do patent assignments need to be dated

A license is a grant (assignment) to the licensee of various licensed rights. The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another. Thus, the first recordation of a license may be recorded as a “license,” while the assignment of those same licensed rights to another entity may be recorded as an “assignment.” The only way to really understand the situation is to review the actual documents, which are all readily available from the recordation branch of the patent office.

Note that the patent office sometimes refers to licenses as a species of assignment. That is correct, because one is assigning license rights.

Not necessarily. Assignments are only needed if you are contractually obligated, by employment or otherwise, to make the assignment.

An important corollary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name. Investors are usually unhappy with that arrangement, but there can be significant advantages. One major advantage is that the patent holder is a “necessary and indispensable” to any litigation over patent validity. Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.

Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications. See the previous FAQ.

Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications. That is a dangerous strategy. In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company, or divorce.

It is not technically necessary to re-file assignments for divisional or straight continuation applications. A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications. Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee.

Absolutely. Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues.

Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office.

Note that the office charges US$ 40 for each patent or patent application listed on the recordation form. Thus, if an assignment references a family of 5 patent applications, the recordation fee is US$ 200. Of course paralegal charges would also apply, and possibly attorney time.

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment. The statute is similar to recording statutes used for recording real property. Thus, although there is no requirement to record an assignment, it is foolish not to do so.

Note that absent some unusual circumstance, patent assignments do not have to be notarized for use within the United States.

Preparing assignments is usually a simple matter of filling in the blanks of a form. Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in Strategic Patenting .

Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document. The recording branch does not generally read the documents to verify the content.

The Patent office will proceed as if the signature had been procured from the inventor, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached. Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights.

In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished. Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact.

One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form.

In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees).

It depends on the wording of the assignment and the recordation laws of the foreign countries. Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications. Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country.

Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments.

Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office. Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages.

The main disadvantage to recording assignments is that many countries (including most or all of Europe) consider assignment of a patent or application to be a taxable transfer, and charge VAT (Value Added Tax) on the estimated value of the application or patent. Since the value is often low in the early days, and can rise considerably during the life of the patent, the disadvantage of recordation can be mitigated by registering early.

Assignments records at the USPTO are available for public inspection , but only for patents and published applications. One can search by reel/frame number, patent or publication number, and assignor or assignee name.

The underlying documents are not available for download, but can be ordered from the assignment branch. Paper mail requests can take months, but faxed requests are usually filled within a day or two.

No. One should never rely upon the designation of “assignee” as set forth on the face of a patent. First, the patent office obtains the “assignment” information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct. The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment. Second, the patent is never altered after it is published. Information that was correct at one point in time may well be superseded down the road. Third, even if the “assignee” information is correct, one cannot know from the face of the patent what rights were assigned. It might well be that only licensed rights were assigned, or that such rights are subject to a reversion.

Yes. But there can be real problems with multiple owners of a patent. Unless there is some other agreement restricting what an entity can do with its ownership interest, a co-owner of any portion of a patent, (whether 99% or 1% or .0001%), can make use of the patent however they want. For example, a .0001% owner of a patent could license out its rights, and keep 100% of the license fee. Absent an agreement to the contrary, there is no duty of a co-owner of the patent to share license fees with any of the other co-owners.

One of the big problems with two entities owning portions of a given patent is that the two entities can compete with each other with respect to license fees. For example, if co-owner A offers to license the patent rights for 7%, co-owner B might choose to undercut the previous offer by offering to license the same rights for 5%. But then co-owner A comes back and offers to license the rights for 2%. Pretty soon the value of the license rights goes to zero. Also, if co-owner A gets upset with co-owner B, co-owner A could unilaterally abandon the patent, which would make it worthless to everyone.

Even if co-owners agree to share license fees 50-50, there can be problems. For example, co-owner A could decide to license out its patent rights for one dollar a year to a licensee that co-owner A owns, has an interest in, or perhaps has a relative with an interest in. Of course co-owner A would be happy to share $0.50 of its annual license fee with co-owner B, but co-owner B would be pretty upset.

Still further, if there is a chain of patents, for example with a parent and a child patent in the same family, the ownership of both patents has to remain to the same at all times. If, for example, both a parent patent and a child patent are 100% owned by A, assignment of some or all of the child patent to B will immediately invalidate the child patent. Even if such an assignment is made, and the parties realize the mistake, reassigning the child patent back A would not cure the mistake. The child patent would remain abandoned.

Bottom line, co-ownership of a patent is really problematic.

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The basics of patent assignments

What is a patent assignment, what are the requirements to make it valid, and why would a business enter into a patent assignment agreement? Read on to find answers to these questions and more.

Find out more about Patents

by Cindy DeRuyter, Esq.

Cindy DeRuyter, Esq., has been writing for LegalZoom since 2018. She earned a Juris Doctor from Mitchell Hamline Scho...

Defining Patent Assignment

Requirements to assign a patent, searching for patent assignments.

Assigning patents can be a great way for companies to generate revenue and reduce risks associated with intellectual property ownership. If you are considering entering into a patent assignment agreement, understand that it is irrevocable. Because of that, evaluate proposed terms and provisions carefully before moving forward.

Young coworkers looking at laptops and paperwork on a desk

Here's a high-level overview of how patent assignments work: when a patent's owner or applicant assigns it to another individual or company, the assignor agrees to relinquish their rights to enforce or benefit from it in the future.

You can assign rights for applications still pending with the United States Patent and Trademark Office (USPTO). When the USPTO approves the application, the assignee benefits from and may use and enforce the patent, not the assignor. Companies also assign rights for issued patents, which relieves the assignor of the burden of enforcing their intellectual property and provides a source of revenue.

Patent assignments can be lucrative for both parties. While assignors make money right away, assignees can create revenue streams by earning money from royalty payments. After an assignment is complete, the assignee has exclusive rights to such income.

A patent assignment agreement documents the transfer and arrangement between the parties. If you are considering entering into one, know that you need it to be written—a verbal agreement alone is insufficient.

Don't underestimate the importance of this, either. Without a valid agreement on file with the USPTO, an intended assignor remains legally responsible for the patent and an intended assignee gains none of the rights or benefits.

Here are the requirements for a valid written assignment:

Confirm that the assignor has the full, legal right to make the assignment and that the assignee can legally assume the rights and obligations.
Clearly identify both the assignor and assignee using legal names. If more than one company owns the patent, identify all owners.
Identify the underlying patent by title and number and include a complete and accurate description of it.
Describe the terms of the agreement, including financial arrangements.
All parties must sign the agreement, with limited exceptions in situations where the assignor cannot be reached but where enough evidence exists that documents their intentions and rights.
File the patent assignment with the USPTO within three months after the agreement is signed, paying the then-current fee.

Though the agreement is a legal document, it does not need to be notarized. However, obtaining notarization for the signatures provides added protection, limiting the risk of a party later claiming a signature was not valid.

The USPTO maintains a patent assignment database that includes all the assignments recorded since August 1980. Using the database, you can search with the assignor's or assignee's name, the patent number, application number, publication number, or other identifying information.

Properly assigning patents protects both assignors and assignees. If you want to assign a patent, downloading a patent assignment form can help. Alternatively, you can consult an intellectual property attorney .

Patent Assignment: Everything You Need to Know

A patent assignment is an irrevocable agreement for a patent owner to sell, give away, or transfer interest to an assignee, who can enforce the patent. 6 min read updated on November 05, 2020

Patent Assignment: What Is It?

A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue others for making or selling the invention or design.

There are four types of patent assignments:

Assignment of Rights - Patent Issued: This is for patents that have already been issued.

Assignment of Rights - Patent Application : This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.

Assignment of Intellectual Property Rights - No Patent Issued or Application Filed: This is for unregistered inventions with no patent.

Exclusive Rights

Advantages of a Patent Assignment

Assignees don't create a unique invention or design. They also don't go through the lengthy patent process. They simply assume exclusive rights to intellectual property.

Profit Potential

Many patents cover intellectual property that can earn the owner money. A patent owner can charge a lump sum sale price for a patent assignment. After the transfer, the assignee can start to earn profits from the patent. Both original owners and assignees can benefit from this business arrangement.

Disadvantages of a Patent Assignment

Too Many or Not Enough Inventors

Patents can have multiple owners who invented the product or design. Sometimes patents list too many or not enough inventors. When this happens, owners can argue about an incorrect filing. This kind of dispute can make a patent assignment impossible.

