignees against claims of other purchasers who fail to diligently record ownership records. In 2012, the section was amended to permit recordation of interests that are less than a present ownership interest. This amendment, however, did not provide any additional rights, benefits, or priorities for recording these lesser interests. The PTO noted that its database allows for “notification of equitable interests or other matters relevant to the ownership of a patent or application.”

Limitations Many records filed with the PTO seem to protect important rights but often fall short of expectations. For example, many technology companies pledge patents as collateral to secure funding. The lending bank obtains security interests in the patents and then files a security agreement with the PTO to attempt to enhance its security interests. While the filing of the security agreement with the PTO might give notice to others, it does not perfect the security interests. Only by filing a UCC-1 financing statement with a state regulator (not with the PTO) is a security interest perfected.

Another type of filing that often provides little value are nunc pro tunc agreements used to attempt to repair errors in the chain of title. A purchaser of a patent may realize that there is a flaw in the chain of title and seek to correct title by filing a “nunc pro tunc” assignment to retroactively fix the mistake. Courts have noted that a nunc pro tunc correction can operate to govern the relationship between the parties to the agreement, but such efforts are ineffective as attempts to rewrite history as to third parties. This approach echoes U.S. Supreme Court Justice Anthony Kennedy's comment in a related context that “the charming utility of the nunc pro tunc device cannot obscure its outright fiction.” Thus, traditional nunc pro tunc patent assignments may only act to signal that there is a flaw in patent ownership.

In 2020, the U.S. Court of Appeals for the Federal Circuit in Schwendimann v. Arkwright, created confusion about nunc pro tunc agreements. The court held that if a technically faulty assignment is repaired, but not replaced, under state laws under the doctrine of contract reformation, then by “virtue of the reformation, the written instrument was corrected nunc pro tunc to the point of assignment.” In other words, an assignment agreement that is reformed can have a retroactive effect, but a new nunc pro tunc assignment agreement cannot be retroactive. The likely result of the confusing decision may be the birth of a new PTO filing: “Assignment by Reformation.”

Further, all the records are not original records but are electronic copies that may or may not be authentic. The records are created by interested parties, not the PTO, and the PTO does not validate or verify any of the records. The PTO considers its act of adding records to the database to be “ministerial” and not a substantive review of rights. The party submitting the records does not sign an oath, attestation, or otherwise vouch for the validity of the records.

Also, no party has any legal obligation to file ownership records with the PTO assignment database. There are many ownership records filed with the PTO that are not filed in its assignment database, but instead are filed as part of the PTO's Patent Application Information Retrieval (PAIR) system that stores the records of the patent prosecution process. There are also patent owners who choose not to publicly file ownership records or who simply overlook the matter.

In addition, no one has any legal obligation to even review patent ownership records, with the exception of certain assignees who are charged with constructive knowledge of the current patent assignments. Thus, the PTO records in the assignment database are not necessarily complete, valid, or authentic. At best, courts presume the ownership records are valid and operable but are subject to challenge to overcome the presumption.

Brian T. Moriarty

Principal t. 609.937.7951 Email Brian

IP Litigation

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Trademark assignments: Transferring ownership or changing your name

Assignment Center

Trademark owners may need to transfer ownership or change the name on their application or registration. This could happen while your trademark application is pending or after your trademark has registered. Use Assignment Center to transfer ownership or to request a change in name. See our how-to guide for trademarks on using Assignment Center.

Here are examples of common reasons:

I’ve sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment.
I got married just after I filed my application and my last name changed. This is a name change of the owner.

There are fees associated with recording assignments, name changes, and other ownership-type changes with the USPTO. See the Trademark Services Fee Code “8521” on the current fee schedule to find the specific fee amount.

See the correcting the owner name page to learn if you can correct an error in the owner's name that does not require an assignment.

Limitations based on filing basis

Intent-to-use section 1(b) applications.

If you’re transferring ownership to a business successor for the goods or services listed in your identification, you can file your assignment at any time. In all other cases, you must wait until after you file an Amendment to Allege Use or a Statement of Use before you file your assignment. For more information, see the Trademark Manual of Examining Procedure (TMEP) section 501.01(a) .

Madrid Protocol section 66(a) U.S. applications and registrations

All ownership changes involving international registrations must be filed with the International Bureau of the World Intellectual Property Organization (WIPO). Follow the guidance on the WIPO website about changing ownership or changing an owner’s or holder’s name. See the TMEP section 502.02(b) for more information.

How to update ownership information

Submit a request to transfer ownership or change the name.

Use Assignment Center to submit your request to transfer ownership or change the owner name for your U.S. application or registration. You will need to fill out a cover sheet with certain information and may also need to upload supporting documents, depending on the type of change. Also, be prepared to pay the Trademark Services Fee Code “8521” on the current fee schedule .

