Company X is the sole applicant for a patent application that has now entered National Phase. How problematic might it be that Company X has not yet obtained/recorded Deeds of Assignment from either of the two listed Inventors (both of whom are cooperative)?

Inventor A has a pre-existing obligation to assign (via an employment contract), while Inventor B does not. Both Inventors are willing to cooperate fully to help establish the chain of title— let's assume they truly will cooperate and will sign anything required, and neither will die or get caught up in divorce, etc. Assume the Inventors will act faithfully to perfect chain of title under essentially any given circumstances.

My (probably flawed) understanding is that in most major jurisdictions (USA, Europe, Australia, Japan, etc.) it should be relatively straightforward to cure and protect the chain of title by having Deeds of Assignment recorded at any time before "something major" happens e.g. a sale or licensing of patent-pending IP, a challenge to the validity of an application/grant, the granting of a full patent (in which case I gather there is often a grace period in which to cure issues of title).

Basically, I think getting the Deeds of Assignment finalised is an important step, but not especially urgent... How wrong am I? What nasty things could happen?

Relevant facts:

  1. Inventors A & B contributed to an Invention.
  2. Inventor A is obligated through an employment contract to assign their interests to Company X.
  3. Inventor B has no such obligation.
  4. Company X has filed a Provisional Patent application, and subsequently proceeded to National Phase. Company X is listed as the sole applicant.
  5. Company X has not yet received Deeds of Assignment from either Inventor.
  6. Inventors A & B both intend to provide Deeds of Assignment to Company X and will cooperate fully to help establish clean chain of title.
  • 1
    There is not a seamless path from provisional filing to "national stage". If a U.S. provisional was filed, a subsequent PCT application claiming priority to it would need to be filed to, several months later, be entering national stages anywhere. Clarifying the steps in your hypothetical might or might not be important to the answers. Jun 30, 2022 at 21:56
  • The chain of priority is totally clean, Company X is the sole applicant and has managed the prosecution perfectly. The only wrinkle in this scenario is that the Inventors have not assigned (but let's say they are guaranteed to sign when requested). In general should we expect the timing of the assignments cause irreparable damage to chain of title, or in general are there usually straightforward ways to cure the chain?
    – chroma
    Jul 1, 2022 at 1:12
  • If they are guaranteed to assign you should edit the question - this a huge change. Jul 1, 2022 at 1:58
  • Good point. Thanks!
    – chroma
    Jul 1, 2022 at 5:02

1 Answer 1


Inventor B can change their mind

Unless and until Inventor B signs the deed (or enters a binding contract to sign the deed) they can go from being “cooperative” to being “cooperative for $10 million”.

  • Let's say for argument's sake that both Inventors are guaranteed to be cooperative. Let's ignore the possibility that they will not assign when asked.
    – chroma
    Jul 1, 2022 at 1:07
  • 1
    @chroma ha, ha, ha, ha, you’re hilarious!
    – Dale M
    Jul 1, 2022 at 1:08
  • Let's say Inventor B is myself, and I am motivated to protect the chain of title.
    – chroma
    Jul 1, 2022 at 1:13
  • Not sure that there isn't some sort of promissory estoppel limitation.
    – ohwilleke
    Jul 1, 2022 at 22:26

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