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ON-DEMAND INSIGHTS

When Obtaining a Patent Assignment Just Isn’t Enough

By Peter Gordon February 11, 2019

University technology transfer offices and patent assignmentsPatent GC works with some of the top university tech transfer offices (TTOs) in the country, and through our work, we’ve seen how the very best offices handle processes around IP management. This is the first in a series of blog posts focused on common problems which arise when obtaining patents and our recommendations for how to address them.

Many university technology managers are familiar with the following scenario: an invention disclosure is received, often at the last minute before a publication; a provisional patent application is filed; a full application is later drafted and filed as a PCT application; and finally, national phase applications are filed, at least in the U.S. and perhaps other countries. At some point along this process, and often after the U.S. national phase applications are filed, the inventors’ declarations and assignments are executed.

Technology managers understand the importance of actually obtaining an executed assignment, due to the U.S. Supreme Court’s decision several years ago in Stanford v. Roche. They also are well aware of the obvious problem with waiting to obtain an assignment: an inventor may refuse to sign or could leave their position before being asked to signed documents. However, technology managers also need to pay attention to other esoteric aspects of patent law, including claiming “rights of priority,” identifying the “applicant,” and timing of execution of assignments. Failure to pay attention to these finer points could potentially result in a loss of, or an increased cost for retaining, rights outside the U.S.

For example, when a provisional patent application is filed, the named applicant is the entity which owns the right to claim priority to the provisional.  A later PCT applicant must own this right for it to be validly claimed.  If the applicant for the provisional application is the inventor, and the applicant for the PCT application is the university, then a claim of priority to the provisional application might not be valid. If the PCT application is not entitled to the priority claim, then intervening prior art, such as the inventor’s own publication, could result in lack of novelty of non-U.S. national phase applications based on that PCT application. Obtaining an assignment prior to filing the PCT application, or naming the university as the applicant on the provisional application, may resolve the problem.

To better protect the university’s IP rights outside the U.S., we recommend the following:

  1. Ensure an Application Data Sheet is filed in a U.S provisional patent application.

In the U.S., an Application Data Sheet (“ADS”) is a form that allows someone other than the inventor to be designated as the “Applicant” of a U.S. patent application.  More precisely, the ADS is the only way to designate an entity, other than the inventor, as the Applicant of a U.S. patent application. You might ask, why isn’t an ADS always filed in a provisional application as a matter of course? Quite simply, it is not required and, therefore, often skipped. Also, for an entity to be an Applicant, there must be an assignment, or an obligation to assign, to that entity – making filing of the ADS a good opportunity to check those assignment obligations! The ADS should be filed at the time of filing a provisional application, although it can be filed later with a little extra paperwork (if diligence cannot be timely completed to confirm that all inventors have an obligation to assign).

  1. Ensure that the applicant owns the right to claim priority at the time of filing a later application

To establish the right, in a later application, to claim priority to a prior application, one must either:

  • Match the name of the Applicant on the later application to the name of the Applicant on the prior application. For example, by filing an ADS in a provisional application specifying an Applicant, this same Applicant can be named as the applicant on a PCT application. Or, if no ADS was filed in the provisional, then the PCT Request should name the inventors as the Applicant on the PCT application.

OR

  • prior to filing the later application, ensure that there is an assignment of the prior application to the new Applicant and that the assignment assigns the right of priority. Here, it is important to ensure that the assignment document specifically mentions the right of priority. It is also a good idea to consider inventorship, ownership, and applicant status of any new matter introduced in the later application.[1]
  1. Set expectations about executing legal documents early in the process.

Simply recommending that inventors sign documents early in the patent process, preferably at the time of filing, doesn’t help in situations where applications are filed at the last minute or when e-mails and phone calls are ignored. A more practical recommendation for addressing this problem is to start by setting expectations.  Let inventors know, at the beginning of the process, that legal documents will be signed as part of completing the application for filing. Instruct prosecution counsel to file each patent application with signatures from the inventors, to discuss this expectation with the inventors, and communicate promptly about any problems. By setting such expectations early in the process, you are more likely to obtain those signatures, or otherwise identify earlier if there will be a problem in obtaining signatures. Even if a provisional is filed without an ADS or executed assignment, taking longer than three months after filing to submit these documents should raise a flag.

  1. Customize your docketing system to include earlier dates for executing documents and verifying applicant status.

Docketing systems generally docket only required dates by default. Since the above- recommended actions are not required, it is important to customize the docketing system and otherwise create and implement a process around them.  For example, docket an action of “Verify ADS filed” within three (3) months of filing a provisional application.

We routinely work with TTOs to help improve internal processes to avoid issues like those described above.  We advise our TTO clients to consider incorporating such recommendations into their day-to-day internal processes, such as by clearly defining responsibilities of the inventors, outside counsel, and the technology transfer office, using checklists and the docketing system to implement processes, and conducting periodic portfolio reviews to detect potential issues and ensure compliance.

 

If you have questions about internal processes for managing patent filings, our team would be happy to help. Feel free to contact Peter Gordon directly at pgordon@patentgc.com or to request more information by visiting our Contact Us page.

 

 

[1] For some countries, an assignment also needs to be signed by the assignee, to indicate “acceptance”. Having the applicant defined as the university at the outset may reduce the impact of this issue.

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