what is patent assignment

29 Jan 2024

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.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

Don't miss a new article. Henry Patent Law's Patent Law News + Insights blog is designed to help people like you build smart, scalable patent strategies that protect your intellectual property as your business grows. Subscribe to receive email updates every time we publish a new article — don't miss out on key tips to help your business be more successful.

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 January 01, 2024

Updated November 5, 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.

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

• Brookfield Patent Lawyers
• Jackson Patent Lawyers
• Katy Patent Lawyers
• Kokomo Patent Lawyers
• Providence Patent Lawyers
• Reno Patent Lawyers
• Southaven Patent Lawyers
• How to Sell a Patent
• Patent Assignment Database
• Patent Companies
• Patent Pending Infringement
• Patent Rights
• Patent Attorney
• What Does a Patent Do
• How to File a Patent
• When Can You Say Patent Pending? Everything You Need to Know
• Atlanta Patent Lawyers
• Austin Patent Lawyers
• Boston Patent Lawyers
• Chicago Patent Lawyers
• Dallas Patent Lawyers
• Houston Patent Lawyers
• Los Angeles Patent Lawyers
• New York Patent Lawyers
• Philadelphia Patent Lawyers
• San Francisco Patent Lawyers
• Seattle Patent Lawyers
• Charlotte Patent Lawyers
• Denver Patent Lawyers
• Jacksonville Patent Lawyers
• Las Vegas Patent Lawyers
• Phoenix Patent Lawyers
• Portland Patent Lawyers
• San Antonio Patent Lawyers
• San Diego Patent Lawyers
• San Jose Patent Lawyers
• View All Patent Lawyers

Patent Assignment: A Basic Guide

March 12th, 2020 ‧ 5 min read.

When it comes to patents, many people outside of the industry often make the assumption that the person listed as the inventor on a patent is automatically the owner of that patent as well.

While this is certainly true in some cases, there are several instances when another person or even a company may be assigned ownership of the patent. This is called a “patent assignment,” and it is the subject of today’s article.

Table of contents

Patent assignment: a basic definition, an example of a patent assignment, an additional patent assignment in writing, patent assignments and the uspto, patent assignment database, patent assignment search, is a patent assignment a type of licensing, patent assignment: an important element of the patent ecosystem.

Curious about the patent assignment history? Check out the specific data  here !

Basically speaking, a patent assignment is a legal way for an inventor to transfer ownership of a patent to a business.

As you may recall, in the United States, only a person (or group of people) can be listed as the inventor of a patent; a business cannot be listed as the inventor. However, a business can be assigned the ownership of the patent by a person (or group of people).

In this type of agreement, the “assignor” transfers their patent rights to the “assignee.”

It might be helpful to look at an example of a patent assignment. Let’s say an employee of a company comes up with a new invention. This individual employee is the inventor of the product and will be listed on the patent application as such. However, since patents can be very valuable, most companies already have a patent assignment agreement with their employees in place.

This type of agreement would typically state that any type of intellectual property created by an employee of a company while employed by that company would become the property of the company.

Since the company in this example made sure that its employee signed a patent assignment form upon being hired, the invention that the employee came up in the company’s R&D facility will be assigned to the company. The inventor will still be listed in the patent application (and on the patent, if granted) as the inventor.

In addition to the patent assignment agreement mentioned above, it is also recommended that a specific written assignment from the inventor to the company be made whenever a patent application is filed.

If this step is taken, then there will be less trouble if an inventor leaves the company before the patent application has been completed or attempts to contest the patent down the road.

In the United States, patent assignments can be recorded at the USPTO. This can be done at the US patent office’s  Assignment Recordation Branch .

Although this can be done online (and without any fees if done electronically) using the  Electronic Patent Assignment System (EPAS) , it should be noted that all patent assignment paperwork must be submitted within three months of the patent’s assignment date.

The Patent Assignment Database from USPTO keeps all the patent assignment data records from August 1980 until now. The transfer record will be updated by USPTO, the most recent entry should be the current assignee. However, the system does not check the correctness of the data, specify the current assignee and update timely. It is best to double-check with a third-party database for accuracy.

If you need to find out who owns a patent, then you can conduct a patent assignment search. This will tell you who has been assigned a particular patent in the past and who the current assignee is now. The USPTO does offer a free  patent assignment search tool  on its website, as do other third-party intelligence platforms, such as  Patentcloud .

These platforms often feature superior patent assignment databases, with processes that ensure that the assignment data has been cleansed and corrected, meaning more accurate and comprehensive search results.

Start your patent assignment search  here with Patentcloud’s Patent Search.

Although similar in some ways, these two patent activities are actually quite different.

A licensing agreement means that the owner of the patent (or “licensor”) gives another person or company (the “licensee”) the right to use the patented technology for an agreed-upon period of time. However, the licensor remains the owner of the patent.

A patent assignment, on the other hand, involves a complete and permanent transfer (or “assignment”) of ownership of a patent from the owner (or “assignor”) to another party (the “assignee”). Put simply, patent assignment involves “ownership” while patent licensing involves “permission to use.”

Assignment data analysis can provide actionable insights for those operating in the transaction market and IP stakeholders alike, enabling them to:

• Anticipate the future strategy of a company: the acquisition of patents covering a specific technology could well be an indicator of the company’s future plans and strategies;
• Anticipate the developments of an industry: multiple companies — especially larger ones — acquiring patents in a certain technology field could also prove to be an indicator of the imminent popularity of a technology field.

The acquisition of Oculus VR by Facebook is a perfect example of this: in 2014, Facebook bought the VR company for around $2 billion. In the deal, Facebook also acquired all of the patents. Facebook’s focus on VR was a significant moment: today, VR technology is one of the most active patent-wise. This activity is not just limited to the gaming sector, the following industries have also experienced increased activity:

• Data visualization;
• The treatment of mental illnesses.

The acquisition by Facebook proved to be a clear signal that:

• Facebook was likely to invest heavily in the development of VR technologies;
• The VR industry was going to be popular in the near future.

There you have it. Though often overlooked and even misunderstood, patent assignments are actually a very important element of the patent ecosystem. With a better understanding of patent assignments, you can gain valuable insights into industry trends and even the business strategies of specific companies. You can also gain a better understanding of a company’s own R&D capabilities.

Share This Information.

Related posts.

Patent Assignment: The Importance of Current Patent Assignee Accuracy

Essential Takeaways from 2020’s Q1 US Patent Assignment Data

Patent Assignment Data: 8 Essential Takeaways from 2019 Q4 US Patent Market

An Inventor’s Guide to Understanding Prior Art

The IP world moves fast

Subscribe to receive the latest insights right in your inbox.

By submitting your contact information, you understand and agree to our GDPR , Terms of Use and Privacy Policy

Get started with Patentcloud today

Discover how Patentcloud’s solutions and tools can work for you.

InQuartik Corporation, as the administrator of this website, uses browser cookies to track your session to provide you with a better experience.

You may opt out of all cookies that are not essential to the administration or maintenance of this website.

You may refer to our Privacy and Cookie Policy for more details. Please note that, by accessing our website, you agree to our Privacy and Cookie Policy.

Privacy Overview

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

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.

