nunc pro tunc assignment example

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A Dive into ‘Nunc Pro Tunc’

Understanding Nunc Pro Tunc in Legal Parlance

A phrase in Latin, ‘Nunc Pro Tunc,’ stands for “now for then.” However, it is also used as a term to mean correction of judicial orders. Using the same in terms of Intellectual Property Rights (IPRs) corresponds to the assignment of such assets.

Let’s Pick a General Example

The Nunc Pro Tunc assignment assumes the spotlight when a party back-dates an assignment to try to cure a standing defect. Consider Plaintiff A, who sues for the infringement of a right safeguarded by Patent Laws . Defendant B, upon research, uncovers that Plaintiff A does not actually own the same on account of some defect in the chain of title. Therefore, Plaintiff A then responds by getting the Nunc Pro Tunc assignment signed by back-dating the assignment to a date before the lawsuit was lodged and filed. To give you a head up: This does not work as a good legitimate practice in all jurisdictions.

Nunc Pro Tunc: In Business Parlance

For a trademark registered on 1 st January 2015, Nunc Pro Tunc assignment typically shall look like this:

“Now, therefore, for good and valuable consideration, the ASSIGNOR agrees that ASSIGNOR hereby assigned unto the ASSIGNEE Nunc Pro Tunc effective as of 1 st September 2022, all right, title, and interest in and to the trademark XXX bearing registration no:******. In testimony, whereof, the ASSIGNOR has signed this instrument on 1 st September 2022.”

Herein, the assignment is deemed to have been executed on 1 st January 2015; but is deemed to have been effective from 1 st September 2022.

In business terms, Nunc Pro Tunc assignments are usually used where past Intellectual Property (IP) assignments are made verbally or by mode of conduct. The same is not very unusual since it may so happen that proprietors keen to make an immediate move in the market may “leave for later” or may forget to reduce agreements in writing. In such scenarios, Nunc Pro Tunc assignments are commonly drawn and deduced to bridge the gaps in the “chain of title” for an IP asset. It can also happen when entities and/or assets are sold – but proper paperwork is misplaced. In such an event, purchasers often consider themselves as the obvious owners of such patents, trademarks, or copyright belonging to the former owner but the missing documents lead to ‘gaps’ in the chain of title. These ‘gaps’ can be cured by obtaining a Nunc Pro Tunc assignment from the original owner of the IP asset in favor of the later purchaser of the transaction. In the same manner, Nunc Pro Tunc assignments are often utilized to reach an amicable settlement in litigated matters involving claims over an IP asset, be it a patent, trademark, and/or copyright.

Nunc Pro Tunc: To Reach a Settlement in Litigation

For the purpose of litigation, Nunc Pro Tunc assignments are generally utilized to give a party a legal standing to initiate litigation, i.e., the right to sue or be sued. To have a legal ‘standing’ to initiate litigation, a party to the suit must have proof of rightful ownership or proof of title and/or interest in the patent, trademark, or copyright subject. However, as discussed earlier hereinbefore, for courts, ‘standing’ is passed based on the effective date of the assignment and not the earlier date listed in the Nunc Pro Tunc assignment.

Conclusion: An Acceptable Practice or Not?

It can be simply contemplated that where a non-owner or licensee is given the right to sue, it would give impetus to enmesh the judiciary in abstract legal battles while creating a risk of multiple litigations. It would also provide an incentive for parties to acquire assignment rights to expand their scope of operation and litigation. Inevitably, it would result in a delay in justice delivery and an increase in expenses. The same would defeat the cause of the judicial organ.

It is for this reason that in some countries, such Nunc Pro Tunc assignments are recorded, while in others, no acquiescence of retroactive effect assignments is admitted.

Documenting deeds of assignments after a transaction that has been assumed to be in effect is most certainly not a best practice and can affirmatively lead to several issues. However, it is the only way to attempt to fix an error that has occurred sometime in the past.

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APPLICATION FILING

Ownership transfer of intellectual property rights in general, what are assignments of intellectual property rights.

An assignment is the act of transferring ownership of the Intellectual Property Right from the assignor to the assignee. Often, the assignment document is simply referred to as the “assignment”. The two parties can be individuals or legal entities. Intellectual Property Rights typically need to be assigned on a country by country basis complying with the various national assignment requirements. However, international or regional Intellectual Property Right applications often can be assigned centrally before the respective international or regional authorities such as the respective international or regional patent or trademark offices. Examples for such authorities are the International Bureau handling International Patent Applications under the Patent Cooperation Treaty (PCT), the European Patent Office (EPO) handling European Patents and the European Union Intellectual Property Office (EUIPO, formerly named OHIM) handling European Union Trademarks (EUTM) and Registered Community Designs (RCD).