Limited Recourse

Older patents may already have many infringements. Not all patent assignments include the right to sue for past infringements. This is known as the right to causes of action. This can cost the assignee a lot of potential profit.

Examples of What Happens When You File a Patent Assignment vs. When You File a Patent License

When You File a Patent Assignment

The patent owner changes permanently. You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public.

Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits.

When You File a Patent License

The patent owner doesn't change permanently. Most licenses have a time limit. At the end of the period, the original owner takes control again. Licensing information isn't always available through an online USPTO search. Contact the recordation office directly to get information about patent licenses.

The licensee can assign rights to another person or company. This adds another layer of ownership over the intellectual property.

Many owners charge royalties for a patent license. The licensee pays royalty fees throughout the license period. If the royalty fees are high and the license period is long, a patent assignment may be a better choice for earning the new owner more money.

Common Mistakes

Not Filing an Assignment Document

A verbal agreement is not official. File a patent assignment to change patent ownership.

Taking Action Before Filing

The assignee shouldn't make or sell the invention before the patent assignment is official. If an error or another problem happens, this could be patent infringement .

Making a Filing Error

Patent assignments are official documents. The assignee's name must be legal and correct. Before filing, check the spelling of the assignee name. If the assignee is a business, confirm the legal name. Many patents have more than one owner. List all names on the assignment.

Misidentifying the Patent

Include as much information about the patent as you can. List the patent number and title. Describe the intellectual property completely.

Not Searching for Security Interests

Patents can be collateral. A bank or another party can file a security interest in a patent, and this can limit how much an assignee can earn from a patent. Check for security interests before filing a patent assignment.

Not Filing a Proprietary Information Agreement

Many businesses file patents, as this is part of a business plan , and it's especially common for startup businesses. Inventorship problems can happen if employees file patents instead of the business.

Often, employees have an obligation to assign inventions to a company. This is true if they developed the invention on the job.

To avoid confusion, require employees to sign a proprietary information agreement. This automatically assigns inventions and designs to the business. Other options include signing an automatic assignment or an explicit assignment. These all clarify patent ownership.

Not Being Notarized

Make sure all official documents concerning your patent are notarized. There is a huge legal advantage to being notarized. It makes it so that your documents will be accepted as correct until it is proven otherwise. If you can't get your documents notarized, gather two witnesses. Have them attest to the signatures.

You have to file a patent assignment within three months of signing the form. If you don't, the assignee could lose ownership rights.

Frequently Asked Questions

Where Do I Record a Patent Assignment?

If you have a U.S. patent, record your patent assignment with the USPTO. If you have a foreign patent, file with the correct national patent offices.

I Can't Get a Signature from the Inventor. What Happens Now?

First, it needs to be officially established that:

Whoever is pursuing the application has the right to do so.
The inventor cannot be reached.

In order to establish this, the patent office will need a copy of the following:

the employee agreement
the assignment
other evidence of the rights

After that, the patent office will continue as if the signature has been obtained, even though it hasn't.

If the inventor has died, the patent office will try to contact the person in charge of managing the deceased's estate or the heir. If the invented refuses to sign or is missing, the patent office will ask for a declaration from the person who is trying to contact them. They will also look at the following items that have been sent to the inventor:

Do I Have to File a Patent Assignment if the Owner's Name Changed?

No, you don't need a patent assignment if only the person's or company's name changed. If the company merged with another, you may need a patent assignment.

What if I Make a Mistake on My Patent Assignment?

You can't correct a patent assignment. You have to assign it back to the original owner. Then you have to reassign with the correct information.

How Much Does a Patent Assignment Cost?

The patent assignment fee is $25. Filing electronically doesn't cost extra. You do have to pay an additional $40 fee if you file on paper.

Should I Hire a Lawyer?

Yes, you should get a lawyer to help with a patent assignment. A lawyer will make sure there are no filing errors. A lawyer knows how to describe the patent correctly. Errors and bad descriptions can limit the power of a patent assignment. This could cost the assignee a lot of money in future profits and legal fees.

Steps to File a Patent Assignment

1. Fill Out a Recordation Form Cover Shee t

The Recordation Form Cover Sheet is an official USPTO document. This includes the names of the assignor(s) and the assignee(s). It also includes the patent title and number.

2. Complete a Patent Assignment Agreement

The patent assignment agreement should list the assignor(s) and the assignee(s). It should state that the assignor has the right to assign the patent. It should also describe the intellectual property clearly and completely. It should also explain any financial or other transactions that have to take place. This includes a description of the lump sum payment.

3. Sign the Patent Assignment Agreement

All patent owners and assignees must sign the patent assignment agreement.

4. Submit the Patent Assignment

Finally, submit the patent assignment with the USPTO. You have to pay the assignment fee at this time.

If you need help with patent assignments, you can post your question or concern on UpCounsel's marketplace . UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Patent Assignments: Everything You Need to Know

Are you an inventor or a savvy business owner with a new idea? Then you’re in the right place! You’re probably wondering how to protect your intellectual property, and a patent is a great way to do just that. But, did you know that simply getting a patent isn’t always the best option for all inventors? Enter the patent assignment – a legal written agreement that transfers ownership of your patent to another party. Don’t worry if you’re new to the concept, we’ve got you covered.

What is a patent assignment?

A patent assignment is a legal document that transfers ownership of a patent from one person (or business) to another. This can be done for a variety of reasons. For example, maybe you decide to sell your patent. Or, you may want to transfer the ownership to a business partner or collaborator. A patent can also be assigned as collateral for a loan. In any case, the assignment must be in writing and signed by both parties in order to be legally binding.

There are a few key things to keep in mind when it comes to patent assignments. First, it is important to note that patents can be assigned in whole or in part. This means that you can assign your entire patent to another individual/company, or you can assign just a portion of the patent rights, such as the right to manufacture or sell the invention.

When can I execute a patent assignment?

Another important consideration is the timing of the assignment. Patent assignments can be made at any time after a patent is granted, but it is typically best to do so as early as possible to ensure that the assignment is legally valid and enforceable. In addition, if you plan to assign your patent to someone else, it is important to make sure that the assignment is in compliance with any contractual obligations you may have, such as agreements with investors or business partners.

Why would a patent assignment be valuable to me?

Patent assignments can be a great way to monetize your invention. By assigning your patent rights to another party, you can receive a lump sum payment or ongoing royalties in exchange for the use of your invention. This can be especially beneficial for inventors or small business owners who may not have the resources to fully commercialize their invention on their own. Additionally, assigning your patent rights can allow you to focus on other aspects of your business, such as research and development, without worrying about the day-to-day operations of manufacturing and sales.

How do I find information on patent assignments?

The USPTO has a patent assignment search tool that contains assignment information on all patents issued after 1980. And yes, it’s public and free to use!

Simply visit the link above and select whether you want to search for a patent assignment or a trademark assignment. You can switch between the two search tools at the top of the page.

There’s options for a quick lookup, basic search, and advanced search depending on what parameters you want to search by. You will need to enter one or more search criteria, which can include the patent number, the assignee name, the assignor name, or the publication number. You can also specify the date range for your search to limit the results.

Once you have entered your search criteria, click on the “Submit” button, and the search results will be displayed. Here’s an example of a result from the basic search option.

The search results will include a list of patent assignments that match your search criteria, along with the assignee name, the assignor name, the recorded date of the assignment, and the reel and frame number for the assignment document. You can click on the hyperlinked patent number to view the patent details, including the application and grant information, as well as any related documents, such as assignments or maintenance fees.

I want to learn more about assigning my patent.

If you are considering a patent assignment, it is essential to work with an experienced attorney. A patent attorney can help you understand your legal rights and obligations, and can guide you through the assignment process to ensure that your interests are fully protected.

At Bold Patents Law Firm, we have extensive experience in patent assignments and other aspects of intellectual property law. Our team of skilled attorneys can help you navigate the complex legal landscape of patent assignments, from drafting the assignment agreement to ensuring that it is legally valid and enforceable.

In addition to patent assignments, we also offer a wide range of other related services, including patent searches, patent applications, and trademark services. Whether you are an inventor, a business owner, or a patent holder, we are here to help you protect your intellectual property and achieve your business goals.

