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USPTO modernizes patent, trademark assignment request process

Beginning August 1, the U.S. Patent and Trademark Office (USPTO) is streamlining the process for following new assignments, obtaining information on pending assignments, questions on assignments, liens on patents, filing assignments, recordation forms, and trademark assignments.

Going forward, users will submit requests virtually using the Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS) storefronts. Paper and fax assignment requests will be directed to the EPAS and ETAS storefronts for digital submissions.

The collection of assignment information is required by 15 U.S.C. § 1057 and 1060 and is used by the public to submit (and by the USPTO to process) patent and trademark assignment recordation requests using the EPAS and ETAS.

For more information, contact the Assignments Recordation Branch customer service personnel at [email protected] or (571) 272-3350, or visit the Assignments Recordation Branch webpage on the USPTO website.

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Understanding Patent Assignments: Definition, Usage, Benefits, and Recording Process at the USPTO

Trent V. Bolar, Esq.

A patent assignment is a legal mechanism through which ownership rights of a patent are transferred from one party (the assignor) to another (the assignee). This process plays a pivotal role in the world of intellectual property, enabling inventors and companies to manage their patent portfolios efficiently. In this article, we’ll explore what patent assignments are, how they are used, the benefits they offer, and the steps involved in recording one at the United States Patent and Trademark Office (USPTO).

What is a Patent Assignment?

A patent assignment is a written contract or agreement that formally transfers the rights of a patent from the original patent holder (the assignor) to another individual or entity (the assignee). This legal transfer ensures that the assignee gains exclusive rights to the patented invention, assuming all associated rights and responsibilities.

Usage and Importance of Patent Assignments

• Licensing and Commercialization: Patent assignments are commonly used when inventors or companies wish to license their patented technology to other parties. By assigning the patent rights, the assignee gains the ability to commercialize the invention, potentially leading to the creation of new products, services, or revenue streams.
• Mergers and Acquisitions: In cases of mergers or acquisitions, patent assignments are essential for facilitating the transfer of intellectual property assets from one company to another. This process ensures that the acquiring entity gains full control over the patented technology.
• Innovative Collaborations: Assignments can also come into play when collaborating with external partners. For joint ventures or collaborative projects, it’s crucial to define each party’s ownership rights and responsibilities through a patent assignment agreement.

Benefits of Having a Patent Assignment

• Protection of Rights: For inventors or companies, patent assignments provide a legal safeguard, guaranteeing exclusive ownership of the patented technology. This deters potential infringement and ensures the assignee’s right to enforce the patent against unauthorized use.
• Monetization Opportunities: Patent assignments enable inventors to monetize their inventions without directly engaging in commercial activities. By assigning the patent to a third party, the inventor can focus on innovation, while the assignee handles commercialization and licensing.
• Facilitating Business Transactions: Patent assignments streamline mergers, acquisitions, and other business transactions, ensuring that all intellectual property rights are accurately transferred, reducing the risk of legal disputes in the future.

Recording a Patent Assignment at the USPTO

To make a patent assignment legally enforceable and publicly recordable, it must be filed with the USPTO. The following steps outline the process:

• Prepare the Assignment Agreement: Draft a clear and comprehensive assignment agreement detailing the parties involved, the patent’s full details (patent number, title, and date of issue), and the specific rights being transferred.
• Execution and Signatures: Have the assignment agreement signed by both the assignor and the assignee. Notarization may be required in some jurisdictions to ensure authenticity.
• Filing with the USPTO: Submit the completed assignment to the USPTO. This can be done electronically through the USPTO’s Assignment Recordation Branch (ARB) website or by mail.
• Recording Fees: Pay the required recording fees to the USPTO. The fee structure can vary based on the filing method and the number of patents being assigned.
• Confirmation of Recordation: Once processed, the USPTO will record the assignment and provide an official recordation certificate as proof of the assignment’s validity.

In conclusion, patent assignments are instrumental in managing intellectual property rights, fostering innovation, and facilitating various business transactions. By transferring ownership of patents, inventors and companies can unlock new opportunities, ensure their inventions are protected, and solidify collaborative partnerships. Ensuring proper documentation and following the correct procedures to record a patent assignment with the USPTO are critical steps in making this process legally binding and enforceable.