Popular Posts

Patent process overview Patent process explained How much does a patent cost? Trademark process and costs Patent process and costs

Patent Consultations Patent Searches Patent Applications Utility Patents Design Patents Patent Prosecution Services Patent Defense Services Patent-Law Counsel for In-House Attorneys Trademark Overview Trademark Search Services Trademark Application Services Trademark Prosecution Services Trademark Enforcement Services Trademark Defense Services See All Services

Automotive Patents Consumer Products Patents Culinary Patents Manufacturing Patents Medical Patents Optics Patents Software & App Patents See All Industries

James Yang OC Patent Lawyer 2372 Morse Ave., Suite #178 Irvine, CA 92614 Tel: (949) 433-0900

Sitemap: Pages  |  Sitemap: Posts

Terms of Use and Privacy Policy

Ada compliance, service area.

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.

Ph: (949) 943-8300 Fx: (949) 943-8358 [email protected]

Orange County 19900 MacArthur Blvd. Suite 810 Irvine, CA 92612

Silicon Valley 99 S. Almaden Blvd. Suite 600 San Jose, CA 95113

PRIVACY POLICY

You are using an outdated browser. Please upgrade your browser to improve your experience.

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.

Subscribe To Viewpoints

• October 27, 2020

Viewpoint Topics

• Intellectual Property
• Patent Prosecution & Strategic Counseling

Professionals

Christina sperry, mark d. hammond, related practices.

• Patent Prosecution

IP Assignment and Licensing

IP rights have essentially transformed intangibles (knowledge, creativity) into valuable assets that you can put to strategic use in your business. You can do this by directly integrating the IP in the production or marketing of your products and services, thereby strengthening their competitiveness. With IP assignement and IP licensing, IP owners can also use your IP rights to create additional revenue streams by selling them out, giving others a permission to use them, and establishing joint ventures or other collaboration agreements with others who have complementary assets.

  Expert tip: Assignment, license and franchising agreements are flexible documents that can be adapted to the needs of the parties. Nevertheless, most countries establish specific requirements for these agreements, e.g. written form, registration with a national IP office or other authority, etc. For more information, consult your IP office .

IP rights assignment

You can sell your IP asset to another person or legal entity.

When all the exclusive rights to a patented invention, registered trademark, design or copyrighted work are transferred by the owner to another person or legal entity, it is said that an assignment of such rights has taken place.

Assignment is the sale of an IP asset. It means that you transfer ownership of an IP asset to another person or legal entity.

IP for Business Guides

Learn more about the commercialization of patents, trademarks, industrial designs, copyright.

Read IP for Business Guides

IP licensing

You can authorize someone else to use your IP, while maintaining your ownership, by granting a license in exchange for something of value, such as a monetary lump sum, recurrent payments (royalties), or a combination of these.

Licensing provides you with the valuable opportunity to expand into new markets, add revenue streams through royalties, develop partnerships etc.

If you own a patent, know-how, or other IP assets, but cannot or do not want to be involved in all the commercialization activities (e.g. technology development, manufacturing, market expansion, etc.) you can benefit from the licensing of your IP assets by relying on the capacity, know-how, and management expertise of your partner.

  Expert tip: Licensing can generally be sole, exclusive or non-exclusive, depending on whether the IP owner retains some rights, or on whether the IP rights can be licensed to one or multiple parties.

Technology licensing agreements

Trademark licensing agreements, copyright licensing agreements, franchising agreements, merchande licensing, joint venture agreements, find out more.

• Learn more about Technology Transfer .

This patent assignment is between  , an individual a(n) (the " Assignor ") and  , an individual a(n) (the " Assignee ").

The Assignor has full right and title to the patents and patent applications listed in Exhibit A (collectively, the " Patents ").

The Assignor wishes to transfer to the Assignee, and the Assignee wishes to purchase and receive from the Assignor, all of its interest in the Patents.

The parties therefore agree as follows:

1. ASSIGNMENT OF PATENTS.

The Assignor assigns to the Assignee, and the Assignee accepts the assignment of, all of the Assignor's interest in the following in the United States and its territories and throughout the world:

• (a) the Patents listed in Exhibit A ;
• (b) the patent claims, all rights to prepare derivative works, goodwill, and other rights to the Patents;
• (c) all registrations, applications (including any divisions, continuations, continuations-in-part, and reissues of those applications), corresponding domestic and foreign applications, letters patents, or similar legal protections issuing on the Patents, and all rights and benefits under any applicable treaty or convention;
• (d) all income, royalties, and damages payable to the Assignor with respect to the Patents, including damages and payments for past or future infringements of the Patents; and
• (e) all rights to sue for past, present, and future infringements of the Patents.

2. CONSIDERATION.

The Assignee shall pay the Assignor a flat fee of as full payment for all rights granted under this agreement. The Assignee shall complete this payment no later than .

3. RECORDATION.

In order to record this assignment with the United States Patent and Trademark Office and foreign patent offices, within hours of the effective date of this assignment, the parties shall sign the form of patent assignment agreement attached as Exhibit B . The Assignor Assignee is solely responsible for filing the assignment and paying any associated fees of the transfer.

4. NO EARLY ASSIGNMENT.

The Assignee shall not assign or otherwise encumber its interest in the Patents or any associated registrations until it has paid to the Assignor the full consideration provided for in this assignment. Any assignment or encumbrance contrary to this provision shall be void.

5. ASSISTANCE.

• (1) sign any additional papers, including any separate assignments of the Patents, necessary to record the assignment in the United States;
• (2) do all other lawful acts reasonable and necessary to record the assignment in the United States; and
• (3) sign all lawful papers necessary for Assignee to retain a patent on the Patents or on any continuing or reissue applications of those Patents.
• (b) Agency. If for any reason the Assignee is unable to obtain the assistance of the Assignor, the Assignor hereby appoints the Assignee as the Assignor's agent to act on behalf of the Assignor to take any of the steps listed in subsection (a).

6. NO LICENSE.

After the effective date of this agreement, the Assignor shall make no further use of the Patents or any patent equivalent, except as authorized by the prior written consent of the Assignee. The Assignor shall not challenge the Assignee's use or ownership, or the validity, of the Patents.

7. ASSIGNOR'S REPRESENTATIONS.

The Assignor hereby represents to the Assignee that it:

• (a) is the sole owner of all interest in the Patents;
• (b) has not transferred, exclusively licensed, or encumbered the Patents or agreed to do so;
• (c) is not aware of any violation or infringement of any third party's rights (or a claim of a violation or infringement) by the Patents;
• (d) is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment;
• (e) was not acting within the scope of employment of any third party when conceiving, creating, or otherwise performing any activity with respect to the Patents.

The Assignor shall immediately notify the Assignee in writing if any facts or circumstances arise that would make any of the representations in this assignment inaccurate. 