If you’re ready to take action, schedule a free screening call with our advisors. We want to help you realize your visionary dreams! Go Big, Go Bold!

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What is a Patent Assignment?

Whether you’re curious about assigning a patent to someone else or having a patent assigned to you, you might be wondering what a patent assignment is? Patent law allows patent holders to assign patents to other parties. Patent assignments often take place between an employee and his company, however, it’s not uncommon for a person to assign his interest to a patent to a third party. So, what exactly is a patent assignment? We will cover this below.

What is a Patent Assignment ?

A patent assignment is an agreement by the patent holder (assignor) to transfer his interest and ownership of a patent to another party known as the assignee (party receiving patent rights). Once a patent holder executes an assignment agreement assigning his interest in a patent to another party, the assignor loses his rights under the patent. The assignor (transferor) will no longer be able to stop others from using, making, and selling the patent invention. Instead, the assignee gains these rights.

In the United States, patent assignments are very common between an employee and his company because a company or business cannot apply for a patent. An inventor has to apply for a patent and then the inventor then assigns his interest under a patent to the company for which he is working.

If you’re an inventor and you want to assign your patent to another party, just remember that patent assignments are final. Once an inventor assigns (transfers) his interest in a patent to another party, the assignment (transfer of rights) cannot be undone, it’s final.

What is a Patent Assignor?

A patent assignor is a party that transfers it’s interest and right to the patent to the transferee (assignee) or the party receiving the patent. Once an agreement is executed and recorded with the patent office, the assignee becomes the patent right holder.

What is a Patent Assignee?

Requirements to execute a patent assignment agreement.

Once the assignment agreement is executed, it must be filed with the USPTO for the agreement to take effect. Please remember that the agreement needs to be in writing, oral agreements are not sufficient to transfer the rights from the patent holder to the assignee.

The assignment agreement must include the following information:

Who Owns the Patent After a Patent Assignment?

The assignor (person who transferred his rights) loses his rights under the patent and will no longer be able to enforce the patent. Assigning a patent is similar to selling a car and registering the title in someone else’s name. Once the patent is assigned, similar to registering the title of a vehicle in someone else’s name, the new owner is the assignee (person to whom the patent was transferred to). Once the assignment is recorded with the patent office, the records will be updated to show the assignee (new owner) of the patent. This information will then be made available to the public.

Assigning a Patent vs Licensing a Patent

Assigning a patent is much different than licensing a patent. When a patent holder assigns his interest in a patent to another party, he is usually transferring ownership of the patent to the other party. Patent licensing is different in that a license is merely a transfer of the right to use the patent in the manner specified in the licensing agreement. Assignments transfer ownership while a license transfers the right to use the patented invention. That said, if a patent is assigned, the information of the assignor and assignee will become part of the public record. Whereas if an inventor licenses his patent, that information is not typically published to the public.

Does a Patent Assignment Need to be Notarized?

Although a patent assignment does not need to be notarized, notarizing it can be beneficial in the event that the previous patent holder claims that he did not make the assignment. It’s an added layer of protection that could prove to be very valuable.

Can Multiple People Own a Patent?

Yes, multiple people can own a patent. For example, if three inventors make a single invention, all three are considered joint inventors and their names should appear on the patent application, as well as the issued patent.

Patent Assignment Tips

1) hire an attorney to assist you with your patent assignment.

Any individual who’s either an assignor or assignee should hire an attorney to assist with the assignment of a patent. Attorneys will ensure that the assignment agreement complies with the law and contains all of the information that is required for a successful patent assignment. Although it’s not unheard of for parties to execute an assignment agreement on their own, making a mistake could cause legal troubles down the road.

2) Don’t Forget to Record A Patent Assignment

If you have been assigned a patent, don’t forget to record your assignment with the USPTO. We say this because patent assignments don’t go into effect unless the assignment is recorded with the patent office. Recording a patent assignment tells the patent office that you are the new owner of the patent.

3) Notarize Your Assignment Agreement

4) how much does it cost to record an assignment with the uspto, patent assignment.

Let’s do a quick recap. A patent assignment is the transfer of ownership of a patent from one party to another. The party transferring its right is known as the assignor and the party receiving the patent rights is known as the assignee.

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

Intellectual Property
Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”).

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent.

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP, implement strong hiring policies that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an employment agreement that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

Advance assignment of any IP created while employed by your company, or using your company’s resources
An obligation to disclose any IP created while employed by your company, or using your company’s resources
An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

Independent contractors: Some inventors may be self-employed, or they may be employed by one of your service providers.
Joint collaborators: Some inventors may be employed by, say, a subsidiary or service company instead of your company.
Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should also get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you can execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

Be in writing: Oral agreements to assign patent rights are typically not enforceable in the United States
Clearly identify all parties: Include the names, addresses, and relationship of the assignor(s) and assignee
Clearly identify the patent being assigned: State the patent or patent application number, title, inventors, and filing date
Be signed by the assignors
Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases.

So the patent owner (the Assignee) should should record the assignment through the USPTO’s Assignment Recordation Branch . They can use the Electronic Patent Assignment System (EPAS) to file a Recordation Cover Sheet along with a copy of the actual patent assignment agreement.

They should submit this paperwork within three months of the assignment’s date. If it’s recorded electronically, the USPTO won’t charge a recordation fee .

Need to check who owns a patent? The USPTO website publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a continuation-in-part , or in a non-provisional application that adds new matter to a provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an employee agreement , company policy , invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation.

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An experienced patent professional can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments — contact us now to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

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What is a patent assignment?

April 26, 2023 by James Yang

Patent assignments are common during the patent process. They allow startups to own the ideas, solutions, and work products of the independent contractors that they hire. They also allow companies to own the inventions or solutions that their engineers create. In this article, we’ll explore everything you need to know about patent assignments, from their definition and purpose to how to find the owner of a patent.

A patent assignment is a legal document that transfers ownership of a patent from one party to another. The invention rights vest with the person that conceives of the invention unless the inventor has assigned the invention rights to another using the patent assignment. Understanding the basics of patent assignments is crucial for anyone that hires engineers, or independent contractors, purchases a patent, or licenses a patent.

What are the requirements of the patent assignment?

Here are the requirements for a valid patent assignment:

The patent assignment must be in writing. Patent rights cannot be transferred from one party to another verbally . There is no such thing as a verbal patent assignment.
Confirm that the party assigning the patent rights has the right to transfer the patent to the receiving party. You can do this by looking up all of the previous patent assignments associated with the patent. Below, I provide the link to the patent office where you can find these prior patent assignments. You are looking for a clear chain of title from the inventor (i.e., assignor) to the assignee.
The patent assignment should clearly identify the patent being transferred. Moreover, it should state that all other related patents are included in the transfer.
The assignor must sign the document. Notarization is not necessary but it would be helpful in the event of litigation.
The assignee must record the patent assignment with the records office at the USPTO within 3 months after execution of the patent assignment. Otherwise, the patent assignment may be invalid.

Can a patent assignment be invalid if the requirements are not met?

A patent assignment can be invalid or not effective at transferring the patent rights from the assignor to the assignee. As such, the assignee needs to do their due diligence to make sure the assignment is proper.

Here are a few action items the assignee can check for their due diligence:

Do they own the patent?
Is the chain of title clear from the inventors to the assignor?
Are there any liens on the patent?
A patent can be a part of a larger portfolio. Make sure that all of the patents in the portfolio are included in the assignment.
The assignment document should include a catch-all phrase so that the entire patent portfolio is transferred, not just one of the patents.

Who are the assignor and assignee?

The assignor is the person or entity that is transferring away their patent rights. In the example above, the inventor would be the assignor.

The assignee is the person or entity that receives the patent rights.

Who owns the invention?

An invention is initially owned by the inventor . Invention rights initially vest with the person that conceives or came up with the solution to a problem. In contrast to an inventor, a scribe merely follows the instructions of the inventor. For example, an engineer might design a solution and ask a draftsperson to draw up the concepts conceived by the inventor. The engineer would be considered the inventor. The draftsperson would be considered the scribe. The scribe does not have any invention rights. Nevertheless, you should have the draftsperson sign an invention assignment agreement just in case they do contribute to the invention.

What is the purpose of a patent assignment?

A patent assignment is used when the patent rights are sold to another party. For example, when the inventor sells their invention rights to a company, the inventor transfers their patent rights to the company. The transfer of patent rights is done with a patent assignment.