Author: Trent V. Bolar, Esq.( Profile ); Principal; 8xum IP LLC ( Website )

Disclaimer: All content in this article is intended for general information only, and should not be construed as legal advice. Information in this article may not constitute the most up-to-date legal or other information. The content in this article is provided “as is;” no representations are made that the content is error-free. This article may contain links to other third-party websites. Such links are only for the convenience of the reader, user or browser; 8xum IP LLC does not recommend or endorse the contents of the third-party sites. Use of, and access to, this article or any of the links or resources contained within do not create an attorney-client relationship between the reader, user, or browser and 8xum IP LLC. Before taking any action based on this website, you should consider your personal situation and seek professional advice. 8xum IP is a registered trademark of 8XUM IP LLC. All other trademarks, logos, and service marks used on this article are the property of their respective owners. The use of such trademarks does not imply any affiliation with or endorsement by the trademark owners of this article or 8xum IP.

Copyright © 2023 8xum IP LLC | All rights reserved

Written by Trent V. Bolar, Esq.

Intellectual property attorney at 8xum IP | Passionate technology advocate | Strong believer in cost-effective legal solutions

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The basics of patent assignments

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

Find out more about Patents

by   Cindy DeRuyter, Esq.

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

Read more...

Updated on: December 4, 2023 · 2 min read

Defining Patent Assignment

Requirements to assign a patent, searching for patent assignments.

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

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

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

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

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

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

Here are the requirements for a valid written assignment:

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

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

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

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

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Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

• Intellectual Property
• Patent Prosecution

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

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

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

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

What Is a Patent Assignment and Why Does it Matter?

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

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

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

Patent Assignment vs. Licensing

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

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

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

U sing Employment Agreements to Transfer Patent Ownership

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

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

The employment agreement should include the following provisions:

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

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

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

Drafting Agreements for Non-Employees

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

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

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

O btaining Written Assignments for New Patent Applications

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

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

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

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

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

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

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

Recording a Patent Assignment With the USPTO

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

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

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

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

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

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

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

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

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

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

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

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

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

N eed Help With Your Patent Assignments?

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

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

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

Michael K. Henry, Ph.D.

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

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Sample Patent Assignment Agreements

Three examples of standard language you'd use to assign your rights in a patent..

If you hold a patent , then you have certain exclusive rights over your particular invention, and those rights have economic value. By way of background, a patent is a form of intellectual property that gives inventors certain exclusive rights over their inventions. Typically those exclusive rights last for 20 years, and serve to prevent others in the marketplace from copying (or "infringing") that patented invention.

Getting your patent probably took a good amount of time and money, and you don't want others to take advantage of that. Still, there are times when you might want to license or otherwise assign your patent.

Most commonly, you would do this for monetary reasons, giving another person or entity the ability to borrow or buy your patent in exchange for some amount of money or payment stream. Of course, you'd want to make sure the agreement is clearly set forth in writing.

To help you with this, three sample patent assignment agreements are provided below. They are intended to be used as follows:

• ASSIGNMENT OF RIGHTS OF PATENT: An assignment is intended for use for a patent that has been issued by the U.S. Patent and Trademark Office (USPTO).
• ASSIGNMENT OF RIGHTS TO APPLICATION: This type of assignment is for the rights to an invention for which a patent application has been filed. However, there is no guarantee that the USPTO will approve this application, so the assignment has lesser value.
• ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS WITHOUT PATENT FILED: This type of assignment is intended for use when no application has been filed and no registration has been granted for the invention. Obviously, this method has the lowest economic value of the three types of assignments.

Before filling out one of these, you should read more about the process of assigning patents and speak with a patent attorney to ensure that you are not giving up any important rights or protections. Patent assignments are complex, and often need customization by an experienced lawyer before use.

ASSIGNMENT OF RIGHTS - PATENT ISSUED

____________ [insert name of person or company assigning rights] ("Assignor") is owner of U.S. Patent Number: ______, dated ______, titled ____________ [insert name of invention], (the "Patent"). ___________ [insert name of person or company to whom rights will be assigned] ("Assignee") desires to acquire rights in and to the Patent.

Therefore, for valuable consideration, the receipt of which is acknowledged, Assignor assigns to Assignee ____% [insert percentage of interest that is being assigned - it can be less than 100%, but it cannot be more than 100%] of his or her right, title and interest in the invention and Patent to Assignee for the entire term of the Patent and any reissues or extensions and for the entire terms of any patents, reissues, or extensions that may issue from foreign applications, divisions, continuations in whole or part, or substitute applications filed claiming the benefit of the Patent. The right, title, and interest conveyed in this Assignment is to be held and enjoyed by Assignee and Assignee's successors as fully and exclusively as it would have been held and enjoyed by Assignor had this assignment not been made.