8. INDEMNIFICATION.

The Assignor shall indemnify the Assignee against:

• (a) any claim by a third party that the Patents or their creation, use, exploitation, assignment, importation, or sale infringes on any patent or other intellectual property;
• (b) any claim by a third party that this assignment conflicts with, violates, or breaches any contract, assignment, license, sublicense, security interest, encumbrance, or other obligation to which the Assignor is a party or of which it has knowledge;
• (c) any claim relating to any past, present, or future use, licensing, sublicensing, distribution, marketing, disclosure, or commercialization of any of the Patents by the Assignor; and
• (d) any litigation, arbitration, judgments, awards, attorneys' fees, liabilities, settlements, damages, losses, and expenses relating to or arising from (a), (b), or (c) above.
• (i) the Assignee promptly notifies the Assignor of that claim;
• (ii) the Assignor controls the defense and settlement of that claim;
• (iii) the Assignee fully cooperates with the Assignor in connection with its defense and settlement of that claim;
• (iv) the Assignee stops all creation, public use, exploitation, importation, distribution, or sales of or relating to the infringing Patents, if requested by the Assignor.
• (i) obtain the right for the Assignee to continue to use the infringing Patent;
• (ii) modify the infringing Patent to eliminate the infringement;
• (iii) provide a substitute noninfringing patent to the Assignee pursuant to this assignment; or
• (iv) refund to the Assignee the amount paid under this assignment for the infringing Patent.
• (c) No Other Obligations. The Assignor shall have no other obligations or liability if infringement occurs, and shall have no other obligation of indemnification or to defend relating to infringement. The Assignor shall not be liable for any costs or expenses incurred without its prior written authorization and shall have no obligation of indemnification or any liability if the infringement is based on (i) any modified form of the Patents not made by the Assignor, (ii) any finding or ruling after the effective date of this assignment, or (iii) the laws of any country other than the United States of America or its states.

9. GOVERNING LAW.

• (a) Choice of Law. The laws of the state of  govern this agreement (without giving effect to its conflicts of law principles).
• (b) Choice of Forum. Both parties consent to the personal jurisdiction of the state and federal courts in County, .

10. AMENDMENTS.

No amendment to this assignment will be effective unless it is in writing and signed by a party or its authorized representative.

11. ASSIGNMENT AND DELEGATION.

• (a) No Assignment. Neither party may assign any of its rights under this assignment, except with the prior written consent of the other party. All voluntary assignments of rights are limited by this subsection.
• (b) No Delegation. Neither party may delegate any performance under this assignment, except with the prior written consent of the other party.
• (c) Enforceability of an Assignment or Delegation. If a purported assignment or purported delegation is made in violation of this section, it is void.

12. COUNTERPARTS; ELECTRONIC SIGNATURES.

• (a) Counterparts. The parties may execute this assignment in any number of counterparts, each of which is an original but all of which constitute one and the same instrument.
• (b) Electronic Signatures. This assignment, agreements ancillary to this assignment, and related documents entered into in connection with this assignment are signed when a party's signature is delivered by facsimile, email, or other electronic medium. These signatures must be treated in all respects as having the same force and effect as original signatures.

13. SEVERABILITY.

If any one or more of the provisions contained in this assignment is, for any reason, held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or unenforceability will not affect any other provisions of this assignment, but this assignment will be construed as if those invalid, illegal, or unenforceable provisions had never been contained in it, unless the deletion of those provisions would result in such a material change so as to cause completion of the transactions contemplated by this assignment to be unreasonable.

14. NOTICES.

• (a) Writing; Permitted Delivery Methods. Each party giving or making any notice, request, demand, or other communication required or permitted by this assignment shall give that notice in writing and use one of the following types of delivery, each of which is a writing for purposes of this assignment: personal delivery, mail (registered or certified mail, postage prepaid, return-receipt requested), nationally recognized overnight courier (fees prepaid), facsimile, or email.
• (b) Addresses. A party shall address notices under this section to a party at the following addresses:
• If to the Assignor: 

• If to the Assignee: 
• (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.

15. WAIVER.

No waiver of a breach, failure of any condition, or any right or remedy contained in or granted by the provisions of this assignment will be effective unless it is in writing and signed by the party waiving the breach, failure, right, or remedy. No waiver of any breach, failure, right, or remedy will be deemed a waiver of any other breach, failure, right, or remedy, whether or not similar, and no waiver will constitute a continuing waiver, unless the writing so specifies.

16. ENTIRE AGREEMENT.

This assignment constitutes the final agreement of the parties. It is the complete and exclusive expression of the parties' agreement about the subject matter of this assignment. All prior and contemporaneous communications, negotiations, and agreements between the parties relating to the subject matter of this assignment are expressly merged into and superseded by this assignment. The provisions of this assignment may not be explained, supplemented, or qualified by evidence of trade usage or a prior course of dealings. Neither party was induced to enter this assignment by, and neither party is relying on, any statement, representation, warranty, or agreement of the other party except those set forth expressly in this assignment. Except as set forth expressly in this assignment, there are no conditions precedent to this assignment's effectiveness.

17. HEADINGS.

The descriptive headings of the sections and subsections of this assignment are for convenience only, and do not affect this assignment's construction or interpretation.

18. EFFECTIVENESS.

This assignment will become effective when all parties have signed it. The date this assignment is signed by the last party to sign it (as indicated by the date associated with that party's signature) will be deemed the date of this assignment.

19. NECESSARY ACTS; FURTHER ASSURANCES.

Each party shall use all reasonable efforts to take, or cause to be taken, all actions necessary or desirable to consummate and make effective the transactions this assignment contemplates or to evidence or carry out the intent and purposes of this assignment.

[SIGNATURE PAGE FOLLOWS]

Each party is signing this agreement on the date stated opposite that party's signature. 

[PAGE BREAK HERE]

EXHIBIT A PATENTS AND APPLICATIONS

FORM OF RECORDABLE PATENT APPLICATION ASSIGNMENT

For good and valuable consideration, the receipt of which is hereby acknowledged, between  , an individual a(n) (the " Assignor ") and  , an individual a(n) (the " Assignee ") all of the Assignor's interest in the Assigned Patents identified in Attachment A to this assignment, and the Assignee accepts this assignment.

Each party is signing this agreement on the date stated opposite that party's signature.

ATTACHMENT A ASSIGNED PATENTS

Free Patent Assignment Template

Simplify the process of transferring patent rights for both buyers and sellers with a patent assignment agreement. document the ownership transfer clearly and efficiently..

Complete your document with ease

How-to guides, articles, and any other content appearing on this page are for informational purposes only, do not constitute legal advice, and are no substitute for the advice of an attorney.

Patent assignment: How-to guide

A company’s ability to buy and sell property is essential for its long-term life and vitality. Although it doesn’t take up physical space, too much intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. 

Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including patents and other inventions) to support their growth must be sure that the seller does have title to the desired items. A properly drafted patent assignment can help in these circumstances.

A patent assignment is the transfer of an owner’s property rights in a given patent or patents and any patent applications. These transfers may occur independently or as part of larger asset sales or purchases. Patent assignment agreements provide both records of ownership and transfer and protect the rights of all parties.

This agreement is a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations, and you will be well on your way to establishing a clear record of title for all of your patents. 

Important points to consider while drafting patent assignments

What is a patent.

A patent is a set of exclusive rights on an invention given by the government to the inventor for a limited period. Essentially, in exchange for the inventor’s agreement to make their invention public and allow others to examine and build on it, the government provides the inventor with a short-term monopoly on their creation. In other words, only they can make, use, or sell that invention.

Are licenses and assignments different from each other?

Licenses are different from assignments. The individual who receives license rights from the patent holder isn’t gaining ownership. Rather, they’re getting assurance from the patent holder that they won’t be sued for making, using, or selling the invention. The terms of the license will vary from agreement to agreement and may address issues of royalties, production, or reversion. 

What are the different kinds of patent assignments?

A  patent assignment can take many forms. 

• It can be the transfer of an individual’s entire interest to another individual or company. 
• It can also transfer a specific part of that interest (e.g., half interest, quarter interest, etc.) or a transfer valid only in a designated country area. The exact form of the transfer is specific to the parties' agreement.

What is the role of the United States Patent and Trademark Office in patent transfer?