You'll receive a notice of recordation or non-recordation

In about seven days, look for your notice. If you don’t receive one, contact the Assignment Recordation Branch . The Notice of Non-Recordation will explain the reason your request to record was denied. Here are four common reasons:

A critical piece of information was omitted from the cover sheet.
The document is illegible or not scannable.
The information on the cover sheet and the supporting document do not match.
The assignment was not transferred with the good will of the business.

USPTO trademark database will be automatically updated after recordation

Once recorded, the trademark database should reflect the new owner information or name change. Check the Trademark Status and Document Retrieval (TSDR) system to see if the owner information has been updated. See below for information about what to do if the database isn’t updated.

What to do if the USPTO trademark database isn’t updated

In some cases, the USPTO will not automatically update the trademark database to show the change in ownership or name. This could happen when the execution date conflicts with a previously recorded document or multiple assignments have the same execution date on the same date. For more information, see TMEP section 504.01 .

If the trademark database wasn’t updated and your trademark has not published in the Trademark Official Gazette yet, and you need to respond to an outstanding USPTO letter or office action, use the appropriate Response form to request the update of the owner information. If you don’t have a response due, use the Voluntary Amendment form . To do this,

Answer “yes” to the question at the beginning of the form that asks if you need to change the owner’s name or entity information.
Enter the new name in the “Owner” field in the “Owner Information” section of the form.

Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate. To request the owner information be updated manually when your trademark has already published or registered, use the appropriate form listed in the “Checking the USPTO trademark database for assignment/name change” section below.

If you made an error in your Assignment Center cover sheet

Immediately call the Assignment Recordation Branch to request possible suspension of the recordation. The recordation may be suspended for two days. You’ll be instructed to email the specialist you speak with requesting the cancellation and that a refund be issued. However, if the assignment has already been recorded, your request will be denied. You must then follow the procedures outlined in the TMEP section 503.06 to make any corrections to the assignment.

We strongly recommend filing these changes online using Assignment Center , which will record your changes in less than a week. It is possible to request these changes by paper using the Recordation Form Cover Sheet and mailing the cover sheet, any supporting documentation, and fee to:

Mail Stop Assignment Recordation Branch Director of the U.S. Patent and Trademark Office PO Box 1450 Alexandria, VA 22313-1450

If you file by paper, we will record your changes within 20 days of filing.

Checking the USPTO trademark database for assignment /name change

After you receive a Notice of Recordation, wait one week before checking to see if the owner information has been updated in your application or registration in the trademark database. Follow these instructions:

Go to TSDR .
Enter the application serial number or registration number.
Select the “Status” button.
Scroll down to the “Current Owner(s) Information” section.
Check to see that your owner information was updated correctly.

If the owner information hasn’t yet been updated, go to the “Prosecution History” section in TSDR to see the status of the assignment or name change. It can take up to seven days to see an entry in the Prosecution History regarding the assignment. If an entry shows "Ownership records not automatically updated," you will need to submit a TEAS form making the owner or name change manually.

The form you need depends on where your application is in the process.

If your trademark has not published in the Trademark Official Gazette yet, use the TEAS Response to Examining Attorney Office Action form or the TEAS Voluntary Amendment form . If you are responding to an outstanding USPTO Office action regarding your application or registration, use the TEAS response form.
If your trademark has published but hasn't registered, use the TEAS Post-Publication Amendment form .
If your trademark is registered , use the TEAS Section 7 Request form . A fee is required.

Updating your correspondence information

If your ownership information is automatically updated in TSDR , you must ensure your correspondence information, including any attorney information, is also updated. To update your correspondence or attorney information, use the TEAS Change of Address or Representation (CAR) form . This form cannot be used to change the owner name.

For further information, see TMEP Chapter 500 and look at the frequently asked questions .

Additional information about this page

Patent Assignment (Nunc Pro Tunc)

This precedent is a basic patent assignment by which the assignor assigns and/or confirms the assignment of a Canadian patent application, which assignment is to take nunc pro tunc effect (i.e., retroactive legal effect). This precedent includes practical guidance and drafting notes. Nunc pro tunc is a Latin expression meaning "now for then". Accordingly, nunc pro tunc patent assignments are often used to retroactively correct earlier patent assignments which may have contained errors in relation to information identified in them, such as the name of the assignor or the assignee. Nunc pro tunc patent assignments may also be used to fill gaps in the chain of title for patents or patent applications, as assets may often be sold or transferred without the necessary paperwork pertaining to transfers of intellectual property. For more information, see the practice notes: Patent Fundamentals and Transfer of Patents and Patent Applications, the checklists: Patent Assignment Checklist and ...

Federal Circuit Finds Nunc Pro Tunc Agreement Does Not Confer Standing

Related insights, significant recent decisions relevant to private company m&a, rng project fundamentals, bump in the road: federal judge selectively halts enforcement of the pregnant workers fairness act in texas.