Patent assignments are also used to make sure that all invention rights are owned by one entity. Otherwise, the startup or company wouldn’t own all of the patent rights even if they paid someone to build a product.

For example, you come up with a clever idea but don’t know how to engineer the product. As such, you hire an engineer (i.e., an independent contractor) to design the product for you. Under US patent laws, the independent contractor is considered the inventor, and the invention rights vest with the independent contractor. You don’t own the ideas of the independent contractor even if you paid money to the independent contractor for their work. The patent assignment transfers the invention rights from the independent contractor to you. Now, you can get a patent for their ideas.

In another example, companies hire engineers to design products. Without a patent assignment, these engineers could get patents for their work. Patent assignments transfer the invention rights from the engineers to the company to allow the company to obtain a patent if desired.

Patent assignments arise in many other situations but they all work the same. They transfer the patent rights from one party to another.

How do you determine ownership of a patent?

All patents are recorded at the records office of the United States Patent and Trademark Office. You can find out who owns a patent by looking up the patent number using the following link: Patent Assignment Search .

The documents you find recorded at the records office of the USPTO may not relate to the transfer of patent rights. Sometimes, they relate to leans that are placed on the patents such as when the patent owner took out a loan for the business.

What you are looking for is a clear chain of title from the inventor or inventors to a company. If a sale of the patent rights occurred, a clear chain of tile needs to exist from the company to the buyer. Otherwise, the patent rights have a cloud in their chain of title.

As such, you have to read each of the documents to make sure that there is a clear chain of title from the inventors to the last owner of the patent.

Patent assignments are crucial for businesses and startups. They allow for the transfer of ownership of the patent from one party to another and ensure that the invention rights are not jeopardized.

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Ant-Like Persistence

Best practice for recording US patent assignments

I’ll share my notion of the Best Practice for recordation of US patent assignments. Please post comments below.

As a starting point to this discussion, I will remind the reader that if we receive a signed assignment and if we sit on it too long, we eventually come out on the wrong side of the 3-month period set forth in 35 USC § 261:

An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

So we will take as our starting point that whatever else we do about recording an assignment or postponing the recording of an assignment, we ought to try extremely hard to avoid getting on the wrong side of this three-month period. (There are similar statutory three-month periods for trademark assignments and copyright assignments.)

Old-timers (or at least, practitioners who were in practice prior to January 1, 2014) will recall the days when it was necessary to pay a government fee to record a patent assignment. In those old days, practitioners would go to great lengths to try to avoid paying two fees if there was a way to squeeze two recordations into a single recordation (so as to pay only one fee). A practitioner having encountered a problem with an existing recordation filing would go to great lengths to try to salvage the filing so as to avoid having to pony up a second government fee. If there were two inventors, each of whom was supposed to sign an assignment, and if the signed assignments showed up on different days, most folks would carefully save up the first one and postpone e-filing it until the second signed assignment arrived. This way, the filer could bunch them together and e-file them all in the same package.

As I say, the overarching goal for most practitioners in those old days was to try as hard as possible to get away with paying only one government fee for multiple assignments.

But the US eliminated the fee on January 1, 2014. So that is no longer a reason to drag our feet on e-filing a signed assignment if we have it in hand.

A first drawback to intentionally postponing recording a signed assignment is that one might inadvertently permit the three-month period to pass (which I will call a “recordation failure”). By this I mean that to avoid a recordation failure, one needs to aggressively docket the three-month period. The docket steps would be (a) receive the signed assignment from the client; (b) note the date of execution (which might not be the same as the date that we received the signed assignment from the client); (c) add three months to the date of execution to arrive at a drop-dead recordation date, and (d) docket the drop-dead date and one or two warning dates.

If there were a docket failure (failing to set the drop-dead date, or failing to blow whistles loudly enough toward the end of the three-month period) then this would lead to a recordation failure (failing to record the signed assignment within the three-month period set forth in 35 USC § 261).

In our office, we estimate that the internal cost to set and clear a docket is around $50. So if we can simply do something and get it done, rather than dragging our feet on the task, we don’t need to docket to remember to do whatever it is. And then we save $50.

So to emphasize the above point, if we record each signed assignment promptly after receiving it, this also avoids having to do the above-mentioned fuss of docketing the three-month period under 35 USC § 261. Once we record the signed assignment, we can stop worrying about setting and clearing dockets to remember to record the signed assignment.

The practitioner who makes a decision to postpone recording an assignment is creating a second risk. Whenever we sit on a signed assignment without recording it, we create the risk of misplacing the signed assignment . What if the document falls behind a desk? What if the breeze catches the document and it flies out the window? What if the file server where we store the PDF document crashes? What if the file server does not crash, but through some bad luck the PDF document gets stored in the wrong folder?

The USPTO’s assignment recordation system may thus be thought of as an offsite backup for signed assignments. Saying this a different way, the sooner the signed assignment is recorded, the sooner that one may stop worrying about the risk of misplacing it.

A nay-sayer might ask “yes but if I record each inventor’s assignment when it arrives, I will have to fill in the twenty or so fields of the EPAS system twice instead of once!” The answer to this, of course, is that when we are recording the first assignment, we should save a template. When the second assignment shows up, we can use the template to auto-populate nearly all of the fields of the EPAS system for that second recordation.

Do you think that what I have described is a Best Practice? Please post your comment below.

Patent Assignment Must be in Writing; But Some Transfers are not Assignments

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If you have any questions about the ownership of a patent, assigning a patent, or recording a patent assignment, then do yourself a favor and schedule a free consultation with Nolan IP Law today!

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Patent Assignment Agreement Drafting Tips

When drafting a patent assignment agreement, it is vital to precisely define the assignment scope, identifying the specific patent rights being transferred, including patent applications and issued patents. Clearly identify the assignor and assignee, considering their legal entity status and roles in the assignment process. A well-structured consideration clause outlining compensation or benefits is also imperative. Additionally, the agreement must address ownership and title, providing a clear transfer of patent rights. By carefully considering these factors, parties can minimize potential disputes and achieve a successful patent assignment. A thorough understanding of these principles is necessary to navigate the complexities of patent assignment agreements.

Table of Contents

Understanding Patent Assignment Basics

Assigning patent rights, a vital step in the intellectual property transfer process, requires a thorough understanding of the underlying principles and legal frameworks that govern patent assignments. A patent assignment involves the transfer of ownership rights from one entity to another, and it is essential to grasp the nuances of this process to ensure a successful transfer.

Throughout patent history, assignment strategies have evolved to accommodate the complexities of intellectual property transactions. A well-crafted assignment strategy considers the type of patent, jurisdiction, and assignor's goals to facilitate a seamless transfer. Understanding the legal frameworks governing patent assignments is crucial, as different jurisdictions have unique regulations and requirements. For instance, the United States Patent and Trademark Office (USPTO) requires assignments to be in writing and signed by the assignor. A comprehensive understanding of these principles and frameworks enables parties to navigate the assignment process efficiently, minimizing the risk of costly disputes and ensuring a successful transfer of patent rights. By grasping these fundamental concepts, parties can develop an effective assignment strategy that meets their intellectual property goals.

Defining the Assignment Scope

A well-defined assignment scope is critical to ensuring that the patent rights being transferred are clearly identified and understood by all parties involved. The assignment scope outlines the specific patent rights being assigned, including the patent applications, issued patents, and any related intellectual property. A clearly defined scope helps to avoid ambiguity and potential disputes.

The scope of the assignment may be limited by various factors, including:


Patent Applications	Jurisdictional limitations	Assigning patent applications only in the United States
Issued Patents	Specific patent families	Assigning only patents related to a particular technology
Intellectual Property	Exclusions of specific IP rights	Excluding or trademarks from the assignment
Know-How	Confidentiality restrictions	Assigning know-how related to a specific product or process

When defining the assignment scope, it is essential to consider the asset categories and scope limitations that apply to the patent rights being transferred. By doing so, parties can ensure a clear understanding of the assignment scope and avoid potential disputes.

Identifying the Assignor and Assignee

When drafting a patent assignment agreement, it is crucial to accurately identify the parties involved, specifically the assignor and assignee. This requires defining the parties, determining their legal entity status, and clarifying the assignor's role in the assignment process. By doing so, the agreement can guarantee a clear understanding of the parties' rights and obligations, thereby mitigating potential disputes.

