patent office assignment

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

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.

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

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.

Narrow your search results expand_more

Include results from:

Show only content from these topics:

Look up specific intellectual property information:

Additional information about this page.

	United States Patent and Trademark Office
	\| \| \| \| \| Business\| \| \|


/ Number:
:

	DM/

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.

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.

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

Cookie	Duration	Description
__hssrc	session	This cookie is set by Hubspot. According to their documentation, whenever HubSpot changes the session cookie, this cookie is also set to determine if the visitor has restarted their browser. If this cookie does not exist when HubSpot manages cookies, it is considered a new session.
_GRECAPTCHA	5 months 27 days	This cookie is set by Google. In addition to certain standard Google cookies, reCAPTCHA sets a necessary cookie (_GRECAPTCHA) when executed for the purpose of providing its risk analysis.
cookielawinfo-checkbox-analytics	11 months	This cookie is set by GDPR Cookie Consent plugin. The cookie is used to store the user consent for the cookies in the category "Analytics".
cookielawinfo-checkbox-functional	11 months	The cookie is set by GDPR cookie consent to record the user consent for the cookies in the category "Functional".
cookielawinfo-checkbox-necessary	11 months	This cookie is set by GDPR Cookie Consent plugin. The cookies is used to store the user consent for the cookies in the category "Necessary".
cookielawinfo-checkbox-others	11 months	This cookie is set by GDPR Cookie Consent plugin. The cookie is used to store the user consent for the cookies in the category "Other.
cookielawinfo-checkbox-performance	11 months	This cookie is set by GDPR Cookie Consent plugin. The cookie is used to store the user consent for the cookies in the category "Performance".
JSESSIONID	session	Used by sites written in JSP. General purpose platform session cookies that are used to maintain users' state across page requests.
viewed_cookie_policy	11 months	The cookie is set by the GDPR Cookie Consent plugin and is used to store whether or not user has consented to the use of cookies. It does not store any personal data.

Cookie	Duration	Description
__hssc	30 minutes	This cookie is set by HubSpot. The purpose of the cookie is to keep track of sessions. This is used to determine if HubSpot should increment the session number and timestamps in the __hstc cookie. It contains the domain, viewCount (increments each pageView in a session), and session start timestamp.
__hstc	1 year 24 days	This cookie is set by Hubspot and is used for tracking visitors. It contains the domain, utk, initial timestamp (first visit), last timestamp (last visit), current timestamp (this visit), and session number (increments for each subsequent session).
_ga	2 years	This cookie is installed by Google Analytics. The cookie is used to calculate visitor, session, campaign data and keep track of site usage for the site's analytics report. The cookies store information anonymously and assign a randomly generated number to identify unique visitors.
_ga_GTLMQEG9VF	2 years	This cookie is installed by Google Analytics.
_gat_UA-44688053-5	1 minute	This is a pattern type cookie set by Google Analytics, where the pattern element on the name contains the unique identity number of the account or website it relates to. It appears to be a variation of the _gat cookie which is used to limit the amount of data recorded by Google on high traffic volume websites.
_gat_UA-44688053-8	1 minute	This is a pattern type cookie set by Google Analytics, where the pattern element on the name contains the unique identity number of the account or website it relates to. It appears to be a variation of the _gat cookie which is used to limit the amount of data recorded by Google on high traffic volume websites.
_gcl_au	3 months	This cookie is used by Google Analytics to understand user interaction with the website.
_gid	1 day	This cookie is installed by Google Analytics. The cookie is used to store information of how visitors use a website and helps in creating an analytics report of how the website is doing. The data collected including the number visitors, the source where they have come from, and the pages visted in an anonymous form.
fs_uid	1 year	This cookie is set by the provider Fullstory. This cookie is used for session tracking.
hubspotutk	1 year 24 days	This cookie is used by HubSpot to keep track of the visitors to the website. This cookie is passed to Hubspot on form submission and used when deduplicating contacts.

Cookie	Duration	Description
_fbp	3 months	This cookie is set by Facebook to deliver advertisement when they are on Facebook or a digital platform powered by Facebook advertising after visiting this website.
fr	3 months	The cookie is set by Facebook to show relevant advertisments to the users and measure and improve the advertisements. The cookie also tracks the behavior of the user across the web on sites that have Facebook pixel or Facebook social plugin.

Terms of Use and Privacy Policy

Ada compliance, service area.