What IP rights can be assigned?

Most Intellectual Property Rights can be freely assigned in part or in its entirety between any assignor and assignee. Certain partial rights may be assignable separately and independently from the underlying IP right, for instance the priority right determining the time rank of an IP right.

What is required for valid assignments of Intellectual Property Rights?

National laws, rules and formalities apply for recordation of country by country assignments by a variety of national, regional or international recording authorities. When looking at a bigger Intellectual Property Rights family, a one fits all assignment fulfilling this wide variety of requirements is virtually impossible. Typically, national representatives should be retained for complying with this variety of requirements. If possible, some international or regional Intellectual Property Rights should be assigned centrally while still pending for avoiding the hassle of dealing with such wide variety of national requirements that may be required after the issue date of the international or regional Intellectual Property Right.

What are typical form requirements for assignments?

Assignments typically need to be made in writing and typically require the signatures of both the assignor and the assignee. In case of a legal entity, the signatory needs to be entitled to sign on behalf of that legal entity, typically an officer of the legal entity, or needs to have received the signatory authorization from such officer. Although in some countries the signature of the assignor only may suffice, more commonly, the signatures of both parties are required. It is good practice to assume that both signatures are required everywhere. The signatures are typically required in ink. As an alternative to filing the original with the signatures in ink, an increasing number of authorities have waived the requirement to file the original but accept copies, or when filed electronically, scans of the assignment document signed in ink. If not filed, the original should be kept in a safe place. Some countries may require notarization and maybe even require some form of legalization, e.g. “Apostille”, for effectively recording an assignment.

What assignment document content is typically required for assignments?

In most countries, the assignment document just identifies the right that is assigned and the parties, but some countries require a specific text using specific language. From a practical standpoint, a good way of looking at assignments from a formal point of view is to treat these like a contract, although the assignment may have comparatively little content in comparison to other types of contracts. A few authorities may require the use of a specific form.

Why are assignments important?

If the assignee likes to exercise certain rights, the assignment must be recorded. A proper assignment and recordation thereof may for instance be required for the assignee = applicant to act in the proceedings before the various authorities. The failure to properly assign and record may also result in enforceability delays of the assigned IP right by the assignee until recordation has been finalized. In some countries, this may cause significant enforceability delays. Also, a proper assignment is required for claiming priority rights. Further, it is helpful for the assignee to become an assignor for yet another assignment after the first assignment is recorded.

What is a “nunc pro tunc” assignment?

A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded.

What are the most common assignment deficiencies?

Although the assignment document has only limited content a variety of deficiencies may occur. Just to mention a few: The assignor may not be the owner of the assigned IP right at the date of assignment; the incorrect IP right is assigned; at least one of the signatories lacks signatory authorization; a required language or form is not used; certain assignment document form requirements are missed, formalities such as signatures in ink, notarization or legalization are missed; some recordation form requirements such as request and recordation fee payment are missed; the signature by one party such as the assignee is missed; the parties are not properly defined to be clearly identifiable, for instance due to incorrect name and/or address; or the date of the assignment is too late for taking certain legal effects.

What are the legal consequences of a deficient assignment?

Although it may be possible to overcome some consequences by correcting deficiencies without losing the initial assignment date, or time permitting simply by executing and recording a new assignment, in some cases these remedial measures may come too late. For example, for validly claiming priority rights, the priority right needs to be actually owned by the applicant of the later application within the priority time period. Unless recognizing nunc pro tunc assignments, an assignment after the priority period may come too late. The risk with assignments is that some deficiencies may not be noticed until it is too late to fix the problem. For this reason, assignment formalities should be observed scrupulously.

About author Alexander Schlee

Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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IMAGES

Motion for Judgment Nunc Pro Tunc-signed
Motion for Relief and Entry of Judgment Nunc Pro Tunc Pursuant to C.C
Order-Nunc-Pro-Tunc-on-the-Citys-Plea-to-the-Jurisdiction-FILED-SIGNED
Nunc Pro Tunc
Nunc Pro Tunc Order Sample
Nunc Pro Tunc Assignment

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COMMENTS

A Dive into 'Nunc Pro Tunc'
In this example, the assignment is deemed to have been granted on May 1, 2017, but has an effective date of October 1, 2020. In business terms, nunc pro tunc assignments are often used where past …