nunc pro tunc assignment

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).

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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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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.

Bloomberg Law ©2021 The Bureau of National Affairs, Inc.  

Brian T. Moriarty

Principal t. 609.937.7951 Email Brian

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Brian Russ Law, Inc. – Trademark & Business Attorney

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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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• Practical Law

Intellectual Property: Assignments and Transfers

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

• Trade Marks
• United States

PatentAssociate.com

Stephen E. Zweig, PhD JD, Patent Attorney

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

How Can I Correct An Assignment?

• Post author By Austen Zuege

Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document .

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b) ) and the U.S. Copyright Office (in Compendium 2308.1 ) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

• Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
• Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
• Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive ( nunc pro tunc ) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed ( nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

• Tags Assignments , Copyrights , Patent Prosecution , Trademark Prosecution

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.

• 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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• Victor Mukhin

Victor M. Mukhin was born in 1946 in the town of Orsk, Russia. In 1970 he graduated the Technological Institute in Leningrad. Victor M. Mukhin was directed to work to the scientific-industrial organization "Neorganika" (Elektrostal, Moscow region) where he is working during 47 years, at present as the head of the laboratory of carbon sorbents.     Victor M. Mukhin defended a Ph. D. thesis and a doctoral thesis at the Mendeleev University of Chemical Technology of Russia (in 1979 and 1997 accordingly). Professor of Mendeleev University of Chemical Technology of Russia. Scientific interests: production, investigation and application of active carbons, technological and ecological carbon-adsorptive processes, environmental protection, production of ecologically clean food.   

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First refuelling for Russia’s Akademik Lomonosov floating NPP

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The FNPP includes two KLT-40S reactor units. In such reactors, nuclear fuel is not replaced in the same way as in standard NPPs – partial replacement of fuel once every 12-18 months. Instead, once every few years the entire reactor core is replaced with and a full load of fresh fuel.

The KLT-40S reactor cores have a number of advantages compared with standard NPPs. For the first time, a cassette core was used, which made it possible to increase the fuel cycle to 3-3.5 years before refuelling, and also reduce by one and a half times the fuel component in the cost of the electricity produced. The operating experience of the FNPP provided the basis for the design of the new series of nuclear icebreaker reactors (series 22220). Currently, three such icebreakers have been launched.

The Akademik Lomonosov was connected to the power grid in December 2019, and put into commercial operation in May 2020.

Electricity generation from the FNPP at the end of 2023 amounted to 194 GWh. The population of Pevek is just over 4,000 people. However, the plant can potentially provide electricity to a city with a population of up to 100,000. The FNPP solved two problems. Firstly, it replaced the retiring capacities of the Bilibino Nuclear Power Plant, which has been operating since 1974, as well as the Chaunskaya Thermal Power Plant, which is more than 70 years old. It also supplies power to the main mining enterprises located in western Chukotka. In September, a 490 km 110 kilovolt power transmission line was put into operation connecting Pevek and Bilibino.

Image courtesy of TVEL

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40 facts about elektrostal.

Written by Lanette Mayes

Modified & Updated: 02 Mar 2024

Reviewed by Jessica Corbett

Elektrostal is a vibrant city located in the Moscow Oblast region of Russia. With a rich history, stunning architecture, and a thriving community, Elektrostal is a city that has much to offer. Whether you are a history buff, nature enthusiast, or simply curious about different cultures, Elektrostal is sure to captivate you.

This article will provide you with 40 fascinating facts about Elektrostal, giving you a better understanding of why this city is worth exploring. From its origins as an industrial hub to its modern-day charm, we will delve into the various aspects that make Elektrostal a unique and must-visit destination.

So, join us as we uncover the hidden treasures of Elektrostal and discover what makes this city a true gem in the heart of Russia.

Key Takeaways:

• Elektrostal, known as the “Motor City of Russia,” is a vibrant and growing city with a rich industrial history, offering diverse cultural experiences and a strong commitment to environmental sustainability.
• With its convenient location near Moscow, Elektrostal provides a picturesque landscape, vibrant nightlife, and a range of recreational activities, making it an ideal destination for residents and visitors alike.