Define the Parties

In a patent assignment agreement, the parties involved are clearly identified as the assignor and assignee, with the assignor being the party transferring the ownership of the patent and the assignee being the party receiving the transferred patent rights. Defining the parties is vital to avoid potential disputes and provide clarity.

The assignor and assignee can be various entity types, such as individuals, corporations, partnerships, or limited liability companies. It is imperative to accurately identify the party roles in the agreement to establish their respective rights and obligations.

When defining the parties, consider the following:

Clearly state the assignor's name and address
Specify the assignor's capacity, such as owner or authorized representative
Identify the assignee's name and address
Define the assignee's capacity, such as purchaser or licensee

Identify Legal Entities

The assignor and assignee in a patent assignment agreement must be accurately identified as legal entities to establish their respective rights and obligations. This identification is pivotal, as it determines the parties' capacity to enter into the agreement and affects the agreement's enforceability.

When identifying the assignor and assignee, it is imperative to specify their entity types, such as corporations, limited liability companies (LLCs), partnerships, or individuals. This clarification guarantees that the parties' legal structures are correctly represented, which is necessary for assigning patent rights. For instance, if the assignor is a corporation, it is necessary to specify the state of incorporation and the corporate structure, including any parent or subsidiary companies. Similarly, if the assignee is an LLC, its members and managers should be identified. A clear understanding of the parties' corporate structures helps prevent potential disputes and ensures a smooth transfer of patent ownership. By precisely identifying the legal entities involved, the patent assignment agreement can effectively convey the parties' intentions and protect their interests.

Clarify Assignor Role

Accurate identification of the assignor's role is critical in a patent assignment agreement, as it establishes the party with the authority to assign the patent rights. This clarity is essential in defining the assignor's responsibilities and liabilities, particularly in cases of disputes or breaches. A well-defined assignor role also facilitates a smooth transfer of patent ownership, ensuring that the assignee receives the intended rights.

To ensure a comprehensive role definition, consider the following key aspects:

Assignor's capacity : Clearly state the assignor's capacity to assign the patent rights, including their legal authority and any necessary permissions.
Assignor's obligations : Outline the assignor's responsibilities, including any warranties, representations, or covenants related to the patent assignment.
Assignor Liability : Specify the extent of the assignor's liability in case of breaches or disputes, including any indemnification provisions.
Role boundaries : Establish clear boundaries around the assignor's role, including any limitations or exclusions to their authority.

Establishing the Consideration Clause

Frequently, a patent assignment agreement's consideration clause outlines the specific compensation or benefit the assignor receives in exchange for transferring ownership of the patent rights. This clause is crucial as it specifies the value of the patent rights being transferred. To draft an effective consideration clause, it is essential to determine the fair market value of the patent rights. This can be achieved by conducting a thorough market analysis or by relying on expert valuations.

The consideration clause should clearly state the contract value, which may be a lump sum payment, a royalty rate, or a combination of both. The clause should also specify the timing and method of payment. Furthermore, it is vital to ensure that the consideration clause is mutually agreed upon by both parties to avoid potential disputes. A well-drafted consideration clause provides clarity and certainty, ensuring that the assignor receives fair compensation for the transferred patent rights. By establishing a clear and comprehensive consideration clause, parties can mitigate potential risks and ensure a smooth transfer of patent ownership.

Addressing Ownership and Title

When drafting a patent assignment agreement, it is crucial to address the critical aspects of ownership and title to guarantee a clear understanding of the parties' rights and obligations. Determining patent ownership involves identifying the current owner of the patent rights and their capacity to assign those rights. A well-crafted assignment agreement must also clearly transfer title to the assignee, specifying the scope of the assignment and any limitations or reservations.

Determining Patent Ownership

In the context of patent assignment agreements, determining patent ownership is a critical step that requires a thorough examination of the underlying legal rights and interests of the parties involved. This involves delving into the patent history to identify the original inventors, assignees, and any subsequent transfers of ownership. It is essential to clarify the intellectual boundaries of each party's contribution to the invention, ensuring that all stakeholders are accounted for and their rights are respected.

To ensure accurate determination of patent ownership, consider the following key factors:

Patent applications and grants : Review the patent office records to identify the original applicant, inventors, and assignees.
Assignment and transfer agreements : Analyze any previous agreements that may have transferred ownership or rights to the patent.
Employment agreements and contracts : Examine employment contracts and agreements that may impact patent ownership, such as work-for-hire provisions.
Joint research and development agreements : Identify any collaborative agreements that may have contributed to the invention and affected patent ownership.

Transferring Title Clearly

Clear and unequivocal language is vital in patent assignment agreements to transfer title effectively, ensuring that the assignee's rights are explicitly defined and protected. Ambiguity in the language can lead to disputes and undermine the validity of the assignment. To avoid this, it is essential to use clear language that explicitly conveys the transfer of title, including the patent's serial number, title, and ownership.


Patent Identification	Clearly identify the patent being assigned, including the serial number and title.	"Patent No. 12,345,678, titled 'Innovative Widget'"
Transfer of Title	Unambiguously state the transfer of title from the assignor to the assignee.	"Assignor hereby assigns, transfers, and conveys all its right, title, and interest in and to the Patent"
Effective Date	Specify the effective date of the assignment to establish a clear title chain.	"This assignment shall be effective as of the date of execution of this Agreement"

Managing Confidentiality and Disclosure

Frequently, patent assignment agreements require the inclusion of confidentiality provisions to protect sensitive information disclosed during the negotiation and assignment process. These confidentiality clauses are essential to safeguard the intellectual property and trade secrets of the parties involved. Effective management of confidentiality and disclosure is crucial to prevent unauthorized use or disclosure of confidential information.

To ensure adequate protection, consider the following key aspects when drafting confidentiality provisions:

Define the scope of confidential information, including patent applications, technical data, and business strategies.
Establish disclosure protocols, outlining the procedures for sharing confidential information, including authorized recipients and secure communication channels.
Specify the obligations of the receiving party, including non-disclosure, non-use, and return of confidential information upon request.
Determine the duration of confidentiality obligations, including any exceptions or termination clauses.

Anticipating Dispute Resolution Mechanisms

Dispute resolution mechanisms should be carefully built into the patent assignment agreement to mitigate the risk of costly and time-consuming litigation, should a disagreement arise between the parties. This is particularly vital in patent assignment agreements, where the stakes are high and the potential for disputes is significant.

To facilitate effective dispute resolution, parties should consider incorporating alternative dispute resolution (ADR) mechanisms into the agreement. Arbitration options, for instance, can provide a binding and final resolution to disputes, while also offering a more efficient and cost-effective alternative to litigation. Mediation strategies, on the other hand, can facilitate a more collaborative and informal approach to dispute resolution, allowing parties to reach a mutually beneficial agreement.

When drafting the patent assignment agreement, parties should carefully consider the scope of the dispute resolution mechanism, including the types of disputes that will be subject to ADR, the rules and procedures governing the process, and the role of the arbitrator or mediator. By anticipating and addressing potential disputes through carefully crafted dispute resolution mechanisms, parties can minimize the risk of costly and time-consuming litigation, and guarantee a more efficient and effective resolution to any disputes that may arise.

Frequently Asked Questions

Can a patent assignment agreement be oral instead of written?.

While verbal contracts are generally enforceable, a patent assignment agreement should ideally be in writing to avoid ambiguity and disputes, as oral agreements may be difficult to prove and could be barred by statute limitations.

How Do I Determine the Patent Assignment's Effective Date?

To determine the patent assignment's effective date, examine the agreement's execution date, considering date stamps on signatures and filings. Be aware of potential filing delays, as they may impact the assignment's effective date, potentially altering the patent's ownership timeline.

Are Patent Assignments Publicly Recorded or Kept Confidential?

Patent assignments are publicly recorded with the US Patent and Trademark Office (USPTO), which may compromise confidentiality. However, parties can mitigate confidentiality risks by limiting public disclosure to crucial information, such as the assignment's existence and effective date.

Can a Patent Assignment Be Cancelled or Terminated?

A patent assignment can be cancelled or terminated through mutual consent, a contractual provision, or as a consequence of breach, where the breaching party fails to comply with the agreement's terms, triggering termination clauses.