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

In response to public feedback regarding the retirement of the legacy search systems, a new simplified interface of Patent Public Search named Basic Search is now available. Basic Search is recommended for users new to Patent Public Search, or for users who only need to perform a quick look up.

PatFT, AppFT, PubEAST and PubWEST were retired on September 30. Preexisting links to U.S. patents and pre-grant publications are no longer available. You will need to create new links for saved documents. Read through this step-by-step guide on how to set up a web link to access a saved document, as well as set up saved search queries. For questions regarding Patent Public Search, please contact the Public Search Facility at [email protected] .

Search for patents

New to Patent Searching? See this important information about searching for patents:

How to Conduct a Preliminary U.S. Patent Search: A Step by Step Strategy - Web Based Tutorial (38 minutes)

The Multi-Step strategy - A handout that outlines a suggested procedure for patent searching

Patents may be searched using the following resources:

Patent Public Search

The Patent Public Search tool is a new web-based patent search application that replaced internal legacy search tools PubEast and PubWest and external legacy search tools PatFT and AppFT. Patent Public Search has two user selectable modern interfaces that provide enhanced access to prior art. The new, powerful, and flexible capabilities of the application improves the overall patent searching process.

Global Dossier

Global Dossier is a set of business services aimed at modernizing the global patent system and delivering benefits to all stakeholders through a single portal/user interface . Through this secure service, users have access to the file histories of related applications from participating IP Offices, which currently include the IP5 Offices.

By using this service, users can see the patent family for a specific application, containing all related applications filed at participating IP Offices, along with the dossier, classification, and citation data for these applications. This service also provides Office Action Indicators to help users identify applications that contain office actions, a Collections View for saving documents and applications for review later on in the session, and the ability to download the documents in an application.

Public Search Facility

The United States Patent and Trademark Office (USPTO) Public Search Facility located in Alexandria, VA provides the public access to patent and trademark information in a variety of formats including on-line, microfilm, and print. Trained staff are available to assist public users.

Patent and Trademark Resource Centers (PTRCs)

Your nearest Patent and Trademark Resource Center (PTRC) maintains local search resources and may offer training in patent search techniques.

Find your nearest PTRC

Patent Official Gazette

The Electronic Official Gazette allows users to browse through the issued patents for the current week. The Official Gazette can be browsed by classification or type of patent, for example, utility, design, and plant.

Common Citation Document (CCD)

The Common Citation Document (CCD) application aims to provide single point access to up-to-date citation data relating to the patent applications of the IP5 Offices. It consolidates the prior art cited by all participating offices for the family members of a patent application, thus enabling the search results for the same invention produced by several offices to be visualized on a single page. The creation of the CCD application is part of an ongoing process of technical harmonization at international level aimed at establishing an appropriate infrastructure to facilitate greater integration of the global patent system.

Search International Patent Offices

To see if your idea has been patented abroad, you'll want to refer to searchable databases made available from other International Intellectual Property offices. Free online access to patent collections is provided by many countries. Some available databases include:

European Patent Office (EPO) provides esp@cenet a network of Europe's patent databases- This site also provides access to machine translation of European patents for some languages.
Japan Patent Office (JPO) - This site also provides access to machine translations of Japanese patents.
World Intellectual Property Organization (WIPO) provides PATENTSCOPE ® Search Service, which features a full-text search of published international patent applications and machine translations for some documents as well as a list of international patent databases.
Korean Intellectual Property Rights Information Service (KIPRIS)
China National Intellectual Property Administration (CNIPA) - This site also provides access to machine translation of Chinese patents.
Other International Intellectual Property Offices that provide searchable patent databases include: Australia , Canada , Denmark , Finland , France , Germany , Great Britain , India , Israel , Netherlands , Norway , Sweden , Switzerland and Taiwan .

Stopfakes.Gov provides informative Toolkits that give an overview of the Intellectual Property Rights (IPR) environment in various countries around the world.

For additional search resources, contact your local Patent and Trademark Resource Center , visit the USPTO Public Search Facility or the USPTO Main STIC Library . The staff in the Main STIC Library are experts on foreign patents and able to help the public as needed.

Search Published Sequences

The Publication Site for Issued and Published Sequences (PSIPS) website provides Sequence Listings, tables, and other mega items for granted US patents or published US patent applications.

All sequences (SEQ ID NOs.) and tables for listed patents or publications are available for viewing, without downloading, by accessing the proper document detail page and then submitting a SEQ ID NO or a mega table ID number.

Patent Assignment Search

Visit the Patent Assignment Search website to search for patent assignments and changes in ownership.