A patent transfer is usually accomplished through a contract, like the following written agreement form. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the  U.S. Patent and Trademark Office (USPTO) . The agreement will only be effective if this registration is made. Moreover, if the transfer isn’t recorded within three months from the date of the assignment, there can be no later purchasers. In other words, such patents are no longer sellable to a third party by the assignee if it isn’t recorded quickly and correctly.

Note that there is a fee for  recording each assignment of a patent or patent application.

What details should I add to my patent application?

Although you can adapt the document to suit your arrangement, you should always identify the patent(s) being assigned by their USPTO number and date and include the name of the inventor and the invention’s title (as stated in the patent itself). This is a requirement of federal law, and failure to follow it could invalidate your assignment.

What are the benefits of patent assignment?

The advantage of selling your invention or patent outright (and not simply licensing or attempting to develop and market it yourself) is that you’re guaranteed payment at the price you and the purchaser have negotiated. 

On the other hand, that one-time payment is all that you will ever receive for your property. You will no longer have the right to control anyone else’s use of your creation. 

By using it yourself or offering a temporary license, you retain the potential for future income. However, such income isn’t certain, and your opportunities are paralleled by risk. 

Before selling all of your rights in a patent or patent application, ensure this is the best (and most lucrative) approach for you and your company.

Is it necessary to do due diligence before buying a patent?

Provide valuable consideration to due diligence, and don’t agree without completing it. If you purchase a patent,  conduct searches with the patent office on the patents issued and online directories to ensure the seller has complete and unique rights in the offered property. Look for these:

• Has an application already been filed by another person or company? 
• What are the chances that this is a patentable item? 

Although your findings won’t be guaranteed, you may be protected as an “innocent purchaser” if disputes arise. 

You might also find critical information about the value of the patent. Consider hiring a patent attorney to help in your investigation. Comparing patents and applications often requires a specialized and technical understanding to know how useful and unique each one is.

What should I consider while selling a patent?

If you sell an invention or patent, ensure you own it. Although this may seem obvious, intellectual property ownership sometimes must be clarified. This may be the case if, for example, the invention was created as part of your employment or if it was sold or otherwise transferred to somebody else. A thorough search of the USPTO website for the publication number should be conducted before you attempt to sell your property.

Is reviewing and signing the patent necessary? 

Review the assignment carefully to ensure all relevant deal points are included. Don't assume certain terms are agreed upon if not stated in the document.

Once the document is ready, sign two copies of the assignment, one for you and one for the other party.

Get the assignment notarized by the notary public to reduce the challenges to the validity of a party’s signature or the transfer itself.

If you’re dealing with a  complex agreement for a patent assignment , contact an attorney to help draft an assignment that meets your needs. 

Key components to include in patent assignments 

The following provisions will help you understand the terms of your assignment. Please review the entire document before starting your step-by-step process. 

Introduction of parties

This section identifies the document as a patent assignment. Add the assignment effective date, parties involved, and what type of organization(s) they are. The “assignor” is the party giving their ownership interest, and the “assignee” is the party receiving it.

The “whereas” clauses, or recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the patent. Remember that the assignor can transfer all or part of its interest in the patents. 

Assignment of patents

This section constitutes the assignment and acceptance of patents and inventions. Be as complete and clear as possible in your description of the property being transferred.

Consideration

In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the assignee gives money (sometimes called “consideration”) to receive the assignor’s property. Enter the amount to be paid, and indicate how long the assignee has to make that payment after the agreement is signed.

Authorization to a director

This section is the assignor’s authorization to issue patents in the assignee’s name. In other words, this tells the head of the patent and trademark office that the transfer is valid and that ownership is changing hands by the assignment.

If the assignment is being recorded after the USPTO has issued a patent number, add the patent application number here.

Assignor’s representations and warranties

In this section, the assignor is agreeing to the following terms:

• They’re the sole owner of the inventions and the patents. If there are other owners who aren’t transferring their interests, this means that the only part being transferred is the assignor’s part.
• They haven’t sold or transferred the inventions and the patents to any third party.
• They have the authority to enter the agreement.
• They don’t believe that the inventions and the patents have been taken from any third party without authorization (e.g., a knowing copy of another company’s invention).
• They don’t know if any permissions must be obtained for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
• The patents weren’t created while a third party employed the creator. In many cases, if a company employs an individual and comes up with a product, the company will own that product. This section offers assurance to the assignee that there are no companies that will make that claim about the patents being sold.

If you and the other party want to include additional representations and warranties, you can do so here. 

Assignee’s representations and warranties

In this section, the assignee is agreeing to the following terms:

• They have the authority to enter into the agreement
• They have enough funds to pay for the assignment 

No early assignment

This section prevents the assignee from re-transferring the inventions or patents or using any of them as collateral for loans until it has completely paid the money due under the agreement. 

Documentation

This clause is the assignor’s promise to help with any paperwork needed to complete an assignment, such as filing information about the assignment with the USPTO, transferring document titles, transferring paperwork for filing to foreign countries, etc. 

No further use of inventions or patents

This section indicates that after the agreement’s filing date, the assignor will stop using all the inventions and patents being transferred and won’t challenge the assignee’s use of those inventions or patents.

Indemnification

This clause describes each party’s future obligations if the patent or any application is found to infringe on a third party’s rights. Either the assignor agrees to take all responsibility for infringement, promising to pay all expenses and costs relating to the claim, or the assignor makes its responsibilities conditional, significantly limiting its obligations if a claim is brought. 

Successors and assigns

This section states that the parties’ rights and obligations will be passed on to successor organizations (if any) or organizations to which rights and obligations have been permissibly assigned.

No implied waiver

This clause explains that even if one party allows the other to ignore or break an obligation under the agreement, it doesn’t mean that the party waives any future rights to require the other to fulfill those (or any other) obligations.

Provide the assignor and assignee’s address where all the official or legal correspondence should be delivered.

Governing law

This provision lets the parties choose the state laws used to interpret the document. 

Counterparts; electronic signatures

This section explains that if the parties sign the agreement in different locations, physically or electronically, all the separate pieces will be considered part of the same agreement. 

Severability

This clause protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it won’t undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.

Entire agreement

This section indicates the parties’ agreement that the document they’re signing is “the agreement” about transferring the issued patent. 

This clarifies that the headings at the beginning of each section are meant to organize the document and shouldn’t be considered operational parts of the note .  

Frequently asked questions

What is a patent assignment .

If you want to buy patents, the first step is to ensure the seller (original owner) owns the patent rights. The second step is the transfer of the patent owner's rights to the buyer. Patent assignments are agreements that cover both steps, helping the buyer and the seller with ownership records and quickly enabling transfer.

What are the requirements for patent assignment?

Here's the information you'll require to complete a patent assignment:

• Who the assignor is : Have their name and contact information ready
• Who the assignee is : Have their information available
• Invention info :  Know the inventor's name, invention's registration number, and filing date

Related templates

Assignment of Agreement

Transfer work responsibilities efficiently with an assignment of agreement. Facilitate a smooth transition from one party to another.

Copyright Assignment

Protect your intellectual property with a copyright assignment form. Securely transfer your copyright to another party, clearly defining ownership terms while preserving your rights effectively.

Intellectual Property Assignment Agreement

Safeguard the sale or purchase of assets with an intellectual property assignment agreement. Transfer the ownership of patents, trademarks, software, and other critical assets easily.

Patent Application Assignment

Transfer the ownership rights or interests in a patent application. A patent application agreement defines the terms of transfer, promotes collaboration, and mitigates risks.