Assignor further agrees to: (a) cooperate with Assignee in the protection of the patent rights and prosecution and protection of foreign counterparts; (b) execute, verify, acknowledge and deliver all such further papers, including patent applications and instruments of transfer; and (c) perform such other acts as Assignee lawfully may request to obtain or maintain the Patent and any and all applications and registrations for the invention in any and all countries.

Date: _______________ ________________________

[to be completed by notary public]

On this _____ day of _________, before me, _________________________, the undersigned Notary Public, personally appeared ____________ ASSIGNOR, personally known to me (or proved to me on the basis of satisfactory evidence) to be the person whose name is subscribed to the within instrument, and acknowledged to me that he or she executed the same. WITNESS my hand and official seal in _____________ County of ______________ on the date set forth in this certificate.

________________________________

Notary Public

ASSIGNMENT OF RIGHTS: PATENT APPLICATION

___________ [insert name of person or company assigning rights] ("Assignor") is owner of _____________ [insert name of invention] , as described in the U.S. Patent Application signed by Assignor on _____ [insert date you signed your patent application] , U.S. Patent and Trademark office Serial Number: _____, filed ________ [insert filing date], (the "Patent Application"). ___________ [insert name of person or company to whom rights will be assigned] , ("Assignee") desires to acquire all rights in and to the Patent Application and the patent (and any reissues or extensions) that may be granted.

Therefore, for valuable consideration, the receipt of which is acknowledged, Assignor assigns to Assignee ___% [insert percentage of interest that is being assigned - it can be less than 100%, but it cannot be more than 100%] of his or her right, title, and interest in the invention and Patent Application (as well as such rights in any divisions, continuations in whole or part, or substitute applications) to Assignee for the entire term of the issued Patent and any reissues or extensions that may be granted and for the entire terms of any and all foreign patents that may issue from foreign applications (as well as divisions, continuations in whole or part, or substitute applications) filed claiming the benefit of the Patent Application.

Assignor authorizes the United States Patent and Trademark Office to issue any Patents resulting from the Patent Application to Assignee according to the percentage interest indicated in this assignment. The right, title, and interest is to be held and enjoyed by Assignee and Assignee's successors and assigns as fully and exclusively as it would have been held and enjoyed by Assignor had this assignment not been made.

Assignor further agrees to: (a) cooperate with Assignee in the prosecution of the Application and foreign counterparts; (b) execute, verify, acknowledge, and deliver all such further papers, including patent applications and instruments of transfer; and (c) perform such other acts as Assignee lawfully may request to obtain or maintain the Patent for the invention in any and all countries.

Date: _______________ ____________________

Assignee Can Be Applicant

Now, as a result of passage of the America Invents Act (AIA) in 2012, the assignee (the person or company to whom the inventor assigned rights) can be listed as a the patent applicant (the "obligated assignee"). Although proof of the assignment is not required at the time of filing, the assignment document must be filed by the time that the issue fee is due for the application.

ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS: NO PATENT ISSUED OR APPLICATION FILED

______________ [insert name of person or company assigning rights] ("Assignor") is the owner of all proprietary and intellectual property rights, including copyrights and patents, in the concepts and technologies known as _____________ [insert name of invention] and more specifically described in Attachment A [attach a description of the invention to the Assignment and label it "Attachment A"] to this Assignment (and referred to collectively as the "Invention") and the right to registrations to the Invention. ______________ [insert name of person or company to whom rights will be assigned] , ("Assignee") desires to acquire the ownership of all proprietary rights, including, but not limited to, the copyrights, trade secrets, trademarks and associated good will and patent rights in the Invention and the registrations to the Invention;

Therefore, for valuable consideration, the receipt of which is acknowledged, Assignor, hereby assigns to Assignee ___% [insert percentage of interest that is being assigned - it can be less than 100%, but it cannot be more than 100%] of all right, title and interest in the Invention, including:

(1) all copyrights, trade secrets, trademarks and associated good will and all patents which may be granted on the Invention;

(2) all applications for patents (including divisions, continuations in whole or part or substitute applications) in the United States or any foreign countries whose duty it is to issue such patents;

(3) any reissues and extensions of such patents; and

(4) all priority rights under the International Convention for the Protection of Industrial Property for every member country.