Introduction
Recent Case Highlights
Public Policies Limiting Patents
Under-Utilized Defenses
Who Decides What When?
a) general canons of construction
b) role of other claims
c) role of specification
d) role of prosecution history
e) role of prior art, experts, and extrinsic evidence
f) claim preamble
g) claim transition
h) method claims
i) non-method claims
j) particular claim language
Content And Form Of A Claim Construction
Relationship To Certain Defenses
a) whether sec. 112(6/f) treatment invoked
b) construction of sec. 112(6/f) claim element
c) relationship to claim differentiation
a) preamble
b) printed matter, instructions on use, mental steps
c) non-functional descriptive material
d) intended use
e) wherein and whereby clauses
f) intended result
g) process portion of product-by-process claim
h) source or process restrictions in product claim or product limitation
i) optional, conditional steps
j) input signals in a circuit
k) theory of operation
Non-Infringement
Expiration of Patent; Extension Of Term
Dedication to Public
a) sec. 112(6/f) element
b) product-by-process claim
c) reverse doctrine of equivalents
a) required evidence
b) matter of law restrictions
c) prosecution history estoppel
d) disclosure-dedication restriction
e) relationship to sec. 112(6/f)
Sec. 271(a) (Direct) Infringement Of Any Type Of Claim
a) "use" of claimed method
b) "offer to sell" a method
a) “makes” claimed invention
b) “uses” claimed invention
c) “sells” or "imports" claimed invention
d) “offers to sell” claimed invention
Sec. 271(a) (Direct) Multi-Actor (Divided; Joint) Infringement
Sec. 271(a) (Direct) Infringement To Support Indirect Infringement
Indirect Infringement Requires Knowledge Of Patent
a) communication to direct infringer
b) knowledge of infringement
c) relevance of litigation defenses
d) relevance of clearance opinion
e) relevance of non-infringing uses
f) relevance of instructions to users
g) relevance of efforts to avoid infringement
a) knowledge of infringement
b) “offers to sell or sells”
c) “component,” “material or apparatus”
d) “material part of the invention”
e) substantial non-infringing use
Sec. 271(e)(2) Infringement (e.g., ANDA)
Sec. 271(e)(1) “Safe Haven”
a) “component”
b) sec. 271(f)(1)
c) sec. 271(f)(2)
a) “a product”
b) “made by a patented process”
c) sec. 295 shifting burden of proof
d) sec. 287(b) restriction on damages
a) abatement
b) intervening rights
c) “substantially identical” claim scope
d) relationship to pending litigation
Presumptions And Burdens
Assignor And Licensee Estoppel
Person Having Ordinary Skill In The Art (“PHOSITA”)
a) Alice step one
b) Athena Diagnostics En Banc Rehearing Denial
c) improvement to computer or machine functionality
d) categories of patent-ineligible subject matter
f) Alice step two
g) idea’s breadth immaterial
h) idea’s novelty immaterial
i) idea’s utility immaterial
j) preemption of idea
k) machine-or-transformation “test”
l) non-method claims
m) when decided?
Utility (Sec. 101)
Regards As The Invention (Sec. 112(2/b))
a) post-Nautilus decisions
b) ambiguous claims
c) unclear how to test for compliance
d) requiring forward-looking assessments of likely future results
e) terms of degree
f) functional (and result) claims
g) coined terms
h) hybrid claims
i) “consisting essentially of” claims
j) impossibility in claim
k) correction of errors in claim
l) who decides what when?
Particular And Distinct Claims (aka Indefiniteness) (Sec. 112(2/b) + Sec. 112(6/f))
a) which disclosure governs
b) support “full scope” of claim
c) omission of non-optional element
d) original claims
e) functional claims
f) genus claims
g) relationship to enablement
b) enable “full scope” of claim
c) undue/unreasonable experimentation
d) teaching away
Best Mode (Sec. 112(1/a))
a) "filed before"
b) patent owner’s burden
“Invention” Date (Sec. 102(g))
(FITF) U.S. Patents/Published Apps Qualifying As Prior Art (Sec. 102(a)(2) (AIA))
(FITF) Other Prior Art (Sec. 102(a)(1) (AIA))
a) ready for patenting
b) commercial offer for sale
c) may be secret
d) method claims
Public Use Bar
Experimental Sale Or Use
a) third-party on sale/public use
b) “printed publication” (sec. 102(a), (b))
c) sec. 102(e) prior art
d) applicants’ “publications”/disclosures
e) patent owner’s other patents
f) prior invention (sec. 102(g)) [by one of the co-inventors]
g) prior invention (sec. 102(g)) [by third party]
h) derivation from others; derived knowledge (sec. 102(f))
i) “known or used by others” in U.S. (sec. 102(a))
j) applicant admitted prior art and knowledge
k) overcoming putative prior art
a) inherent disclosure
b) genus - species
c) method claims
d) apparatus claims
e) reference enabling
f) single reference
g) expert testimony
h) relationship to written description support
a) analogous art
b) what a reference teaches
c) teaching away
d) motivation to combine or modify art
e) reasonable expectation of success
f) the manner in which the invention was made
g) objective indicia of non-obviousness (secondary considerations)
h) nexus to claimed invention
i) objective indicia of obviousness
j) admissions and omissions supporting obviousness
k) genus – species
l) method claims
m) obvious as a matter of law
Sec. 135 Repose
a) same invention
b) obviousness-type (non-statutory)
c) terminal disclaimer
d) safe harbor for “divisionals”
Broadening Reissue, Reexam, IPR Or PGR (Secs. 251, 305, 314, 316, 326)
Inventorship (Secs. 101, 102(f), 116, 256)
Abandonment Of Invention (Sec. 102(c))
Disclaimer Of Claim (Sec. 253(a))
Oath Defect
Other Defects
Unclean Hands
Likely Survives Therasense
Pleading Requirements
Effect Of Finding Inequitable Conduct
Ownership/Standing