Trademark Assignment

Simplify the buying and selling of trademarks with a trademark assignment agreement. Transfer intellectual property rights and ensure a fair and smooth transaction.

Trademark License Agreement

Ensure fair use of intellectual property with a trademark license agreement. Outline the terms of usage and compensation.

What Is a Patent Rights Clause?

A patent rights clause is a provision in a legal agreement that definitively outlines the ownership and control of a patented invention, process, or technology, establishing the rights and responsibilities of inventors, assignees, and other stakeholders. This clause safeguards that intellectual property rights are properly allocated, minimizing potential disputes. By defining patent ownership and control, it affects the distribution of rights, responsibilities, and benefits associated with the patented invention, influencing its valuation and commercial potential. Understanding the intricacies of patent rights clauses is vital; explore the nuances of patent ownership, licensing, and transfer agreements to release the full potential of intellectual property.

Table of Contents

Understanding Patent Rights Assignment

The assignment of patent rights, a critical component of intellectual property law, enables the owner of a patent to transfer their rights to another entity, thereby relinquishing control over the patented invention or process. This transfer of rights can be a deliberate strategic decision, allowing companies to refocus their patent strategy and optimize their intellectual property portfolio. By assigning patent rights, companies can redefine their intellectual boundaries, creating new opportunities for collaboration, licensing, or even divestment. A well-planned patent strategy can tap significant value, enabling companies to leverage their intellectual property to drive innovation, revenue growth, and competitive advantage. Effective patent rights assignment requires a deep understanding of the intellectual property landscape, as well as the legal and commercial implications of transferring patent ownership. By carefully traversing these complexities, companies can access the full potential of their patented inventions and processes, while maintaining a strong defensive position against competitors.

Defining Patent Ownership and Control

Defining patent ownership and control is vital in maintaining that intellectual property rights are properly allocated and exercised. A clear understanding of patent ownership structure is fundamental, as it determines who has the authority to make decisions regarding the invention, including the control of inventions and the rights of inventors. By establishing a thorough framework for patent ownership and control, inventors, assignees, and other stakeholders can protect their interests and avoid potential disputes.

Patent Ownership Structure

In the context of patent law, a well-defined patent ownership structure is crucial, as it determines the legal rights and responsibilities associated with a patented invention. A clear ownership structure guarantees that intellectual property rights are properly allocated, minimizing potential disputes and allowing the patent holder to fully exploit the patented invention.

A well-structured patent ownership framework is vital for intellectual asset management, as it directly impacts patent valuation. The ownership structure influences the distribution of rights, responsibilities, and benefits associated with the patented invention, including the right to manufacture, sell, and license the invention. This, in turn, affects the patent's valuation, as a clear ownership structure enhances the patent's commercial potential.

Moreover, a well-defined patent ownership structure facilitates effective management of intellectual assets, enabling the patented invention to be leveraged to its full potential. By establishing a clear ownership framework, patent holders can optimize the value of their intellectual assets, increase patent valuation, and minimize potential legal disputes.

Control of Inventions

Establishing clear patent ownership and control is vital to securing that inventors, assignees, and licensees understand their rights and obligations related to the patented invention. This involves defining the boundaries of patent ownership, including the rights to make, use, and sell the invention. Effective control of inventions is critical in maintaining invention secrecy, which is fundamental for innovation dynamics. Uncontrolled inventions can lead to the loss of intellectual property rights, compromising the competitive advantage of innovators.

Rights of Inventors

Within the context of patent law, the rights of inventors are a vital aspect of patent ownership and control, as they dictate the terms under which an inventor can exploit and profit from their creation. These rights comprise the moral entitlement of inventors to be recognized as the creators of their inventions, as well as their creative freedom to develop and refine their ideas without undue restriction.

In essence, the rights of inventors define the scope of their authority over their inventions, including the right to manufacture, use, and sell their creations. This authority is essential, as it enables inventors to capitalize on their innovations and reap the rewards of their intellectual labor. Additionally, the rights of inventors also influence the extent to which they can license or assign their patent rights to others, thereby controlling the dissemination and development of their inventions. By safeguarding the rights of inventors, patent law aims to foster an environment conducive to innovation, where creatives can thrive and bring novel ideas to fruition.

Types of Patent Licenses Granted

Patent licenses, which grant permission to exploit a patented invention, can be categorized into various types, each serving distinct purposes and offering different levels of access to the patented technology.

Two primary types of patent licenses are exclusive and non-exclusive licenses. Exclusive licenses grant the licensee the sole right to exploit the patented invention, excluding even the patent holder. This type of license is often used when a patent holder wants to transfer the majority of the rights to the licensee. In return, the patent holder may receive royalties or other forms of compensation.

Non-exclusive licenses, on the other hand, allow the patent holder to license the patented invention to multiple parties. This type of license is often used when the patent holder wants to generate revenue from licensing the patented technology to multiple parties. Non-exclusive licenses can be further divided into sole licenses, which grant the licensee exclusive rights, and field-of-use licenses, which limit the licensee's rights to a specific field or industry.

Patent Rights Transfer Agreements

In a patent rights transfer agreement, the patent owner relinquishes ownership and control of the patented invention, technology, or process to a new entity, often in exchange for monetary compensation or other forms of consideration. This type of agreement is commonly used when a company wants to sell or assign its patent rights to another party. The agreement typically outlines the terms of the transfer, including the scope of the patent rights being transferred, the consideration being offered, and any warranties or representations made by the parties involved.

In international transactions, patent rights transfer agreements may involve complex considerations, such as traversing differing patent laws and regulations across jurisdictions. Digital signatures may be used to authenticate and verify the agreement, validating the integrity of the transfer process. It is vital to carefully draft and negotiate the terms of the agreement to protect the parties' interests and make the transfer legally binding. A well-crafted patent rights transfer agreement can facilitate the transfer of valuable intellectual property rights, providing a strategic advantage in the marketplace.

Obligations and Responsibilities

During the transfer of patent rights, the parties involved assume specific obligations and responsibilities that are vital to the agreement's success. These obligations comprise contractual duties that facilitate the transfer being smooth, efficient, and legally binding. The assignor, typically the patent owner, has the responsibility of disclosing all relevant information about the patent, including any existing licenses or agreements. The assignee, on the other hand, is obligated to fulfill the contractual duties outlined in the agreement, such as payment of royalties or other compensation.

These obligations and responsibilities are fundamental to maintaining the integrity of the patent rights transfer agreement. By fulfilling their respective duties, the parties involved can guarantee a successful transfer of patent rights.

Dispute Resolution and Enforcement

In the event of disputes arising from the Patent Rights Clause, effective dispute resolution mechanisms are essential to mitigate potential losses and protect intellectual property interests. This section examines the available options for resolving disputes, including arbitration and mediation, as well as the legal remedies available in the event of a breach. The discussion will also cover the court enforcement proceedings that may be necessary to enforce patent rights and protect the vital interests of the parties involved.

Arbitration and Mediation Options

Disputes arising from patent rights can be effectively resolved through arbitration and mediation options, which provide an alternative to litigation and facilitate expedient enforcement of patent rights. These alternative dispute resolution mechanisms offer a more efficient and cost-effective means of resolving patent-related disputes. Neutral arbitrators, unbiased and impartial, can facilitate the resolution process, guaranteeing a fair and balanced outcome. Mediation strategies, on the other hand, focus on facilitating communication between parties to reach a mutually acceptable agreement. By employing these mechanisms, parties can avoid the complexities and uncertainties of litigation, and instead, resolve disputes in a more controlled and predictable environment. Effective arbitration and mediation options can substantially reduce the time and costs associated with patent disputes, allowing parties to concentrate on their core business activities. By incorporating these mechanisms into their patent rights clause, parties can guarantee prompt and efficient resolution of disputes, ultimately protecting their valuable intellectual property rights.

