Situation
A law firm faced a challenge: A certain company, their client, needed to legalize an assignment from the inventors to their company in several countries they were filing in.
There may be times where the original inventor is no longer working for the company or is unwilling to sign a new assignment.
Legalizing these documents in each country separately can be time-consuming and costly.
Additionally, the Patent Offices in each country have different requirements for this procedure.
Objective(s)
Comply with assignment requirements in each country the company was interested in.
Centralize the process, reducing costs and time for their clients.
Actions
During the international phase, request a declaration from the international office, stating that under rule 4.17, it acknowledges the original signed document between the inventor and the company.
The International Office issues said document, declaring that said document exists.
For each country, the applicant seeking to legalize this procedure files a copy of this document thus meeting the requirements for the inventors’ assignment of rights.
Results
This process allowed for a faster and by far more cost-effective method for the legalization of assignments in a multi-country filing.
Time wise, it was exponentially faster than doing this individually before each national patent office.
Money wise, the average cost per country, if done individually, can average USD 650, between time extensions, assignment translations, which can vary in extension depending on the number of inventors, and attorney fees in each country.
Key learnings
Requesting a rule 4.17 declaration from the international patent office legalizing assignments can prove to be an efficient method to expedite this process, ensuring a less costly and much faster procedure for clients.