Assignments

Bona Fide Purchaser (Sec. 261)
Constitutional And Statutory (fka “Prudential”) Standing
Co-Ownership Of Patent
License/Exhaustion
Exhaustion; First Sale Doctrine
Implied License
Acquiescence
Legal Estoppel
Equitable Estoppel
Increased Damages; Non-Willfullness- Basics
Willfulness
Pre- Halo Willfulness And Increased Damages
Opinion Of Counsel
Waiver Of Privilege
Who Decides Willfulness Or Misconduct?
Enhancement of Damages
Damages and Other Monetary Remedies – Basics
a) time limitation on damages
b) sec. 287 marking; notice of claim; impact on damages
c) indirect-infringement damages limited to extent of direct infringement
d) apportionment
e) limits re: extraterritorial reach (foreign activities)
f) failure to mitigate damages
g) “benefit rule” in mitigation of damages
a) lost sales
b) reduced prices/price erosion
Lost Royalties
Established Royalty
a) Georgia-Pacific factors
b) hypothetical negotiation
c) royalty base; entire market value rule
d) royalty rate
e) rejected reasonable royalties methodologies
f) FRAND standard essential patents
Supplemental Damages
Prejudgment Interest
Provisional Rights; Pre-Issuance Reasonable Royalty (Sec. 154(d))
Post-Judgment (“Ongoing”) Royalties
Equitable Principles Governing Injunction
Irreparable Harm
Legal Remedies Inadequate
Balance of Hardships
Serves Public Interest
Preliminary Injunction
Scope Of Injunction
Contempt Of Injunction
ITC Remedies
Court Of Federal Claims
Claim Preclusion
Issue Preclusion
Kessler Doctrine
Judicial Estoppel
AIA Trial-Based Estoppel
Prosecution Laches
Reissue Recapture Rule
Reissue/Reexamination Defects
Improper Claim Structure Under Sec. 112(4/d)
Improper Adjustment Or Extension Of Patent Term
Cross-Appeal Rule
Scope Of Issues Limited After Appeal
Sovereign Immunity
Medical Practitioner Immunity
Lack Of Personal Jurisdiction
Improper Venue
Sanctions and Fees Against Patent Owner- Basics
Cases Awarding Fees
Cases Denying Fees
“Exceptional Case”: Factors For And Against
Prevailing Party
Amount Of Fees Award
Rule 11 Sanctions
Counter-Attacks
BASICS : Although an assignment must be in writing, 35 U.S.C. § 261 , ownership can be transferred by other means not requiring a writing, such as through intestate succession laws. Sky Tech. (Fed. Cir. 08/20/09); see Vapor Point (Fed. Cir. 08/10/16) (O’Malley, J., Concurring) (recommending court overrule precedent suggesting in-writing requirement can be superseded under state law). Exclusive license with right to sue need not be in writing. Bard Peripheral III (Fed. Cir. 01/13/15). Written assignment or document memorializing prior assignment must be made pre-suit. Bard Peripheral III (Fed. Cir. 01/13/15). Post-complaint “nunc pro tunc assignments are not sufficient to confer retroactive standing” under Sec. 281, even if preceded supplemental or amended complaint. Alps South (Fed. Cir. 06/05/15) (although patent owner can be added post-complaint to cure standing defect); but see Sealant (Fed. Cir. 06/11/15) (non-precedential) (standing is claim-by-claim and need exist at time claim first made in the action).
Must Convey Undivided Interest Or Exclusive Patent Right To Constitute Assignment : “‘To create an assignment, a contract must transfer: (1) the entire exclusive patent right, (2) an undivided interest in the patent rights, or (3) the entire exclusive right within any geographical region of the United States.’” Diamond Coating (Fed. Cir. 05/17/16) (no assignment of all substantial rights where original patent owner retains a right to make, use and sell patented products, plaintiff’s rights to license or enforce are restricted, and plaintiff did not obtain right to practice the patent).
“Hereby Grants” (Present Tense Active Verbs) Conveys Legal Title; “Agrees To Assign” (Passive Verbs In Indefinite Or Future Tense) Conveys Only Equitable Title : A party with legal title to a patent has standing to sue even if it may not have equitable title and, conversely, a party with equitable title but no legal title lacks standing. The issue normally arises where someone agrees to assign patent rights in future inventions, but fails to actually assign them. If one uses “does hereby grant [or “assign”]” (rights in any future inventions to the assignee) language, then legal title will pass by operation of law once the invention comes into existence. See Stanford (Fed. Cir. 09/30/09) (where inventor first entered an “agree to assign” contract with Stanford giving it equitable rights in future inventions, but then inventor entered a “hereby assign” contract with defendant’s predecessor in interest, and then made invention and application was filed, legal title automatically transferred to that predecessor upon filing of the application, so legal title was in defendant when inventor later assigned rights to Stanford; and Stanford not “bona fide purchaser as it had constructive notice of the “hereby assign” contract), aff’d on other grounds , Bd. of Tr. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. (U.S. 06/06/2011) (but two Justices question Fed. Cir. distinction between “agree to assign” and “hereby assign”); Omni Medsci (Fed. Cir. 08/02/21) (2-1) (aff’g denial of R. 12(b)(1) mtn. for lack of standing; bylaws’ provision that certain patents “shall be the property of the University” did not “automatically and presently assign[] legal title” to the inventions, in part because does not use present-tense active verbs); Preston (Fed. Cir. 07/10/12) (aff’g Summ. J. of no standing because plaintiff employee’s employment agreement automatically assigned (“does hereby assign” any invention conceived or made while employed) patent rights to employer (the defendant)); Advanced Video II (Fed. Cir. 01/11/18) (2-1) (aff’g dismissal of complaint for lack of standing: “will assign” provision in employment agreement was a mere promise to assign to employer (putative predecessor in interest to plaintiff)); Filmtec (Fed. Cir. 07/22/91) (vacating preliminary injunction in view of serious doubts re who has title to patent; an assignment of rights in an invention made prior to the existence of the invention is an assignment of an expectant interest conveying equitable title to the assignee which, “once the invention is made and an application for patent is filed,” conveys legal title to the assignee and the assignor has nothing left to assign). But “will be assigned” or “agree to assign” language transfers only equitable title, not legal title. Speedplay (Fed. Cir. 03/01/00) (aff’g plaintiff obtained substantially all rights in patent from the inventor via a “hereby … assigns” provision); SiRF Tech. (Fed. Cir. 04/12/10) (aff’g that petitioner in ITC had standing, because respondent failed to show that invention fell within scope of one inventor’s automatic assignment to another company; recording in PTO an assignment from inventor to the plaintiff shifts burden of proof (production?) to challenger to challenge that assignment by, e.g., proving earlier assignment by inventor to another company); Abraxis (Fed. Cir. 11/09/10) (plaintiff lacked standing when complaint was filed because promise to assign was not present assignment, and attempt to cure retroactively failed), rehearing en banc denied (Fed. Cir. 03/14/11); Gellman (Fed. Cir. 11/30/11) (non-precedential) (“this court has consistently required that present assignments of future rights expressly undertake the assigning act at the time of the agreement, and not leave it to some future date”).
Transfer Of Ownership Of Software Developed Does Not Necessarily Assign Patent Rights : A software development contract giving company exclusive rights to the software does not necessarily grant ownership rights in any patentable methods or systems invented in creating such software. James (Fed. Cir. 04/20/18) (rev’g dismissal of suit for correction of inventorship for lack of standing; if plaintiff proves sole inventorship then he may own the patents).
Bayh-Dole Act Does Not Assign Inventors’ Rights To Their Federally Funded Employers : It is a “basic principle of patent law that inventors own their inventions.” Bayh-Dole Act does not deprive inventors of their interest in federally funded inventions. 201(e)’s “any invention of the contractor” does not refer to all inventions of the contractor’s employees, but rather to “those owned by or belonging to the contractor.” “The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have.” Bd. of Tr. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. (U.S. 06/06/2011).
State Law Governs Interpretation Of Contract Purportedly Assigning Invention, But Federal Law Governs Whether Automatic Assignment : Abbott Point (Fed. Cir. 01/13/12) (2-1) (aff’g plaintiff did not own patent or have standing); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (aff’g dismissal for lack of standing; “whether a patent assignment clause creates an automatic assignment or merely an obligation to assign” is a question of federal law); Schwendimann (Fed. Cir. 05/13/20) (2-1) (aff’g assignment valid, and properly reformed under state law, despite misnaming assignee, in view of other writings showing correct intended assignee; “by virtue of the reformation, the written instrument was corrected nunc pro tunc , to the point of the assignment”).
Termination Upon Failure Of Condition Subsequent Does Not Necessarily Defeat Transfer Being Deemed An Assignment : “An assignment of a patent ‘may be either absolute, or by way of mortgage and liable to be defeated by non-performance of a condition subsequent.” Vaupel (Fed. Cir. 09/13/91) (transfer granted all substantial rights, despite retaining “1) a veto right on sublicensing by Vaupel; 2) the right to obtain patents on the invention in other countries; 3) a reversionary right to the patent in the event of bankruptcy or termination of production by Vaupel; and 4) a right to receive infringement damages.”) But see Propat (Fed. Cir. 01/04/07) (grant did not transfer all substantial rights; the power “to terminate the agreement and end all of Propat’s rights in the patent if Propat fails to perform up to the specified benchmarks, although not dispositive, is yet another indication that Authentix retains a significant ownership interest in the patent”).