Legal Remedies for Breach

When a breach of patent rights occurs, effective legal remedies must be employed to resolve the dispute and enforce the protected intellectual property rights. In such cases, the patent holder may seek legal remedies to prevent further infringement and recover damages.

To achieve this, the patent holder may seek a court order to Cease operations , requiring the infringer to stop using the patented invention. Additionally, the patent holder may be entitled to recover Legal fees incurred during the dispute resolution process.

The following table outlines the legal remedies available to patent holders in the event of a breach:

Court Enforcement Proceedings

Court enforcement proceedings play a vital part in resolving patent disputes, as they provide a legal framework for patent holders to enforce their rights and protect their protected intellectual property. These proceedings ensure that infringers are held accountable for their actions, and patent holders can recover damages or obtain injunctions to prevent further infringement.

Effective court enforcement proceedings require a deep understanding of litigation strategies, judicial efficiency, and the nuances of patent law. To navigate these complex proceedings successfully, patent holders should consider the following key factors:

• Judicial Efficiency : Streamline the litigation process by leveraging technology and efficient case management practices to reduce costs and minimize delays.
• Litigation Strategies : Develop a tailored litigation strategy that aligns with the patent holder's goals and objectives, taking into account the strengths and weaknesses of the case.
• Evidence Collection : Gather robust evidence to support the patent holder's claims, including documentation of infringement, damages, and other relevant facts.
• Expert Testimony : Engage qualified experts to provide objective, technical testimony that helps to establish the validity of the patent and the extent of the infringement.

Best Practices for Drafting Clauses

Effective drafting of patent rights clauses necessitates a meticulous consideration of the contractual language to guarantee that the parties' intentions are accurately reflected and potential ambiguities are mitigated. Clear language is essential to avoid misinterpretation and ensure that the agreement is enforceable. To achieve this, it is crucial to use clause templates that provide a structured approach to drafting.

Frequently Asked Questions

Can patent rights be sold or traded like commodities?.

Patent rights can be sold or traded like commodities, leveraging market dynamics to create financial leverage, as they constitute intangible assets with inherent value, facilitating their exchange and monetization in the intellectual property market.

Do Patent Rights Clauses Vary by Industry or Jurisdiction?

Patent rights clauses exhibit jurisdictional differences and industry-specific nuances, with varying requirements and protections across regions and sectors, necessitating tailored approaches to facilitate effective intellectual property management.

Can Multiple Parties Hold Patent Rights to the Same Invention?

Yes, multiple parties can hold patent rights to the same invention through joint ownership, enabling collaborative development and shared commercialization of intellectual property, provided that each co-owner's rights are clearly defined and contractual agreements are established.

Are Patent Rights Clauses Only Used for Commercial Purposes?

Patent rights clauses are not exclusively used for commercial purposes, as they also facilitate research applications and protect academic freedom, allowing institutions to engage in collaborative innovation without compromising intellectual property interests.

Can Patent Rights Clauses Be Used for Open-Source Inventions?

In open-source inventions, patent rights clauses can facilitate open collaboration by allowing community licensing, permitting that innovators can freely build upon and share intellectual property, promoting collective progress and community-driven innovation.

• Search Search Please fill out this field.

What Is a Patent?

Understanding patents, types of patents, how to apply for a patent, patent statistics, examples of patents.

• Patent vs. Trademark vs. Copyright

Patent FAQs

The bottom line.

• Business Essentials

What Is a Patent in Simple Terms? With Examples

Investopedia / Xiaojie Liu

A patent is the granting of a property right by a sovereign authority to an inventor. This grant provides the inventor exclusive rights to the patented process, design, or invention for a designated period in exchange for a comprehensive disclosure of the invention. They are a form of incorporeal right .

Government agencies typically handle and approve applications for patents. In the United States, the U.S. Patent and Trademark Office (USPTO), which is part of the Department of Commerce, handles applications and grants approvals.

Key Takeaways

• A patent is the granting of a property right by a sovereign authority to an inventor. 
• A patent provides the inventor exclusive rights to the patented process, design, or invention for a certain period in exchange for a complete disclosure of the invention.
• In June of 2018, the U.S. Patent and Trademark Office issued its 10 millionth patent.
• Utility patents are the most common patent issued in the United States, accounting for 90% of all issued patents.
• Utility and plant patents are granted for 20 years, whereas design patents are granted for either 14 or 15 years, depending on when filed.

Most patents are valid for 20 years in the U.S. from the date the application was filed with the USPTO, although there are circumstances where exceptions are made to extend a patent's term. U.S. patents are only valid in the United States and U.S. Territories. If seeking protection outside of the United States, it is important to research the intellectual property rights of other nations and apply for protection with their governing authorities.

According to the United States Code, a patent can be granted to:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof....

There are three types of patents available in the United States: utility patents, design patents, and plant patents. Each has its own specifications and durations. A patent can also be pending , indicating that the inventor has begun applying for a patent.

Utility Patents

Utility patents , or patents for invention, issue legal protection to people who invent a new and useful process, an article of manufacture, a machine, or a composition of matter. Utility patents are the most common type of patent, with more than 90% of patents issued by the U.S. government belonging to this category. A utility patent lasts for 20 years from the date of filing as long as maintenance fees are paid. Maintenance fees are surcharges applied to utility patent applications filed after Dec. 12, 1980.

Design Patents

Design patents are patents issued for original, new, and ornamental designs for manufactured products. Design patents protect the design or look of something. They require the invention to which the design belongs to be original. Design patents last for 15 years for applications filed on or after May 13, 2015. For applications filed before May 13, 2015, patents last for 14 years from the date of the filing. Maintenance fees do not apply to design patents.

Plant Patents

Plant patents go to anyone who produces, discovers, and invents a new kind of plant capable of reproduction. These patents are granted for 20 years from the date of filing and no maintenance fees apply.

Patents provide an incentive for companies or individuals to continue developing innovative products or services without the fear of infringement. For example, large pharmaceutical companies can spend billions of dollars on research and development. Without patents, their drugs and medicines could be duplicated and sold by companies that didn't research or invest the needed capital for R&D.

In other words, patents protect the intellectual property of companies to help their profitability. However, patents also serve as bragging rights for companies demonstrating their innovativeness.

Before making a formal application, an applicant should research the Patent and Trademark Office's database to see if another person or institution has claimed a patent for a similar invention. The invention must be different from or an improvement upon a previous design to be considered for a patent. Applicants need to take care to maintain accurate records of the design process and the steps taken to create the invention. Enforcing the patent is up to the person or entity that applied for the patent.

To apply for a patent in the United States, the applicant submits specific documents and pays associated fees. Written documentation includes drawings, descriptions, and claims of the item to be patented. A formal oath or declaration confirming the authenticity of the invention or improvement of an existing invention must be signed and submitted by the inventor. After fee payment, the application is reviewed and either approved or denied.

Patents protect the intellectual property of companies and help ensure their profitability, but patents also serve as marketing for a company's innovation.

