The Software IP Report

Effect of Assigning a Provisional Patent Application?

By Charles Bieneman

Categories: Miscellaneous, The Software IP Report

An assignment of “all inventions and improvements disclosed and described in said provisional application” was effective against later non-provisional applications claiming priority to the provisional application so long as there was no new matter.  Separation Design Group LLP Holdings, LLC v. Inogen, Inc., No. LA CV15-08323 JAK (JPRx) (C.D. Cal. June 1, 2017).

The question of the effect of assigning the provisional application arose because the assignors in the contract at issue agreed “to sell, assign, transfer, and convey, and hereby do sell, assign, transfer, and convey” the provisional application.  There was also a clause covering possible future non-provisional applications, but that clause lacked the magic words “hereby do sell” to effect the future assignment.

No matter, said the court: “it is logical that an assignment of all inventions disclosed in a provisional application is sufficient to transfer the entire chain of applications and patents that follow.”  Further, the patent here satisfied “[t]he only limitation, which . . . is that the patents not present any new matter.”

Further, the inventors who had assigned their rights to the assignor in the above agreement had  executed employment agreements with the magic agreement to “hereby assign” rights arising during their employment.  Therefore, the chain of title was complete.

Accordingly, the court dismissed the defendant’s motion to dismiss for lack of standing.