Known as the “Motor City of Russia.”

Elektrostal, a city located in the Moscow Oblast region of Russia, earned the nickname “Motor City” due to its significant involvement in the automotive industry.

Home to the Elektrostal Metallurgical Plant.

Elektrostal is renowned for its metallurgical plant, which has been producing high-quality steel and alloys since its establishment in 1916.

Boasts a rich industrial heritage.

Elektrostal has a long history of industrial development, contributing to the growth and progress of the region.

Founded in 1916.

The city of Elektrostal was founded in 1916 as a result of the construction of the Elektrostal Metallurgical Plant.

Located approximately 50 kilometers east of Moscow.

Elektrostal is situated in close proximity to the Russian capital, making it easily accessible for both residents and visitors.

Known for its vibrant cultural scene.

Elektrostal is home to several cultural institutions, including museums, theaters, and art galleries that showcase the city’s rich artistic heritage.

A popular destination for nature lovers.

Surrounded by picturesque landscapes and forests, Elektrostal offers ample opportunities for outdoor activities such as hiking, camping, and birdwatching.

Hosts the annual Elektrostal City Day celebrations.

Every year, Elektrostal organizes festive events and activities to celebrate its founding, bringing together residents and visitors in a spirit of unity and joy.

Has a population of approximately 160,000 people.

Elektrostal is home to a diverse and vibrant community of around 160,000 residents, contributing to its dynamic atmosphere.

Boasts excellent education facilities.

The city is known for its well-established educational institutions, providing quality education to students of all ages.

A center for scientific research and innovation.

Elektrostal serves as an important hub for scientific research, particularly in the fields of metallurgy, materials science, and engineering.

Surrounded by picturesque lakes.

The city is blessed with numerous beautiful lakes, offering scenic views and recreational opportunities for locals and visitors alike.

Well-connected transportation system.

Elektrostal benefits from an efficient transportation network, including highways, railways, and public transportation options, ensuring convenient travel within and beyond the city.

Famous for its traditional Russian cuisine.

Food enthusiasts can indulge in authentic Russian dishes at numerous restaurants and cafes scattered throughout Elektrostal.

Home to notable architectural landmarks.

Elektrostal boasts impressive architecture, including the Church of the Transfiguration of the Lord and the Elektrostal Palace of Culture.

Offers a wide range of recreational facilities.

Residents and visitors can enjoy various recreational activities, such as sports complexes, swimming pools, and fitness centers, enhancing the overall quality of life.

Provides a high standard of healthcare.

Elektrostal is equipped with modern medical facilities, ensuring residents have access to quality healthcare services.

Home to the Elektrostal History Museum.

The Elektrostal History Museum showcases the city’s fascinating past through exhibitions and displays.

A hub for sports enthusiasts.

Elektrostal is passionate about sports, with numerous stadiums, arenas, and sports clubs offering opportunities for athletes and spectators.

Celebrates diverse cultural festivals.

Throughout the year, Elektrostal hosts a variety of cultural festivals, celebrating different ethnicities, traditions, and art forms.

Electric power played a significant role in its early development.

Elektrostal owes its name and initial growth to the establishment of electric power stations and the utilization of electricity in the industrial sector.

Boasts a thriving economy.

The city’s strong industrial base, coupled with its strategic location near Moscow, has contributed to Elektrostal’s prosperous economic status.

Houses the Elektrostal Drama Theater.

The Elektrostal Drama Theater is a cultural centerpiece, attracting theater enthusiasts from far and wide.

Popular destination for winter sports.

Elektrostal’s proximity to ski resorts and winter sport facilities makes it a favorite destination for skiing, snowboarding, and other winter activities.

Promotes environmental sustainability.

Elektrostal prioritizes environmental protection and sustainability, implementing initiatives to reduce pollution and preserve natural resources.

