Patent Assignments and Priority in an International Context: U.S., Europe, and Asia

U.S. companies are increasingly recognizing the need to protect their intellectual property across the globe, from inception through commercialization and sale. Patents granted in the U.S. are only enforceable in the U.S. As a result, many companies seek patent protection in multiple countries to preserve the value of their portfolios. Companies must carefully consider when and where to seek protection, as well as where products and components are manufactured, where they are sold, where competitors are, and the availability of the desired rights in the potential jurisdictions. One of the challenges for patent counsel is defending the priority date of their original application when protection is sought in multiple jurisdictions.

Companies are facing this challenge because of differences in legal treatment of patent assignments around the world. Patent assignments play an important role in patent protection, with most inventions created by employees and assigned to employers. Establishing valid legal title through an assignment is typically a foundational requirement to have standing to enforce a patent. Assignments can also establish entitlement to file a new patent application in the name of a non-inventor applicant.

Some terms of assignments of U.S. patents are subject to federal jurisdiction but most are left to state or foreign law. This raises many questions when parties signing assignments are located in different jurisdictions, such as what is sufficient in terms of signatures, whether the assignee must also execute the assignment, how corrections can be made to a previously executed assignment, and how to deal with non-assignment transfers by operation of local/foreign law, etc. Questions can also arise about legal treatment and choice of law for a single assignment that encompasses patents in multiple jurisdictions, as well as for an assignment of an international (PCT) or regional patent application.

All of these considerations impact the certainty and therefore the market value of a company's patent portfolio when engaging in international transactions. Whether the company is engaging in a standard M&A transaction or exploring a venture capital or private equity transaction, the due diligence process will uncover any potential weaknesses in the patent portfolio. The company's owners, directors, and officers will be required to provide representations, warranties, and disclosures to explain and account for any shortcomings that would diminish the value of the patent portfolio and the larger transaction.

Listen as our authoritative panel of patent attorneys examines patent assignments and priority in the international context. The panel will address key considerations for patent counsel, including scope of the assignment, signing issues, corrections, jurisdiction, and choice of law. The panel will also discuss dealing with non-assignment transfers by operation of local/foreign law. The panel will discuss assignment issues in the U.S., Europe, and Asia.

1. Assignments and patent priority
   1. U.S.
   2. EU
   3. UK
   4. Asia
2. Key considerations
   1. Scope of assignment
   2. Signing issues
      1. Acceptability of electronic/digital signatures
      2. Use of seals
      3. Notarization, apostille, and legalization
   3. Effective dates
   4. Recordation
   5. Corrections
   6. Jurisdiction
   7. Choice of law
   8. Assignor estoppel
3. Non-assignment transfers
4. International transactions
   1. Standard M&A vs. venture capital vs. private equity
   2. Conducting due diligence
   3. Representations and warranties
   4. Dispute resolution
5. Best practices
   1. Patent protection
   2. Transactional success

The panel will review these and other important issues:

• How do patent assignments in multiple countries impact patent priority?
• What are the significant differences between the U.S. and other jurisdictions' approaches to patent assignments?
• What steps should counsel take when dealing with patent assignments to maximize protection around the world?
• How will patents be dealt with in a standard M&A transaction vs. venture capital investment vs. private equity sale?
• What types of negotiation points will be addressed in the representations and warranties section of a governing transaction agreement and its related disclosure schedule?
• What type of dispute resolution forums should be considered when dealing with an international patent portfolio or an international transaction with patents across multiple jurisdictions?