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United States: Federal Circuit Law Governs Patent Assignment Interpretation and Nunc Pro Tunc Assignments Cannot Retroactively Confer Standing

Last Month at the Federal Circuit - December 2010

Judges: Newman (dissenting), Gajarsa (author), and Linn [Appealed from D.N.J., Judge Pisano]

In Abraxis Bioscience, Inc. v. Navinta LLC , No. 09-1539 (Fed. Cir. Nov. 9, 2010), the Federal Circuit reversed the district court's denial of Navinta LLC's ("Navinta") motion to dismiss for lack of standing, vacated the judgment, and remanded for the district court to dismiss the complaint with prejudice.

Abraxis Bioscience, Inc. ("Abraxis") markets the anesthetic Naropin®. U.S. Patent No. 4,870,086 ("the '086 patent") discloses Naropin's active ingredient, ropivacaine hydrochloride monohydrate ("ropivacaine"). U.S. Patent Nos. 5,670,524 ("the '524 patent") and 5,834,489 ("the '489 patent") disclose methods of pain treatment using low-concentration ropivacaine.

Abraxis acquired the patents from AstraZeneca ("AZ-UK"). In 2006, Abraxis and AZ-UK executed an Asset Purchase Agreement ("APA"). The APA provided that AZ-UK "shall or shall cause one or more of its Affiliates" to transfer to Abraxis all of AZ-UK's right, title, and interests in the asserted patents. Two months later, pursuant to the APA, Abraxis and AZ-UK executed an IP Assignment Agreement ("the First Agreement"), purportedly transferring title in the asserted patents. The First Agreement contained a "Further Assurances" provision, which ensured AZ-UK would execute all further assignments necessary to vest the transferred IP title in Abraxis. After discovering AZ-UK affiliates never formally assigned the asserted patents to AZ-UK, Abraxis invoked the Further Assurances provision. In March 2007, AZ-UK secured written assignments transferring title from its affiliates to AZ-UK. Later in November 2007, Abraxis and AZ-UK executed a second IP Assignment Agreement ("the Second Agreement"), confirming the asserted patents' sale, assignment, conveyance, and transfer to Abraxis.

On the same day AZ-UK secured the written assignments in March 2007, Abraxis filed suit against Navinta under the Hatch-Waxman Act. Navinta previously filed both an ANDA for a generic Naropin and a Paragraph IV Certification, certifying its generic would not infringe the '086 patent. Accordingly, under 35 U.S.C. § 271(e)(2), Abraxis alleged artificial infringement of the '086 patent—the only patent listed in the Orange Book. Unable to allege § 271(e)(2) infringement of the '524 and '489 patents, Abraxis argued indirect infringement under 35 U.S.C. § 271(b)–(c). Electing to await the expiration of the'086 patent, Navinta filed a "Section viii Statement" and proposed a label carving out uses covered by the '524 and '489 patents to avoid infringement allegations. Navinta therefore filed a motion to dismiss for lack of subject matter jurisdiction, arguing that Abraxis's counts alleged speculative future infringement. Abraxis countered by listing the '524 and '489 patents in the Orange Book and amending its complaint to allege infringement under § 271(e)(2). Navinta changed tactics, declared Abraxis did not own the asserted patents when Abraxis filed its complaint, and filed a second Rule 12(b)(1) motion to dismiss for lack of standing. Denying Navinta's motion, the district court acknowledged the March 2007 assignment's nunc pro tunc provisions bestowing retroactive effect to the First Agreement in 2006. Following a bench trial, the district court found direct and indirect infringement of the '086 patent and indirect infringement of the '524 and '489 patents.

On appeal, the Court first restated a bedrock principle—standing is a constitutional requirement pursuant to Article III and a threshold jurisdictional issue reviewed de novo . The Court then reiterated that Federal Circuit law—not state law—governs whether a patent assignment clause creates a present assignment of patent rights or an agreement to assign rights in the future (citing DDB Techs., LLC v. MLB Advanced Media, LP , 517 F.3d 1284, 1290 (Fed. Cir. 2008)). The Court distinguished contract language expressly conveying rights in future inventions from contract language obligating a future promise to convey. The former needs no further act once an invention comes into being; indeed, the transfer of title occurs by operation of law. By contrast, the latter vests no legal title in the assignee; the contract merely obligates the owner to grant rights at some point in the future. Thus, the Court explained, "agrees to assign" reflects a mere promise to assign rights in the future, not an immediate transfer of expectant interests (citing Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. , 583 F.3d 832, 841–42 (Fed. Cir. 2009) ( cert. granted Nov. 1, 2010)).