Patent Examination Data System (PEDS)

The Patent Examination Data System (PEDS) in the Amazon Cloud provides public users the ability to search, view and download bibliographic data for all publicly available Patent applications in a secure manner. The solution allows public users to search and download bibliographic data in bulk as well as manage the volume of data that can be downloaded at any given period of time by a particular user.

Additional information about this page

Process Overview for Patent Assignments

A process overview for patent assignments involves understanding the fundamental principles of intellectual property transactions, preparing and executing necessary documents, and identifying patent ownership rights. It is vital to determine the assignment value, negotiate terms, and draft agreements that comply with legal requirements. Accurate record-keeping and public disclosure of patent assignments are imperative, followed by post-assignment patent maintenance to safeguard the patent's legal validity and value. Effective navigation of this complex process requires a solid grasp of patent assignment basics, and a thorough understanding of the intricacies involved can uncover strategic opportunities for business growth.

Table of Contents

Understanding Patent Assignment Basics

Because patent assignments involve the transfer of intellectual property rights, it is crucial to grasp the fundamental principles underlying these transactions. A comprehensive understanding of patent assignment basics is essential for effective management of intellectual assets. Patent assignments have a rich patent history, dating back to the early days of intellectual property law. Over time, the principles governing these transactions have evolved to accommodate the dynamic nature of innovation and technological advancements.

Intellectual assets, such as patents, trademarks, and copyrights, are valuable resources that drive business success. Patent assignments play a critical role in the strategic management of these assets, enabling organizations to leverage their intellectual property to achieve their goals. By understanding the intricacies of patent assignments, businesses can optimize their intellectual asset portfolios, mitigate risks, and capitalize on opportunities. A solid grasp of patent assignment basics is, therefore, essential for navigating the complex landscape of intellectual property transactions.

Preparing Patent Assignment Documents

When preparing patent assignment documents, it is vital to verify that all necessary requirements are met to establish a valid transfer of patent ownership. The assignment agreement must clearly outline the terms of the transfer, including the identities of the assignor and assignee, the patent details, and the effective date of the transfer. The following discussion will elaborate on the key elements of preparing patent assignment documents, including necessary document requirements, patent ownership transfer, and assignment agreement terms.

Essential Document Requirements

Fundamental Document Requirements

To validate and enforce the legality of a patent assignment, it is imperative to prepare and execute necessary documents that meet the legal requirements and formalities. These documents serve as evidence of the assignment and facilitate a smooth transfer of patent rights.

The following table outlines fundamental document requirements for patent assignments:


Patent Assignment Agreement	Outlines terms and conditions of the assignment	20 years from patent expiration
Patent Assignment Record	Records the assignment with the USPTO	Permanent retention
Document Templates	Standardized templates for patent assignments	Update and retain for future use
Patent Ownership Certificates	Certifies ownership of the patent	20 years from patent expiration
Record of Patent Assignment	Maintains a record of all patent assignments	Permanent retention

These documents are indispensable in maintaining a clear chain of title and supporting the enforceability of patent rights. It is imperative to maintain accurate and up-to-date records, leveraging standardized document templates and adhering to a robust record retention policy.

Patent Ownership Transfer

To initiate the patent ownership transfer process, prepare patent assignment documents that accurately reflect the terms of the agreement and comply with legal requirements. These documents must be exhaustive, outlining the transfer of patent rights, including the assignor's and assignee's information, patent details, and the effective date of transfer. It is vital to verify that the documents comply with international regulations, such as the Patent Cooperation Treaty (PCT), and national laws governing patent assignments. Additionally, consider the tax implications of patent ownership transfer, as it may affect the assignor's and assignee's tax liabilities. Failure to comply with legal and regulatory requirements may lead to invalidation of the patent assignment, giving rise to costly legal disputes. Hence, it is imperative to engage legal professionals experienced in patent law to review and draft the patent assignment documents. This will guarantee that the patent ownership transfer process is executed efficiently and effectively, minimizing the risk of legal and financial repercussions.

Assignment Agreement Terms

Crafting a thorough assignment agreement is essential, as it outlines the specific terms and conditions governing the patent ownership transfer, including the scope of rights assigned, payment structures, and dispute resolution mechanisms. This document serves as a legally binding contract between the assignor and assignee, ensuring a smooth transfer of patent ownership.