Home to renowned educational institutions.

Elektrostal is known for its prestigious schools and universities, offering a wide range of academic programs to students.

Committed to cultural preservation.

The city values its cultural heritage and takes active steps to preserve and promote traditional customs, crafts, and arts.

Hosts an annual International Film Festival.

The Elektrostal International Film Festival attracts filmmakers and cinema enthusiasts from around the world, showcasing a diverse range of films.

Encourages entrepreneurship and innovation.

Elektrostal supports aspiring entrepreneurs and fosters a culture of innovation, providing opportunities for startups and business development.

Offers a range of housing options.

Elektrostal provides diverse housing options, including apartments, houses, and residential complexes, catering to different lifestyles and budgets.

Home to notable sports teams.

Elektrostal is proud of its sports legacy, with several successful sports teams competing at regional and national levels.

Boasts a vibrant nightlife scene.

Residents and visitors can enjoy a lively nightlife in Elektrostal, with numerous bars, clubs, and entertainment venues.

Promotes cultural exchange and international relations.

Elektrostal actively engages in international partnerships, cultural exchanges, and diplomatic collaborations to foster global connections.

Surrounded by beautiful nature reserves.

Nearby nature reserves, such as the Barybino Forest and Luchinskoye Lake, offer opportunities for nature enthusiasts to explore and appreciate the region’s biodiversity.

Commemorates historical events.

The city pays tribute to significant historical events through memorials, monuments, and exhibitions, ensuring the preservation of collective memory.

Promotes sports and youth development.

Elektrostal invests in sports infrastructure and programs to encourage youth participation, health, and physical fitness.

Hosts annual cultural and artistic festivals.

Throughout the year, Elektrostal celebrates its cultural diversity through festivals dedicated to music, dance, art, and theater.

Provides a picturesque landscape for photography enthusiasts.

The city’s scenic beauty, architectural landmarks, and natural surroundings make it a paradise for photographers.

Connects to Moscow via a direct train line.

The convenient train connection between Elektrostal and Moscow makes commuting between the two cities effortless.

A city with a bright future.

Elektrostal continues to grow and develop, aiming to become a model city in terms of infrastructure, sustainability, and quality of life for its residents.

In conclusion, Elektrostal is a fascinating city with a rich history and a vibrant present. From its origins as a center of steel production to its modern-day status as a hub for education and industry, Elektrostal has plenty to offer both residents and visitors. With its beautiful parks, cultural attractions, and proximity to Moscow, there is no shortage of things to see and do in this dynamic city. Whether you’re interested in exploring its historical landmarks, enjoying outdoor activities, or immersing yourself in the local culture, Elektrostal has something for everyone. So, next time you find yourself in the Moscow region, don’t miss the opportunity to discover the hidden gems of Elektrostal.

Q: What is the population of Elektrostal?

A: As of the latest data, the population of Elektrostal is approximately XXXX.

Q: How far is Elektrostal from Moscow?

A: Elektrostal is located approximately XX kilometers away from Moscow.

Q: Are there any famous landmarks in Elektrostal?

A: Yes, Elektrostal is home to several notable landmarks, including XXXX and XXXX.

Q: What industries are prominent in Elektrostal?

A: Elektrostal is known for its steel production industry and is also a center for engineering and manufacturing.

Q: Are there any universities or educational institutions in Elektrostal?

A: Yes, Elektrostal is home to XXXX University and several other educational institutions.

Q: What are some popular outdoor activities in Elektrostal?

A: Elektrostal offers several outdoor activities, such as hiking, cycling, and picnicking in its beautiful parks.

Q: Is Elektrostal well-connected in terms of transportation?

A: Yes, Elektrostal has good transportation links, including trains and buses, making it easily accessible from nearby cities.

Q: Are there any annual events or festivals in Elektrostal?

A: Yes, Elektrostal hosts various events and festivals throughout the year, including XXXX and XXXX.

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