"Even if the . . . agreement is considered to be a nunc pro tunc assignment, for purposes of standing, Abraxis was required to have legal title to the patents on the day it filed the complaint and that requirement can not be met retroactively." Slip op. at 15.

Relying on the APA contractual language, the Court concluded that the parties intended to achieve actual transfer of title by a separate agreement. In other words, the APA established a promise to assign in the future and the consummation of the assignment could only occur by a subsequent written agreement. While Abraxis and AZ-UK executed the First Agreement after the APA, AZ-UK did not yet possess title to the patents. Therefore, when the parties executed the First Agreement, AZ-UK lacked authority to assign the patents to Abraxis.

The Court further explained, although the March 2007 assignments vested title in AZ-UK, the assignments did not automatically consummate an assignment to Abraxis. For title to vest in Abraxis, the Court reasoned, AZ-UK had to execute a further assignment to Abraxis, which it did in the Second Agreement. The Second Agreement, however, postdated Abraxis's complaint. Thus, the Court held Abraxis did not own the patents when it filed its complaint and lacked standing to file the lawsuit.

In so holding, the Court rejected the district court's finding of retroactive title. Regardless of the retroactive validity of either the March 2007 assignments to AZ-UK or the Second Agreement, the Court found Abraxis lacked standing. AZ-UK did not assign the patents to Abraxis until the Second Agreement, which occurred after Abraxis filed its complaint. Nunc pro tunc assignments, the Court clarified, cannot retroactively confer standing (citing Enzo APA & Son, Inc. v. Geapag A.G. , 134 F.3d 1090, 1093 (Fed. Cir. 1998)). One narrow exception to the Court's holding—a party may sue for past infringement before it acquires legal title if the written assignment so authorizes—does not apply to Abraxis's case.

The Court also found irrelevant Abraxis's reliance on Arachnid, Inc. v. Merit Indus., Inc. , 939 F.2d 1574 (Fed. Cir. 1991). Abraxis contended that the APA was sufficient to transfer equitable title, which thereby conferred standing. But the Court distinguished Arachnid as concerning a present agreement to assign future inventions. By contrast, Abraxis's APA and First Agreement with AZ-UK attempted to assign rights to existing patents, but failed. Thus, not yet owning the asserted patents, Abraxis lacked standing on the day it filed its complaint, a defect Abraxis cannot retroactively fix.

In a dissenting opinion, Judge Newman disagreed with the majority's preemption of state law and imposition of Federal Circuit law, "a new and convoluted law unique to the patent aspect of commercial transactions." Newman Dissent at 2. Judge Newman characterized patent conveyances as contracts and supported the district court's application of New York state law. Judge Newman emphasized both parties' clear, unmistakable intent to transfer patent ownership, evidenced by the language in all of the documents—the APA, the First Agreement, the March 2007 assignments, and the Second Agreement. Thus, Judge Newman found ample support in New York state law to uphold the district court's ruling.

Even under the majority's application of Federal Circuit law, Judge Newman further disagreed with the majority's reasoning. Judge Newman distinguished this case from the cases used by the majority, which she described as cases debating rights to future inventions. Specifically, Judge Newman distinguished Enzo , another case where the Court denied retroactive validity to a patent assignment agreement. In Enzo , however, the Court found no evidence of either parties' intention to confer an exclusive license before the licensee filed suit. By contrast, the parties here clearly intended for patent ownership to transfer to Abraxis before Abraxis filed suit, first when they executed the APA and again when they executed the First Agreement.