When drafting an assignment agreement, it is crucial to consider the following key terms to avoid contractual pitfalls:

Assignment clauses : Clearly define the scope of rights being assigned, including the patent's geographical scope and duration.
Payment structures : Outline the payment terms, including the amount, method, and timing of payments.
Dispute resolution mechanisms : Establish a process for resolving disputes that may arise during the patent ownership transfer.
Representations and warranties : Specify the representations and warranties made by the assignor regarding the patent's validity and ownership.

Identifying Patent Ownership Rights

Every patent has a clear chain of title, which is vital in identifying the rightful owner of the patent ownership rights. This chain of title is established through a thorough review of the patent's history, including all assignments, licenses, and other transactions that have affected ownership. A thorough patent history is necessary in tracing the ownership structure, from the original inventor to the current owner. This involves analyzing patent office records, assignment agreements, and other relevant documents to identify any changes in ownership. By examining the patent history, one can identify the rightful owner of the patent, including any co-owners or joint owners. Additionally, it is vital to determine if there are any encumbrances, such as liens or security interests, that may affect the ownership rights. A clear understanding of the patent ownership structure is critical in verifying that the patent is transferred or assigned to the correct party.

Determining Patent Assignment Value

Several factors influence the valuation of a patent assignment, including the patent's validity, scope, and remaining lifespan, as well as the technology's market demand and competitive landscape. The value of a patent assignment can be substantially impacted by these factors, making it crucial to conduct a thorough analysis.

To determine the patent assignment value, consider the following key factors:

Market demand and growth potential : Assess the current and future market demand for the patented technology.
Competitive landscape : Analyze the competitive environment and potential barriers to entry.
Financial projections : Estimate the revenue potential and profitability of the patented technology.
Patent portfolio strength : Evaluate the strength and diversity of the patent portfolio.

Conducting a thorough market analysis and financial projections will provide an in-depth understanding of the patent assignment value. This information will enable informed decision-making and facilitate a successful patent assignment process. By carefully considering these factors, patent owners and assignees can secure a mutually beneficial agreement.

Negotiating Patent Assignment Terms

With a clear understanding of the patent assignment value, the next step is to negotiate the terms of the agreement, which involves careful consideration of the rights and obligations of both parties. This stage requires a deep understanding of the patent's technical and commercial aspects, as well as the interests and goals of both the assignor and assignee.

Effective negotiation involves identifying areas of leverage and potential deal breakers. The table below highlights some key considerations:


Royalty Rate	Lower rate to maximize returns	Higher rate to reflect patent value
Exclusivity	Non-exclusive to maintain freedom	Exclusive to secure market control
Territory	Broader territory for assignor's benefit	Limited territory for assignee's focus
Term Leverage	Stronger bargaining power for assignor	Weaker bargaining power for assignee
Deal Breakers	Unacceptable indemnification terms	Unclear patent ownership

Drafting Patent Assignment Agreements

One of the most critical steps in the patent assignment process is drafting a thorough and enforceable patent assignment agreement that accurately reflects the negotiated terms and protects the interests of both parties. A well-drafted agreement guarantees that the assignment is legally binding and minimizes the risk of disputes or litigation .

When drafting a patent assignment agreement, it is vital to examine the following key elements:

Clear and concise language : Verify that the agreement is written in a clear and concise manner, avoiding ambiguity and vagueness.
Comprehensive scope : Include all necessary details, such as the patent rights being assigned, the effective date, and any conditions or restrictions.
Assignment templates : Leverage standardized assignment templates to maintain consistency and efficiency in the drafting process.
Patent strategy alignment : Confirm that the assignment agreement aligns with the overall patent strategy, taking into account the goals and objectives of both parties.

Executing Patent Assignment Documents

What specific formalities must be observed when executing patent assignment documents to secure their legal validity and enforceability? The execution of patent assignment documents is a critical step in the patent assignment process. It is vital to observe that the documents are executed in accordance with the applicable laws and regulations to avoid any potential disputes or challenges to their validity.

In the United States, for instance, patent assignment documents must be signed by the assignor and may require the signature of the assignee as well. The signatures must be original, and the documents must be notarized or acknowledged before a notary public. In recent years, electronic execution has become increasingly accepted, and digital signatures are now widely recognized as a valid means of execution. However, it is imperative to verify that the electronic execution process complies with the relevant electronic signature laws, such as the Electronic Signatures in Global and National Commerce Act (ESIGN). By observing these formalities, patent assignment documents can be executed with confidence, securing their legal validity and enforceability.

