News & Analysis as of

Assignments United States Patent and Trademark Office

An assignment is the transfer of a right or benefit from one party to another party. Assignments can occur in contract or real estate contexts.  A contract assignment refers to a situation where one party to... more +
An assignment is the transfer of a right or benefit from one party to another party. Assignments can occur in contract or real estate contexts.  A contract assignment refers to a situation where one party to a contract transfers his/her rights or benefits under the contract to a third party. In a real estate assignment, an interest holder transfers his/her interest in a particular parcel to another party. less -
Venable LLP

Development Contract Considerations for AI-Generated Works and Copyright Ownership

Venable LLP on

In a recent ruling from the U.S. Court of Appeals for the D.C. Circuit, the court refused to register a work where its sole author was an artificial intelligence (AI) tool. This holding is in line with the Copyright Office’s...more

McDermott Will & Emery

New WDTX Order Shakes Up Initial Judge Assignments

McDermott Will & Emery on

A recent order from Chief Judge Garcia of the US District Court for the Western District of Texas (WDTX) changes how judges are initially assigned to cases filed in its Waco Division. As of July 25, 2022, patent cases filed...more

Rothwell, Figg, Ernst & Manbeck, P.C.

IP Assignment Considerations for Emerging Companies

Founders of an emerging company must decide early on in its growth cycle whether to require employees to assign their inventions (including rights to patent and patent applications –collectively “patent rights”) to the...more

Faegre Drinker Biddle & Reath LLP

Oops! Now What? Corrective Assignments and Fixing Inadvertent Chain of Title Errors

We’ve all been there. Maybe we find it in reviewing the chain of title for trademarks during due diligence. Maybe it’s something that another company filed that has nothing to do with us. Or maybe someone on your team made a...more

Pillsbury Winthrop Shaw Pittman LLP

Intent to Lose? Be Wary of Pitfalls Involving Intent-to-Use Trademark Applications.

Merger and Acquisitions often involve the acquisition and/or assignment of trademarks. Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications...more

Foley & Lardner LLP

The Complexities of the USPTO Proposed Attributable Ownership Rules

Foley & Lardner LLP on

The USPTO proposed attributable ownership rules would require the public disclosure of the “attributable owner” of patent applications and patents. As discussed in this article, the proposed definition of “attributable owner”...more

McDonnell Boehnen Hulbert & Berghoff LLP

Yet Another "Patent-Troll" Bill – Senator Leahy Introduces Patent Transparency and Improvements Act

There has been a flurry activity recently in both the House and Senate aimed at addressing the perceived patent-troll problem. We have recently reported on the introduction of both the "Innovation Act," from Rep. Bob...more

Foley & Lardner LLP

Can You Wait to Take Advantage of USPTO Fees Decreasing January 1, 2014?

Foley & Lardner LLP on

Certain USPTO fees are set to decrease on January 1, 2014, including issue fees and the publication fees for utility applications. Also, as of January 1, 2014, certain PCT International Stage fees will have Small Entity and...more

Foley & Lardner LLP

TTAB Cancels Registration Due to Improper Assignment of Intent-to-Use Application

Foley & Lardner LLP on

In a precedential decision issued last week, the Trademark Trial and Appeal Board (TTAB) cancelled a registration because it was based on an intent-to-use (ITU) application that had been the subject of an intra-corporate...more

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