Do I Need a Lawyer to Draft a Patent Assignment Agreement?

While not legally required, engaging a lawyer to draft a patent assignment agreement is highly recommended, as they bring vital legal expertise to guarantee accuracy and protect interests, outweighing potential cost considerations.

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Does a patent assignment need to be notarized?

Generally, no. Assignments are transfers of the entire interest in a patent from one entity to another. They are distinguished from licenses , which give another person a limited right to the patent. In the US, there is no requirement that an assignment be notarized. To the US Patent Office , it is irrelevant whether an assignment is notarized or not. The important thing is that the patent assignment is recorded with the Patent Office, as an unrecorded assignment doesn’t protect against a third party who may buy the rights from the original assignor without any knowledge that the patent had already been assigned.

Note, however, that in many foreign countries, an assignment must be notarized to be valid.

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Procuring U.S. Patents without a Signed Assignment of Patent Rights

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights. Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed. This article summarizes the requirements for filing and prosecuting a U.S. patent application filed post-America Invents Act (AIA) without a patent assignment and identifies pitfalls when establishing ownership of patent rights for patent prosecution. Inventors being unavailable may also complicate obtaining the declarations required for U.S. patent prosecution, but solutions are available as we previously discussed here .

Need for an Assignment

For a patent to issue to an assignee, the United States Patent and Trademark Office (the “USPTO”) must be made formally aware of the assignment so that the assignee is recognized as the patent applicant. Filing an Application Data Sheet (ADS) for a patent application identifying the assignee as the applicant provides informal notice to the USPTO. MPEP § 301 discusses ownership/assignability of patents and applications, including formal assignment recordation at the USPTO. Recording an assignment may be necessary to permit the assignee to “take action” in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1.46 ; MPEP §§ 301 , 302 , 605 . In other words, assignees may face obstacles prosecuting a patent without an executed assignment. The assignment(s) must transfer the entirety of patent rights from each of the inventors to the assignee, e.g., corporation, partnership, university, government entity, etc. There can be multiple assignees if different inventors assign their rights to different assignees, a situation that results in two or more partial assignees that must each be identified to the USPTO as an applicant. MPEP § 301 .

As only one patent assignment is required per inventor per patent application, subsequent applications claiming priority may often rely on an earlier assignment (depending on the assignment’s particular language). If new subject matter is introduced in the application being filed, such as in a continuation-in-part application, another assignment may be required.

Persons who may file a Patent Application without an Assignment

Fortunately, applicants may procure a patent even if an inventor is not available to sign an assignment before application filing or during prosecution before payment of the issue fee.

A person to whom the inventor is under the obligation to assign the invention may file a patent application and be identified as the applicant. An assignment can then be subsequently executed and the USPTO notified as discussed above. Alternatively, other documentary evidence of ownership, such as an employment agreement, invention disclosure form, or other documentation, can be recorded with the USPTO in lieu of a signed assignment document. 37 CFR 1.46 . Employment agreements may contain language stating that the inventor assigns all rights, title, and interests in any invention developed while employed by the employer. In some instances, the employment agreement may affirmatively state that the employee is under an obligation to assign the invention to the employer. An invention disclosure form may contain language stating that the inventor’s signature on the form acknowledges the inventor’s assignment of and/or obligation to assign any rights, title, and interest in the invention disclosure to the employer. If the invention disclosure form includes the inventor’s signature, this may be sufficient evidence that the employer is an obligated assignee. 37 C.F.R. 1.46(b)(1) . It is important to examine any documentary evidence of ownership before recordation to identify any information (e.g., industry trend language, discussion of prior art, personal information of an employee, etc.) that may require redaction before recordation and/or may make public recording of the documentary evidence an undesirable option for the applicant.

Also, a person who shows sufficient proprietary interest in the matter may file a patent application and be identified as the applicant upon showing that such an action is appropriate, with the resulting patent being issuable in the applicant’s name. 37 CFR 1.46 . If filing a national stage application, the applicant must have been identified in the international stage of the international application or as the applicant in the publication of the international registration.

Showing Sufficient Proprietary Interest or Obligation to Assign

As provided in 37 CFR 1.46(b)(2) , “[i]f the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.” Additionally, as stated in MPEP § 409.05 , “[t]he ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.”

Showing sufficient proprietary interest requires “proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.” 37 CFR 1.46(a) ; 37 CFR 1.424 . Showing sufficient proprietary interest is discussed in MPEP § 409.05 and may be established in various ways depending on the circumstances. MPEP § 409.05 states that

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant. The facts in support of any conclusion that a court would award title to the 37 CFR 1.46 applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

Remember that an applicant as a person who otherwise shows sufficient proprietary interest in the matter must submit the required petition, fee, and information prior to paying the issue fee as set forth in 37 CFR 1.46 .

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights even without execution of a signed assignment by an inventor. Before doing so, however, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

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October 27, 2020

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Intellectual Property
Patent Prosecution & Strategic Counseling

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Christina sperry, mark d. hammond, related practices.

Patent Prosecution

Patent Laws, Regulations, Policies & Procedures
Manual of Patent Examining Procedure

Chapter 0300

Ownership and assignment.

301.01-Accessibility of Assignment Records
302.01-Assignment Document Must Be Copy for Recording
302.02-Translation of Assignment Document
302.03-Identifying Patent or Application
302.04-Foreign Assignee May Designate Domestic Representative
302.05-Address of Assignee
302.06-Fee for Recording
302.07-Assignment Document Must Be Accompanied by a Cover Sheet
302.08-Mailing Address for Submitting Assignment Documents
302.09-Facsimile Submission of Assignment Documents
302.10-Electronic Submission of Assignment Documents
303-Assignment Documents Not Endorsed on Pending Applications
304‑305-[Reserved]
306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
307-Issue to Non-Applicant Assignee
308-Issue to Applicant
309-Restrictions Upon Employees of U.S. Patent and Trademark Office
310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
311-Filing of Notice of Arbitration Awards
312-[Reserved]
313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
314-Certificates of Change of Name or of Merger
315-Indexing Against a Recorded Certificate
316-[Reserved]
317.01-Recording Date
317.02-Correction of Unrecorded Returned Documents and Cover Sheets
317.03-Effect of Recording
318-Documents Not to be Placed in Files
319-[Reserved]
320-Title Reports
321‑322-[Reserved]
323.01(a)-Typographical Errors in Cover Sheet
323.01(b)-Typographical Errors in Recorded Assignment Document
323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
323.01(d)-Expungement of Assignment Records
324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

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Law Office of John B. Hudak, PLLC

An intellectual property law firm: patents, trademarks, and copyrights., viewing patent assignments.

Patent assignment documents can be searched for - and viewed - by using the United States Patent and Trademark Office Patent Assignment Search webpage .

You can search for an assignment by using: the assignor’s name; the assignee’s name, patent application number, patent number, and other information tied to the patent.

A patent assignment is generally considered the transfer of patent rights.

Use this information as a starting point for doing due diligence on investments; or mergers and acquisitions.

How do I research patent assignments?

There are three main elements you will need to be able to do for research on patent assignments:

The main task is:

A) finding patent assignments filed with the Patent Office

this will show you the actual documents or contracts where the patent rights are transferred

In order to do that you will need to:

a) look up the patent or patent application

this will show you what patents or patent applications the company publicly owns so you can view the relevant assignments

b) view the full patent or patent application file

this will show you the continuity data about related applications/patents so you can view any later patents or patent applications which were created later in time, to determine if those property rights were also transferred

How do I find a patent assignment?

Assignments of patents are publicly recorded through the United States Patent and Trademark Office (USPTO).

Use the steps below find the chain of title transfer -- and in general researching assignments when doing due diligence for investments.

You will find relevant patents attached to the company being researched.
Then, you will determine all the patents or patent applications which come before or after the relevant patents by viewing Continuity Data in the full patent file.
Once all the relevant patents are known, those Patent Numbers and Patent Applications Numbers will be entered into the patent assignment database, with all the assignments for that particular Patent Number or Patent Application Number. Then view the actual contract for each patent assignment to view the transfer of rights starting at the first assignment.

1. Finding the patents or patent applications:

Start with finding the patents or patent applications which are publicly available (looking up a patent or patent application). All patents are published when issued. Patent applications are usually published 18 months after the filing date of the patent application. In some instances an applicant will request a patent application is not published before issuance.