Recording Patent Assignments Publicly

Recording patent assignments publicly is a critical step in the patent assignment process, as it provides transparency and notice to the public regarding the ownership and rights associated with a patent. To achieve this, patent details must be accurately recorded, and the necessary documents must be filed with the relevant patent office. This process satisfies public notice requirements, which are vital for maintaining the integrity of the patent system.

Recording Patent Details

During the patent assignment process, accurate and timely recording of patent details is crucial to verify that ownership changes are publicly disclosed and reflected in official records. This facilitates that patent holders, inventors, and other stakeholders have access to up-to-date information, which is necessary for maintaining the integrity of the patent system.

Recording patent details involves capturing essential information, including:

Patent filing dates : Accurate recording of patent filing dates is critical to establish priority and determine patent term.
Patent numbers : Recording patent numbers guarantees that ownership changes are linked to the correct patent assets.
Inventor information : Accurate recording of inventor information is necessary for patent validity and ownership disputes.
Chain of title : Recording the chain of title provides a clear record of ownership changes, reducing the risk of disputes and confusion.

Patent Office Filing

To publicly disclose changes in patent ownership, a patent assignment must be filed with the relevant patent office, where it becomes a matter of public record. This step is crucial in ensuring that the patent office has an accurate record of the patent's ownership. The filing process typically involves submitting the necessary documents, including the assignment agreement, along with the required filing fees.


Filing Fees	Varying fees depending on the type of patent and filing method
Office Hours	Monday to Friday, 8:00 am to 5:00 pm ET
Document Format	Paper or electronic submission in accordance with patent office guidelines
Filing Method	Online, mail, or hand delivery
Response Time	Patent office typically responds within 2-3 months

Upon filing, the patent office will review the submission to ensure compliance with their requirements. Once the filing is complete, the patent office will update their records, making the assignment publicly accessible. It is essential to ensure that all filing requirements are met to avoid delays or rejections.

Public Notice Requirements

How do patent owners verify that their assignment is publicly disclosed, thereby providing notice to third parties and maintaining the integrity of the patent system? The answer lies in the public notice requirements for recording patent assignments. These requirements promote legal transparency and facilitate government oversight, allowing interested parties to access and review assignment records.

To achieve public notice, patent owners must record their assignments with the United States Patent and Trademark Office (USPTO). This involves submitting a written instrument, such as an assignment agreement, along with the required fee. The USPTO then indexes and publishes the assignment, making it publicly available.

The benefits of public notice requirements include:

Legal Transparency : Publicly recorded assignments provide a clear and accurate record of patent ownership, reducing confusion and disputes.
Government Oversight : The USPTO's recording and indexing process confirms that assignments are properly vetted and made available for public inspection.
Third-Party Notice : Public notice enables third parties to identify the current patent owner, facilitating licensing, litigation, and other transactions.
Integrity of the Patent System : Public notice requirements help maintain the integrity of the patent system by preventing fraudulent or hidden assignments and affording protection to patent owners.

Post-Assignment Patent Maintenance

Following patent assignment, the new owner assumes responsibility for maintaining the patent's legal validity through timely payment of maintenance fees and addressing any potential post-grant challenges. This critical step safeguards the patent's enforceability and value.

Patent Monitoring and Maintenance Strategies

Effective patent maintenance begins with vigilant monitoring of the patent's status and any potential threats. The new owner should implement a patent monitoring strategy to track patent office communications, expiration dates, and potential infringement. This enables proactive responses to any issues that may arise. A thorough maintenance strategy should also be developed, outlining procedures for addressing post-grant challenges, such as reexamination or inter partes review, and facilitating timely payment of maintenance fees. By adopting a proactive approach to patent maintenance, the new owner can safeguard the patent's validity and protect its intellectual property investments. A well-planned maintenance strategy also helps to identify opportunities for patent portfolio optimization and potential revenue growth.

Frequently Asked Questions

Can a patent assignment be revoked or cancelled after execution?.

A patent assignment can be revoked or cancelled after execution if legal grounds exist, such as fraud, duress, or mutual mistake, or if contract disputes arise, enabling parties to seek judicial intervention to nullify the assignment.

What Are the Tax Implications of a Patent Assignment Transaction?

In a patent assignment transaction, tax implications arise, including potential capital gains tax liabilities for the assignor and possible tax deductions for the assignee, necessitating careful consideration of tax implications to optimize the transaction's financial outcome.

How Do I Handle International Patent Assignments Across Borders?