The USPTO receives more than 500,000 patent applications per year with just over 300,000 of them granted. The agency had over 14,000 employees in 2023, of whom approximately 60% of them were patent examiners while the remaining worked in the legal and technical areas.

In June of 2018, the USPTO issued its 10 millionth patent. Many patents issued go to companies in the technology industry where Apple was granted 2,285 in 2022. Microsoft and Google were also granted patents. However, IBM typically receives more than any company in the U.S.—IBM was granted over 8,000 patents in 2021 alone.

One of the most notable patents was for the personal computer, filed in 1980 by Steve Jobs and three other employees of Apple Inc.

King C. Gillette patented the razor in 1904. It was dubbed a "safety razor." Garrett Morgan was granted a patent for the traffic light in 1923. The patent for the television was issued in 1930 to Philo Taylor Farnsworth for the first "television system."

At age 21, Farnsworth had created the first electric television image and went on to invent an early model of the electronic microscope.

Patents vs. Trademarks vs. Copyrights

Patents are legal rights issued to inventors to protect their inventions for a certain time, usually 20 years. They exclude others from reproducing, using, or profiting from it without the expressed permission of the patent owner. The granting authority issues a patent in exchange for permission to publish details about the invention, such as how it's made and what it's used for.

Trademarks are legal protections on words, phrases, designs, or marks that identify a specific product or service. Trademarks are intellectual property that contribute to the image and reputation of the product or service to which it belongs, and to the company to which it belongs. Beyond symbolism, a trademark can be incredibly valuable to a company, prompting some companies to include them in their valuation. Trademarks are protected forever, as long as it's in use and the holder can defend it. Examples of trademarks include the golden arch for McDonald's, the Nike swoosh, and Apple's apple.

Copyrights are legal protections on creative works of the mind, or according to the United States Patent and Trademark Office "original works of authorship." They include visual art, literary works, other writings, choreography, and software. Copyrights prevent others from reproducing the work without the express permission of the copyright owner. Like other intellectual property, copyrights are granted for a specific time, allowing the holder to benefit from its creation. Copyrights are granted for the maximum period of 70 years from the death of the author for works created on or after Jan. 1, 1978. Exceptions apply to works for hire and anonymous works.

Copyrights for works for hire or anonymous works are granted for 95 years from their publication or 120 years from creation, which occurs first.

What Does Patent Mean?

A patent is a legal right to an invention given to a person or entity without interference from others who wish to replicate, use, or sell it. Patents are granted by governing authorities and have a time limit, usually 20 years.

What Are Examples of Patents?

Examples of historic patented inventions include common products that we use daily, including the telephone, dishwasher, and lightbulb. Patents protected until 2033 include Boeing's Water Harvesting system, Disney's method for reproducing human actions with robots, and Google's medical response drone.

What Are the 3 Types of Patents?

The three types of patents are utility patents, design patents, and plant patents. Utility patents are issued for inventions that are novel and useful. Design patents protect the design or image of a product. Plant patents are issued to applicants for plants that can reproduce.

How Much Is a Patent?

Patent costs vary according to the type of patent applied for and are based on several other factors, such as the type of applicant, provisional or nonprovisional status, and associated fees—search fees, examination fees, post-allowance fees, the cost of a patent agent or attorney, and more. If using the services of an attorney , you can expect costs to range from approximately $5,000 to more than $45,000.

How Long Does a Patent Last?

Utility and plant patents last for 20 years from the date of filing, while design patents last for 15 years if filed on or after May 13, 2015, or 14 years if filed before May 13, 2015.

Patents are legal rights granted to inventors for their creations. Government divisions, such as the United States Patent and Trademark Office, issue patents and other intellectual property rights to inventors, authors, and other creators. Patent rights give exclusive rights to use, replicate, or sell the protected invention without interference from others who wish to do the same. In exchange, the issuing authority is granted the right to publish the details of the invention.

Patents are granted for a limited time, such as 20 years from the date of filing for plant and utility patents and 14 or 15 years for design patents. Patents issued in the United States only offer protection within the U.S. To extend protection in other nations, the applicant must apply with the governing authority of that nation.

United States Code. “ 35 USC 101: Inventions Patentable .”

United States Patent and Trademark Office. “ U.S. Patent Statistics Chart Calendar Years 1963 - 2020 .”

United States Patent and Trademark Office. “ Patent Essentials .”

United States Patent and Trademark Office. " Maintain Your Patent ."

United States Patent and Trademark Office. “ Applying for Patents .”

United States Patent and Trademark Office. " Types of Patents ."

U.S. Department of Commerce. “ U.S. Patent and Trademark Office Fiscal Year 2023: The President’s Budget and Congressional Justification .” Pages 3, 10.

United States Patent and Trademark Office. “ United States Issues Patent Number 10,000,000 .”

Statista. “ Companies With the Most U.S. Patents Granted to Them in 2021 and 2022 .”

Google Patents. “ Personal Computer .”

Google Patents. “ Razor ."

United States Patent and Trademark Office. “ Of Courage and Caution .”

Google Patents. “ Television System .”

National Inventors Hall of Fame. “ Philo Taylor Farnsworth .”

United States Patent and Trademark Office. “ What Is a Trademark? ”

United States Patent and Trademark Office. " Copyright Basics ."

Google Patents. “ Water Harvesting System .”

Google Patents. “ Robot Action Based on Human Demonstration .”

Google Patents. “ Multi-Part Navigation Process by an Unmanned Aerial Vehicle for Navigating to a Medical Situatiion .”

Patent Trademark Blog. " How Much Does a Patent Cost? It Really Depends ."

United States Patent and Trademark Office. " 2701 Patent Term [R-10.2019] ."

• Terms of Service
• Editorial Policy
• Privacy Policy

Try our Advanced Search for more refined results

The Practice of Law

• Law360 Pulse

Business of Law

Law360 authority, deep news & analysis, tax authority, employment authority, insurance authority, real estate authority, bankruptcy authority, healthcare authority.

• Law360 Employment Authority
• Law360 Tax Authority
• Law360 Insurance Authority
• Law360 Real Estate Authority
• Law360 Healthcare Authority
• Law360 Bankruptcy Authority

• Law360 In-Depth
• Law360 Podcasts
• Regional Powerhouses
• Law360's MVPs
• Women in Law Report
• Diversity Snapshot
• Practice Groups of the Year
• Rising Stars
• Titans of the Plaintiffs Bar
• Adv. Search & Platform Tools
• About all sections
• Browse all sections
• Class Action
• Competition
• Expert Analysis
• Intellectual Property
• Product Liability
• Track attorneys
• Track judges
• Join the Law360 team
• Search legal jobs
• Learn more about Law360
• Read testimonials
• Contact Law360
• Sign up for our newsletters
• Law360 Company
• About Law360 Authority
• Resource Library

USPTO Updates PTAB Review, Assignment Procedures

Law360 is on it, so you are, too..

A Law360 subscription puts you at the center of fast-moving legal issues, trends and developments so you can act with speed and confidence. Over 200 articles are published daily across more than 60 topics, industries, practice areas and jurisdictions.

A Law360 subscription includes features such as

• Daily newsletters
• Expert analysis
• Advanced search
• Judge information
• Real-time alerts
• 450K+ searchable archived articles

Experience Law360 today with a free 7-day trial.

Already a subscriber? Click here to login

Attached Documents

• Standard Operating Procedure - Draft Review
• Standard Operating Procedure - Assignments

Related Sections

• Public Policy

Government Agencies

• U.S. Patent and Trademark Office
• I forgot my password
• I took a free trial but didn't get a verification email
• How do I sign up for a newsletter?