Find patents or patent applications related to a company or individual by searching under the Field of Assignee name or Applicant name in the Basic Search of the USPTO Public Patent Search .

2. Viewing related patents or patent applications

To find information related to the original patent or patent application you will need to go to t he USPTO Patent Center , which allows you to view the full patent file. When viewing the patent file in the Patent Center, go to the Continuity Data tab. In the Continuity Data tab you will see information about any patents or patent applications which came after the patent file you are looking at – and you will see information about any patent or patent application which came before the patent file you are looking at.

3. View the assignments

When searching patents in the Patent Office Assignment Database there will be a list of assignments for that Patent or Patent Application. Start at the first assignment until the last assignment to view the chain of title. Within each assignment document review the cover sheet for accuracy but then continue to the next section to the actual contract transferring the patent rights -- and view the transfer.

Other Information for Understanding Patent Assignments

What are you looking at when you view a patent assignment.

You will view: (1) the Patent Assignment Cover Sheet, then (2) the Actual Assignment Contract which shows the transfer of rights.

The Cover Sheet describes the transfer and who the assignment is between.

The parts of the Cover Sheet are:

Nature of Conveyance: Examples include - assignment, assignment due to merger, change of name, security interest, or court order.
Conveying Party Data (the assignor)
Receiving Party Data (the assignee)
Property Numbers: the US Patent Numbers, the US Patent Application Numbers, or the PCT International Applications

After the Cover Sheet is the Actual Assignment Contract conveying the interest. The actual agreement can be viewed to determine what the agreement is transferring. There is no verification process by the Patent Office, where the Patent Office will view the actual agreement. The Patent Office only records the assignment.

What is a patent assignment?

An assignment of a patent is a transfer of ownership of patent rights. An assignor is the person/entity transferring patent rights to another person/entity. An assignee is the person/entity receiving patent rights from another person/entity. The assignor transfers their patent rights to the assignee.

Can I just look at the patent itself and not do an extensive search?

The patent or patent application may be assigned to another company after what is published in the patent or patent application. Therefore, viewing the assignee information on the Patent Office Assignment Database is important – instead of only looking at what is on the face of a published patent or patent application.

Other important information about ownership and assignments

35 U.S.C. 261 Ownership; assignment.

“... Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing."

"An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.”

Extra Reading

From the Law Office of John B. Hudak:

Read more about looking up patents: Looking up a Patent or Patent Application
Read more about searching using different fields in legal research: Using All Fields Available - Explanation of the Most Common Fields
Read more about viewing the full patent file: Viewing the Full Patent or Patent Application File

From the Patent Office:

Frequently Asked Questions about patent assignments explained by the United States Patent and Trademark Office
A working paper by the Patent Office explaining patent assignments – gives an example of a lost chain of title

From another Law Firm:

An article by the Finnegan law firm describing how a patent owner can assert rights in a patent even if a security interest is granted or recorded

Attorney Advertising. This website is for informational purposes only and is not legal advice. Using this site or communicating with the Law Office of John B. Hudak, PLLC through this site does not form an attorney-client relationship. An attorney-client relationship shall be formed only after an Attorney Engagement Letter is sent by the law office to the Client. Please do not share any unsolicited confidential information with our law firm by email or phone. This site is legal advertising. Copyright © 2024

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In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

In Europe, an assignment of a patent application must be in writing and "shall require the signature of the parties to the contract." (Emphasis added.) Thus, according to European law, which was highlighted in a Board of Appeals of the European Patent Office (EPO) on November 14, 2006 , both the assignor and the assignee must sign the assignment document. While contract law in the U.S. and in a number of other countries consider a contract signed by the conveying party to be valid for this type of one-way conveyance, this is not true everywhere in Europe. In many parts of Europe, contract law requires that both parties sign for all conveyances. Thus, an assignment signed only by the inventor may not be effective in countries such as Great Britain and France.

Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it . This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. If, for example, a PCT application claims priority to an earlier-filed U.S. application, the claim must be made by the identical legal person who filed the earlier priority application or a successor in title. This identity or relationship must be valid at the time the PCT application is filed. Where a U.S. priority document is filed in the name of the inventors and the PCT application is filed in the name of the owner, there must be an assignment from the inventors to the owner prior to the filing of the PCT application. This can be particularly problematic when a provisional application is used as a priority document. The provisional application never becomes a patent and does not need to be assigned. Thus, assignments are often only executed after a non-provisional application is filed. While problems with valid claims to priority should be eased under the America Invents Act (AIA) because U.S. applications can now be filed in the name of the owner instead of the inventor , care should be taken to ascertain a proper right to claim priority particularly if there is any difference in the identity of the applicant.

As a practice tip, practitioners should make sure all assignments are signed and dated before the PCT filing date and are signed by both the assignee and assignor. If this cannot be done, or if the right to claim priority is at all uncertain, practitioners should file the PCT application in the name of the "person" who filed the priority application and provide any correction later. Practitioners should also make sure that the assignment specifies the priority application(s) with particularity, includes an assignment of the right to claim priority, and make sure each signature is either witnessed or notarized. These measures should be taken to prevent complications in various jurisdictions, such as some countries in Europe.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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How AI tools can enhance manufacturing companies KYV processes and supply chains monitoring

August 23, 2024 · 6 minute read

Increased globalization has meant a more dynamic, yet less stable supply chain for many corporations across the world, and recent global crises have thrown the problem of disruption into stark relief.

However, when companies need to switch suppliers quickly or on-board new ones, disreputable or fraudulent vendors can more easily insert themselves into otherwise relied-upon supply chains. This creates risks for companies that go beyond manufacturing disruption and can include significant reputational and even legal risks. Manufacturers that are sourcing materials need to examine compliance not just in their own organizations, but throughout the entirety of the supply chain.

Fortunately, there are digital tools that can enhance this process and provide more comprehensive and up-to-date intelligence while prioritizing accountability. In this environment, Know Your Vendor (KYV) protocols have never been more important. The more companies are able to keep up with advancements in KYV tools and practices, the more the benefits of a strong KYV process will become apparent.

Machine learning and AI boost digital search and analysis tools

Digital tools that accelerate and sharpen the due diligence work involved in KYV are highly beneficial. It is important not just to know what a supplier does or has done as a business entity, but also to know the individuals and entities involved in the supplier’s business networks . Beyond the benefit of avoiding doing business with sanctioned individuals, there is a great advantage in knowing about individuals and ownership and in analyzing these connections.

A good data analytics program can combine public and proprietary records to illuminate searches for key individuals and entities as well as the relationships between them and even help assign risk scores to potential suppliers. Next-generation data analytics — driven by machine learning and artificial intelligence (AI) technologies — can make this process considerably more thorough and less time-consuming.

However, it’s also critical for companies to be able to turn this intelligence into actionable assessments, and that means having the right kind of skilled personnel who can interpret and channel the information into quality due diligence. Ideally, a good data mining system should be able to provide an ongoing assessment of third parties, including vendors and suppliers, and come equipped with customized alerts.

Sustainability and carbon neutrality

Environmental concerns remain a potent force in supply chain evaluation, and gathering reliable data about vendors’ carbon reduction practices continues to be a challenge for many companies — yet this is where most of the manufacturing’s carbon footprint comes from. Environmental, social, and governance (ESG) guidelines increasingly shape manufacturing decisions, but it’s Scope 3 emissions (those coming from suppliers) that have the greatest environmental impact.

In 2023, the Thomson Reuters Institute conducted a survey of ESG decision-makers in supply chain roles at midsize and large companies, both public and private. While public companies were further along in implementing an audit process for their supply chain with regard to carbon emissions, nearly all expressed concern about the breadth of their knowledge about vendors.

Using digital tools, however, it is certainly possible to monitor adverse media and legal sanctions regarding vendors and their principals as individuals, but more advanced tools may be needed to develop a broader and perhaps more predictive view of Scope 3-related practices.

Supply chain reassessment

Indeed, recent events — such as the effects of COVID-19, trade disruptions, and climate-related crises — have brought to light the need for resilient supply chains. Although crises that are global and broad in scale can happen, manufacturers also should expect more limited disruptions that may be felt in only a few locations or economic sectors at a time.