In Judge Newman's view, the majority vitiated the parties' intent by "engrafting a meaning" to the contracts that neither party reasonably or possibly intended. Newman Dissent at 9. Throughout the dissent, Judge Newman underscored the importance of honoring contractual intent and applying the law that the parties agreed to apply to their contracts.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and
In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning "now for then."A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date. For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc ...
Trademark Assignment
Nunc pro tunc is Latin for "now for then," so it serves as evidence of when an oral agreement was reached between the assignor and assignee without being put in writing. This written document can be filed with the USPTO, but unlike a traditional assignment, it's effective from the date of oral assignment rather than the date of execution.
Intellectual Property: Assignments and Transfers
A Practice Note discussing the legal requirements for the assignment or transfer of intellectual property (IP), including patents, trademarks, and copyrights, and key considerations for an IP transferee or assignee. This Note discusses transfers by operation of law, partial assignments, nunc pro tunc assignments, priority between conflicting transfers, accrued claims for past infringement ...
Trademark Assignment
I'm experienced US trademark attorney Morris Turek. If you have any questions about trademark assignments, the assignment of trademark rights, or maybe need some assistance from a skilled trademark attorney with preparing and recording a trademark assignment, please contact me for your free consultation at (314) 749-4059, via email at morris ...
A Dive into 'Nunc Pro Tunc'
The Nunc Pro Tunc assignment assumes the spotlight when a party back-dates an assignment to try to cure a standing defect. Consider Plaintiff A, who sues for the infringement of a right safeguarded by Patent Laws. Defendant B, upon research, uncovers that Plaintiff A does not actually own the same on account of some defect in the chain of title.
Nunc Pro Tunc Assignment to Bridge Priority
The application claimed an allegation of use anywhere of March 27, 2016. On October 20, 2020, TI Express executed a nunc pro tunc trademark assignment to Narita with an effective date of November 25, 2016, memorializing an "oral agreement" assigning the TONOSAMA mark to Narita along with the goodwill associated with the mark.
Patent and Trademark assignments
The USPTO calls these "Nunc Pro Tunc Assignments" (Latin for "now for then"). However, the drawback of such late assignments is that the "automatic" anti-fraud legal protection no longer operates. You don't need these automatic protections if there is no fraud. However, the automatic protection occurring with on-time filing is ...
Federal Circuit law governs patent assignment interpretation and nunc
Nunc pro tunc assignments, the Court clarified, cannot retroactively confer standing (citing Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998)). One narrow exception to the ...
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This template is a nunc pro tunc trademark assignment between an assignor and assignee. It may be used to memorialize in writing a prior oral agreement to assign a trademark. This template includes practical guidance, drafting notes, and alternate clauses. The term "nunc pro tunc" is a Latin expression that means "now for then." A nunc pro tunc assignment is thus essentially a retroactive ...
Intellectual Property: Assignments and Transfers
A Practice Note discussing the legal requirements for the assignment or transfer of intellectual property (IP), including patents, trademarks, and copyrights, and key considerations for an IP transferee or assignee. This Note discusses transfers by operation of law, partial assignments, nunc pro tunc assignments, priority between conflicting transfers, accrued claims for past infringement ...
Ownership Transfer of Intellectual Property Rights in General
A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded. ... a required language or form is not used; certain assignment ...
What is a Nunc Pro Tunc Trademark Assignment?
A nunc pro tunc trademark assignment is a legal document that retroactively assigns ownership of a trademark from one party to another. The term "nunc pro tunc" is a Latin phrase that means "now for then," and it indicates that the assignment is being made retroactive to a date in the past. Nunc pro tunc assignments are typically used ...
Bloomberg Law
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Therefore, R.R. Donnelley's attempted assignment to Media, and Media's subsequent attempted assignment to CTP, failed to effectively transfer ownership in the patents to CTP. The court also found that a nunc pro tunc assignment does not necessarily have a retroactive effect on bringing into force earlier assignments that were ineffective.
Trademark assignments: Transferring ownership or changing your name
Answer "yes" to the question at the beginning of the form that asks if you need to change the owner's name or entity information. Enter the new name in the "Owner" field in the "Owner Information" section of the form. Your request to update the owner information will be reviewed by a USPTO employee and entered, if appropriate.
Patent Assignment (Nunc Pro Tunc)
This precedent is a basic patent assignment by which the assignor assigns and/or confirms the assignment of a Canadian patent application, which assignment is to take nunc pro tunc effect (i.e., retroactive legal effect). This precedent includes practical guidance and drafting notes. Nunc pro tunc is a Latin expression meaning "now for then".
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"[N]unc pro tunc assignments are not sufficient to confer retroactive standing." The Federal Circuit explained that while its precedent permits joinder of parties to cure a defect in standing, "executing a nunc pro tunc license agreement after filing a case" does not have the same effect. The court also noted that while 28 U.S.C ...
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Written assignment or document memorializing prior assignment must be made pre-suit. Bard Peripheral III (Fed. Cir. 01/13/15). Post-complaint "nunc pro tunc assignments are not sufficient to confer retroactive standing" under Sec. 281, even if preceded supplemental or amended complaint.
Federal Circuit Law Governs Patent Assignment Interpretation and Nunc
Nunc pro tunc assignments, the Court clarified, cannot retroactively confer standing (citing Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1093 (Fed. Cir. 1998)). One narrow exception to the Court's holding—a party may sue for past infringement before it acquires legal title if the written assignment so authorizes—does not apply to ...
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Geographic coordinates of Elektrostal, Moscow Oblast, Russia
Geographic coordinates of Elektrostal, Moscow Oblast, Russia in WGS 84 coordinate system which is a standard in cartography, geodesy, and navigation, including Global Positioning System (GPS). Latitude of Elektrostal, longitude of Elektrostal, elevation above sea level of Elektrostal.
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United States: Federal Circuit Law Governs Patent Assignment Interpretation and Nunc Pro Tunc Assignments Cannot Retroactively Confer Standing

"Even if the . . . agreement is considered to be a nunc pro tunc assignment, for purposes of standing, Abraxis was required to have legal title to the patents on the day it filed the complaint and that requirement can not be met retroactively." Slip op. at 15.

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