Already have access? Click here to login

Get instant access to the one-stop news source for business lawyers, sign up now for free access to this content.

Email (NOTE: Free email domains not supported)

PLEASE NOTE: A verification email will be sent to your address before you can access your trial.

Password (at least 8 characters required)

Confirm Password

Show all interests

Law360 may contact you in your professional capacity with information about our other products, services and events that we believe may be of interest. You’ll be able to update your communication preferences via the unsubscribe link provided within our communications. We take your privacy seriously. Please see our Privacy Policy .

Already have access?

• Password: Forgot your password?
• Remember login

Sign up for our Intellectual Property newsletter

You must correct or enter the following before you can sign up:.

Law360 takes your privacy seriously. Please see our Privacy Policy .

• About IPWatchdog
• IPWatchdog Team
• Article Submission
• Contributors

USPTO Strikes Expanded Paneling Option from New PTAB Operating Procedure

“The previous version of SOP 1 contained language that permitted PTAB members, the Patent Business Unit, applicants, or a patent owner or petitioner to suggest the need for an expanded panel of more than three judges, though it said they were ‘not favored and ordinarily will not be used.'”

According to the USPTO’s announcement, the revision “aligns with recently updated Paneling Guidance , Standard Operating Procedure 4 , and Director Review procedures .” Just yesterday the Office issued a final rule on pre-issuance circulation and internal review of PTAB decisions.

As part of that final rule, SOP 4 was updated to delegate the Director’s power to designate and re-designate PTAB panels to the Chief Administrative Patent Judge and also to “prohibit the Director from directing or otherwise influencing the paneling or repaneling of any proceeding prior to issuance of the panel decision.”

The previous version of SOP 1 contained language that permitted PTAB members, the Patent Business Unit, applicants, or a patent owner or petitioner to suggest the need for an expanded panel of more than three judges, though it said they were “not favored and ordinarily will not be used.”

Revision 16, however, has struck that language completely.

The process for panel expansion caused much controversy over the years, and in one instance the USPTO admitted during oral arguments at the United States Court of Appeals for the Federal Circuit that “the selection of Judges for expanded panels is done with the express intent to ensure the ruling desired by the Director.”

In September 2023, the Office announced new guidance on empaneling procedures for the PTAB and Trademark Trial and Appeal Board (TTAB) that said both PTAB and TTAB management will “avoid empaneling cases to judges who hold stock or bonds (publicly traded or privately held) in any of the disclosed parties or real parties in interest, regardless of the dollar value .”

The guidance did not require PTAB and TTAB judges to divest any financial interests like stocks or bonds, and it did not prohibit them from holding any financial interests. It simply asked all judges to “voluntarily inform their management of any companies in which they know that the judge, the judge’s spouse, or their minor children own stocks or bonds, regardless of the dollar value .” Even if they choose not to provide this information to management up front, however, they must “promptly notify” the paneling staff once they receive notice of empaneling on a particular case whether repaneling is necessary in light of the guidance.

This guidance has now been incorporated by reference into the revised SOP 4.

Finally, in In July 2021, the USPTO announced that it would be implementing an interim rule in response to the U.S. Supreme Court’s late June 2021 decision in Arthrex v. Smith & Nephew .  And in July 2022, the Office published an official Request for Comments (RFC) on the interim Director Review process, as well as the Precedential Opinion Panel (POP) process and the interim process for PTAB decision circulation and internal PTAB review. USPTO Director Kathi Vidal released updated interim guidance on Director Review and PTAB decision circulation/internal review soon after taking office in April 2022 and accepted preliminary feedback via a dedicated email address, but said the comments received in response to the RFC would officially inform upcoming notice-and-comment rulemaking to formalize these processes, as well as any modifications to the interim processes prior to formalization. In July 2023, the Office officially implemented a revised interim Director review process that included the creation of two new review panels replacing the previous Precedential Opinion Panel (POP) process of Director review. In April 2024, the Office announced a Notice of Proposed Rulemaking (NPRM) aimed at formalizing the interim process for Director Review. Comments close on that NPRM on June 17, 2024.

The SOP 1 version 16 indicates that the Director may delegate Director Review to a panel of the Board, known as the Delegated Rehearing Panel (DRP). Once the Director issues an order delegating review, “the designee(s) who assigns panels will assign three judges to serve on a DRP from the list of judges eligible to serve on a DRP (convened based on DRP-specific procedures provided elsewhere in public USPTO guidance).”

USPTO Director Kathi Vidal said in today’s announcement that “updating our procedures on assigning judges to PTAB panels improves, and increases the transparency of, our operations.”

Image Source: Deposit Photos Image ID: 56451093 Copyright:FR_Design

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

One comment so far. Add my comment.

Yet more musical chairs rearrangements on the Death Squad ship.

Akin to lightly tapping a water-filled balloon. Sure; the water moves around a bit . . . yet the balloon remains.

The only way to put a stop — to really put a stop — to this innovation-killing vessel is to sink the d.a.m.n. thing.

The only way.

Add Comment

Your email address will not be published. Required fields are marked *

Notify me of followup comments via e-mail. You can also subscribe without commenting.

Varsity Sponsors

Latest IPW Posts

Ai and the word that’s been missing from the patent eligibility case law, amneal, aided by ftc, succeeds in getting teva patents removed from orange book, jones robb pllc is seeking an attorney/patent agent, uspto finalizes changes to ptab pre-issuance circulation rules, ipwatchdog events, patent portfolio management masters™ 2024, webinar – sponsored by lexisnexis, women’s ip forum, ip solutions, services & platforms expo, webinar – sponsored by anaqua, industry events, decentralization = innovation: the case against reinstating government management of federally-funded tech, litfincon – the premier litigation finance conference, from ipwatchdog.

More from IPWatchdog

June 12, 2024

June 11, 2024

Our website uses cookies to provide you with a better experience. Read our privacy policy for more information. Accept and Close

An official website of the United States government Here’s how you know keyboard_arrow_down

An official website of the United States government

The .gov means it’s official. Federal government websites often end in .gov or .mil. Before sharing sensitive information, make sure you’re on a federal government site.

The site is secure. The https:// ensures that you are connecting to the official website and that any information you provide is encrypted and transmitted securely.

Jump to main content

Patent Basics

If you’re new to the process of protecting your rights to your invention by applying for a patent, you’re in the right place. This page will direct you to everything you need to know about U.S. and international patents. If what you see doesn’t answer your questions, we’ll show you where to go to dig deeper.

Patent essentials

Here you’ll find what you need to know if you know nothing about patents. We’ll take you from “What is a patent?” to assistance with the application process.

• Basic questions about patents
• Foreign patents and treaties
• Inventor assistance
• Functions of the agency

Applying for patents

This section dives into more detail about how you can apply for a patent. It covers legal representation, deadlines, fees, and other essential parts of the process.

• Search for patents
• Attorneys and agents
• Types of patents
• Types of applications
• Examination process
• Ready to file

Managing your patent

Here we take you from being successfully granted a patent to maintaining your rights. You’ll learn how to maintain, enforce, transfer, and protect your rights.

• Nature of rights
• Patent marking
• Term extensions
• Maintenance fees
• Corrections
• Assignments and licenses
• Infringement

Helpful resources for new customers

There are no recent news items for this topic.

Additional information about this page