How can organizations anticipate every such challenge affecting the supply chain? In fact, no manufacturing concern can do that — but companies can better plan for such disruptions by using KYV intelligence to screen multiple suppliers at once. For example, when the Germany-based conglomerate Siemens found itself without an adequate supply of Surlyn, a patent-protected substance used to package medical products, it contracted with an AI-fueled firm that quickly searched a variety of documents, including import and export records, to identify more than 150 alternative suppliers. After using similar tools to winnow down the list of potential vendors, Siemens was able to avoid a major disruption in its own supply chain and among customers as well.

Clearly, being able to gather a wide variety of information about vendors on an ongoing basis can increase confidence in quick decision-making during a supplier crisis.

Modern KYV practice is quickly evolving beyond making sure suppliers don’t have past criminal records or a history of unreliability. Digital tools and due diligence practices are quickly evolving together to help make supply chains more resilient.

Manufacturers should know how suppliers conduct their own internal reviews and assessments regarding supply chains and ESG practices. In fact, transparency is itself a hallmark of reliable vendors.

Modern tools like Thomson Reuters CLEAR , Adverse Media with Sanctions, and Global Beneficial Ownership can aid in the rapid gathering of information about individuals and entities across a wide array of databases and records — can help corporate leaders make informed risk assessments and key decisions and go a long way toward prioritizing the kind of accountability corporations need to demonstrate to stakeholders.

Click here to learn how to protect your company from theft or fraud from risky vendors .

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Understanding what defines a contract

IMAGES

Patent Assignment: A Basic Guide
FREE 9+ Patent Assignment Samples and Templates in PDF
Free Patent Assignment Template & FAQs
How to Write a Patent: The Most Important Tips, Tricks, and Hacks
How to Patent an Idea?
FREE 9+ Patent Assignment Samples and Templates in PDF

COMMENTS

302-Recording of Assignment Documents
The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed.
Frequently Asked Questions about Patent Assignment
Fish IP Law™ frequently asked questions about patent assignment. Licenses or assignments, how much do they cost and how are they done.
Patents Assignments: Change & search ownership
Change of Owner (Assignment) and Change of Owner Name During examination of a patent application or after the patent is granted, the owner of the patent may: Transfer ownership to another entity or party through an "assignment;" or Retain ownership but change their name.
301-Ownership/Assignability of Patents and Applications
A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee (s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 . II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ...
The basics of patent assignments
The basics of patent assignments What is a patent assignment, what are the requirements to make it valid, and why would a business enter into a patent assignment agreement? Read on to find answers to these questions and more.
Understanding Patent Assignments: Definition, Usage, Benefits, and
A patent assignment is a written contract or agreement that formally transfers the rights of a patent from the original patent holder (the assignor) to another individual or entity (the assignee).
Patent Assignment
A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property.
Assignment Center
What is Assignment Center? The U.S. Patent and Trademark Office (USPTO) is streamlining the process for recording assignments and other documents relating to interests in patents and trademarks. Our new system will guide you through the steps of making a submission, provide easier editing capabilities, and allow you to see the progression and status of your submission.
Assignment Center
Assignment Center is a web portal that allows users to access and manage patent and trademark assignments online. Users can search, record, and review assignments, as well as download forms and instructions. Assignment Center also provides links to FAQs and other resources related to patent and trademark assignments.
Patent Assignments: Everything You Need to Know
A patent assignment is a legal document that transfers ownership of a patent from one person (or business) to another. This can be done for a variety of reasons. For example, maybe you decide to sell your patent. Or, you may want to transfer the ownership to a business partner or collaborator. A patent can also be assigned as collateral for a loan.
What is a Patent Assignment? (Detailed Answer)
An assignment transfers the ownership of the patent from the inventor or employee to the company for which he is working. That said, assignments can also be made by any two parties that agree to transfer ownership of a patent. So, now we know that a patent holder can transfer his patent rights to a third party, can an inventor assign a pending ...
Patent Assignment: How to Transfer Ownership of a Patent
A patent assignment is an agreement where one entity (the "assignor") transfers all or part of their right, title and interest in a patent or application to another entity (the "assignee"). In simpler terms, the assignee receives the original owner's interest and gains the exclusive rights to pursue patent protection (through filing ...
What is a patent assignment?
A patent assignment is a legal document that transfers ownership of a patent from one party to another. The invention rights vest with the person that conceives of the invention unless the inventor has assigned the invention rights to another using the patent assignment. Understanding the basics of patent assignments is crucial for anyone that ...
Best practice for recording US patent assignments
By this I mean that to avoid a recordation failure, one needs to aggressively docket the three-month period. The docket steps would be (a) receive the signed assignment from the client; (b) note the date of execution (which might not be the same as the date that we received the signed assignment from the client); (c) add three months to the ...
PDF Assignment Center Training Guide Patents
Patent Assignment Application Quick Tips The assignment form starts with the 'Assignment options' page; 'Required input boxes', are indicated with an "*". Clicking on "save and continue" button at bottom of a page, "saves" all information.
Patent Assignment Must be in Writing; But Some Transfers are not
The CAFC rejected this argument — holding that although ASSIGNMENTS must be in writing, there are other means of transfering patent ownership that need not be in writing. In particular, transfer through "operation of law" need not be in writing under the statute. On remand, the district court must determine whether, under Japanese ...
What is a Patent Assignment?
A patent assignment is a written agreement that transfers all ownership and control of the defined property (e.g., patent, patent application, patent family) from an assignor to an assignee for a fixed sum. An assignment is distinct from a license, which merely grants a licensee the right to practice the invention claimed in a patent without ...
Patent Assignment Agreement Drafting Tips
When drafting a patent assignment agreement, it's vital to clearly define the patent rights, specifying the type of rights, territorial scope, and duration. Accurately identify the assignor and assignee, verifying entity transparency and legal capacity. Establish the assignment terms, including the effective date, consideration, and conditions ...
Does a patent assignment need to be notarized?
Generally, no. Assignments are transfers of the entire interest in a patent from one entity to another. They are distinguished from licenses, which give another person a limited right to the patent. In the US, there is no requirement that an assignment be notarized. To the US Patent Office, it is irrelevant whether an assignment is notarized or ...
Procuring U.S. Patents without a Signed Assignment of Patent Rights
Final Considerations. Patent applicants can gain control over patent prosecution and assert patent rights even without execution of a signed assignment by an inventor. Before doing so, however, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.
300
323.01 (c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner's Application or Patent 323.01 (d)-Expungement of Assignment Records
View Patent Assignments
There are three main elements you will need to be able to do for research on patent assignments: The main task is: A) finding patent assignments filed with the Patent Office. In order to do that you will need to: a) look up the patent or patent application. b) view the full patent or patent application file.
Assignments in the United States Do Not Always Pass Muster in Europe
In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S ...
How AI tools can enhance manufacturing KYV and supply chains
Manufacturers that are sourcing materials need to examine compliance not just in their own organizations, but throughout the entirety of the supply chain. Fortunately, there are digital tools that can enhance this process and provide more comprehensive and up-to-date intelligence while prioritizing accountability.

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Patent Assignments: Everything You Need to Know

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I want to learn more about assigning my patent.

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What is a Patent Assignment ?

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N eed Help With Your Patent Assignments?

Michael K. Henry, Ph.D.

Geothermal Energy: An Overview of the Patent Landscape

What is a patent assignment?

What are the requirements of the patent assignment?

Can a patent assignment be invalid if the requirements are not met?

Who are the assignor and assignee?

Who owns the invention?

What is the purpose of a patent assignment?

How do you determine ownership of a patent?

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Best practice for recording US patent assignments

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Patent Assignment Must be in Writing; But Some Transfers are not Assignments

Contact an Experienced IP Lawyer

Patent Assignment Agreement Drafting Tips

Understanding Patent Assignment Basics

Defining the Assignment Scope

Identifying the Assignor and Assignee

Define the Parties

Identify Legal Entities

Clarify Assignor Role

Addressing Ownership and Title

Determining Patent Ownership

Transferring Title Clearly

Managing Confidentiality and Disclosure

Anticipating Dispute Resolution Mechanisms

Frequently Asked Questions

How Do I Determine the Patent Assignment's Effective Date?

Are Patent Assignments Publicly Recorded or Kept Confidential?

Can a Patent Assignment Be Cancelled or Terminated?

Do I Need a Lawyer to Draft a Patent Assignment Agreement?

Does a patent assignment need to be notarized?

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