Assignor warrants that: (1) Assignor is the legal owner of all right, title and interest in the Invention; (2) that such rights have not been previously licensed, pledged, assigned, or encumbered; and (3) that this assignment does not infringe on the rights of any person. Assignor agrees to cooperate with Assignee and to execute and deliver all papers, instruments, and assignments as may be necessary to vest all right, title, and interest in and to the intellectual property rights to the Invention in Assignor. Assignor further agrees to testify in any legal proceeding, sign all lawful papers and applications, and make all rightful oaths and generally do everything possible to aid Assignee to obtain and enforce proper protection for the Invention in all countries.

Date: _______________ ____________________________

On this _____ day of _________, before me, _________________________, the undersigned Notary Public, personally appeared ____________ ASSIGNOR, personally known to me (or proved to me on the basis of satisfactory evidence) to be the person whose name is subscribed to the within instrument, and acknowledged to me that he or she executed the same.

Additional Resources

As you consider assigning your patent, check out these additional resources from Nolo:

Letter Confirming Employee's Ownership of Intellectual Property Rights (Establish ownership of a creative work you have made as an employee).

Profit From Your Idea: How to Make Smart Licensing Deals (Get everything you need to protect and profit from your invention with this all-in-one guide).

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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What is a patent assignment?

April 26, 2023 by James Yang

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

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

What are the requirements of the patent assignment?

Here are the requirements for a valid patent assignment:

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

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

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

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

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

Who are the assignor and assignee?

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

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

Who owns the invention?

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

What is the purpose of a patent assignment?

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

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

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

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

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

How do you determine ownership of a patent?

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

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

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

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

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

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What is a Patent Assignment?

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

What is a Patent Assignment ?

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

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

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

What is a Patent Assignor?

What is a patent assignee, requirements to execute a patent assignment agreement.

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

Who Owns the Patent After a Patent Assignment?

Assigning a patent vs licensing a patent.

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

Does a Patent Assignment Need to be Notarized?

Can multiple people own a patent.

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

Patent Assignment Tips

1) hire an attorney to assist you with your patent assignment, 2) don’t forget to record a patent assignment.

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

3) Notarize Your Assignment Agreement

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

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

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Navigating the USPTO Patent Assignment Search: A Comprehensive Guide

By Babak Akhlaghi on March 28, 2024.

The United States Patent and Trademark Office (USPTO) is a pivotal institution in the realm of intellectual property, playing a crucial role in protecting the innovations that fuel progress. Among its varied services, the USPTO patent assignment search stands out as an essential resource for individuals and organizations navigating the intricacies of patent ownership and assignments. This guide delves deep into the functionality and significance of the USPTO’s patent assignment search tool, shedding light on its utility and operation for all stakeholders involved in the patenting process.

Understanding Patent Assignments

To fully appreciate the value of the USPTO assignment search, one must first understand what a patent assignment entails. Essentially, a patent assignment is the transfer of an owner’s rights, title, and interest in a patent or patent application to another entity or individual. This process can occur through the sale of the patent, a transfer of ownership during a business transaction, or through inheritance. The completion of an assignment confers upon the new owner the exclusive rights to the patent, including the authority to prevent others from exploiting the patented invention.

The Role of the USPTO Patent Assignment Search

Central to the USPTO’s offerings is the USPTO assignment database, a comprehensive repository that records all patent assignment information from August 1980 to the current day. This database becomes indispensable for verifying the present ownership of a patent or patent application whenever the USPTO processes pertinent assignment details.

For inventors, legal professionals, and corporations alike, the USPTO assignment search is vital for various reasons. It facilitates due diligence efforts prior to the acquisition or licensing of patents, aids in the resolution of patent right disputes, and ensures adherence to assignment recording protocols.

Utilizing the USPTO Patent Assignment Search

Thanks to the user-friendly interface of the USPTO assignment search tool , users can effortlessly access detailed records of patent assignments. This tool, part of the broader USPTO Electronic Patent Assignment System (EPAS), allows searches by multiple criteria such as patent number, assignor and assignee names, publication numbers, and reel/frame numbers. Results from this assignee search provide comprehensive details about each assignment, including participant names, assigned patents or applications, and the date of assignment.

The USPTO patent assignment search tool is far more than a mere database; it serves as a critical access point to the legal and commercial dimensions of patenting. By facilitating access to exhaustive records of US patent assignments, the USPTO empowers stakeholders across the innovation landscape to make well-informed decisions. This, in turn, helps in averting disputes and promoting the seamless transfer of technology. Whether you are conducting a US patent assignment search, exploring the USPTO assignment database, or utilizing the USPTO trademark assignment search function, the USPTO’s resources are invaluable for anyone involved in the intricate world of patents and trademarks.

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