An earlier blog article discussed whether the USPTO will record an assignment of a PCT application even if it was filed in a Receiving Office other than RO/US (the answer is “yes”). In that article I also pointed out that if you are in possession of a signed assignment of a PCT application, you ought to record it within three months of when it was signed, and you ought not to postpone recordation until such time as the US national phase is entered (35 USC § 261). This prompted a loyal reader to ask:
Would you record an assignment for a PCT case, even if it has been signed, say, 5 or 6 months ago? Way more than the three months during which it “should” have been recorded?
One of my clients does have a standing procedure according to which a PCT assignment is signed right after filing, however, the assignment is merely kept in the file and never submitted during the International Stage. Only if/when National Phase is entered, will said assignment be sent to the various associates for recordation. Some accept it, others want new ones anyway.
So, during the course of some “housekeeping” I came across several signed PCT assignments which had never been recorded. Should I submit them now, even the three months have long gone?
The answer is yes.
First, even if the practitioner has failed to follow Best Practice by recording within three months, there is still an enormous benefit to recording rather than failing to record. Recordation, even if done tardy, still offers some of the benefits set forth in 35 USC § 261. It will still, for example, trump a later-recorded assignment on many fact patterns.
You mention that an associate might “want a new assignment anyway”. This is nuts. If the inventor previously signed some assignment, then as of that moment the inventor ceased to own anything. If you were to ask that inventor to sign “a new assignment anyway”, the new assignment would probably be a nullity.
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