When handling international patent assignments across borders, it is crucial to take into account jurisdictional nuances, guaranteeing compliance with cross-border regulations and tax laws to avoid legal and financial consequences.

Can a Patent Be Assigned to Multiple Owners Simultaneously?

Yes, a patent can be assigned to multiple owners simultaneously through joint ownership, typically occurring when co-inventors contribute to the invention, allowing for shared rights and obligations among the co-owners.

What Happens to a Patent Assignment if the Assignor Goes Bankrupt?

In the event of assignor bankruptcy, patent assignments are subject to Bankruptcy Priority, where creditors' claims take precedence. Asset Protection strategies, such as perfected security interests, can help safeguard patent ownership and guarantee continued enforceability.

UNLOCK YOUR COPY

COMMENTS

United States Patent and Trademark Office
United States Patent and Trademark Office. Select one. Enter assignment information in any field or combination of fields. The number assigned when a patent application is filed at USPTO. The person, group of persons, or organization that recieved ownership rights of the patent application or patent. The nature of the transfer of ownership of ...
Patents Assignments: Change & search ownership
Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.
Assignment Center
The U.S. Patent and Trademark Office (USPTO) is streamlining the process for recording assignments and other documents relating to interests in patents and trademarks. ... Copy assignment: The new copy function allows you to copy an existing assignment and edit the details so it is accurate for the new assignment. This feature saves you from ...
Assignment Center
Assignment Center is the USPTO's online system for filing and managing patent and trademark assignments. Learn how to use it with our tutorial videos and FAQs.
Assignment Center
You may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 a.m. to 5 p.m. ET. You may email questions about electronic assignment filing to [email protected].
Assignment Recordation Branch (ARB)
Assignment Recordation Branch (ARB) Local. 571-272-3350. Email. [email protected]. Helps customers with transferring ownership or changing the name on their patent or trademark registration using Assignment Center. Also provides information relating to pending patent or trademark assignments, and answers questions about assignments ...
Assignment Center
Sample of a Patent Assignment (PDF) Sample of a Trademark Assignment (PDF) Resources. Upload a Document (PDF) Trademark Assignment Fees (Fee codes: 8521 and 8522) Manual of Patent Examining Procedure (MPEP) Trademark Manual of Examining Procedures (TMEP) Assignment Search ; Tutorial. Assignment Center Patent Training Guide (PDF)
301-Ownership/Assignability of Patents and Applications
The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of ...
USPTO Assignments on the Web
United States Patent and Trademark Office Home | Site Index | Search | Guides | Contacts | eBusiness | eBiz alerts | News | Help: Assignments on the Web: Select One Patent Assignment Trademark Assignment If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350. v.2.6. Web interface last ...
Patent Assignment: How to Transfer Ownership of a Patent
A patent assignment is an agreement where one entity (the "assignor") transfers all or part of their right, title and interest in a patent or application to another entity (the "assignee"). In simpler terms, the assignee receives the original owner's interest and gains the exclusive rights to pursue patent protection (through filing ...
Frequently Asked Questions about Patent Assignment
How much does it cost to assign a patent application. 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.
Managing a patent
Utility and plant patents issuing from original applications filed on or after May 29, 2000, may be eligible for patent term adjustment (PTA) as set in 37 CFR 1.702 - 1.705. Three main reasons for PTA are: The failure of the USPTO to take certain actions within specific time frames (see 37 CFR 1.702 [a] and 1.703 [a]).
United States Patent and Trademark Office
United States Patent and Trademark Office . Patents . Patent Center; Search patents; Patent applications search; Check private filing status; Check public filing status; File patents; Patent and Trial Appeal Board; Search assignment; Order certified patent documents; Manual of Patent Examining Procedure; Trademarks . Search trademarks; File ...
USPTO Assignments on the Web
Assignor Name: Assignor Index: Assignee Name: Assignee Index: Assignor/Assignee Name: The database contains all recorded Patent Assignment information from August 1980 to August 28, 2024 . If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350. v.2.6.
Patent Assignment: A Basic Guide
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 ...
USPTO Assignments on the Web
United States Patent and Trademark Office Home | Site Index | Search | Guides | Contacts | eBusiness | eBiz alerts | News | Help: Assignments on the Web > Trademark Query: ... If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350. v.2.6.
What is a Patent Assignment?
Once a patent assignment has been properly executed by the parties, it is advisable to promptly record the assignment with the Patent Office. Recording a patent assignment is beneficial to the assignee because the Patent Office will then issue a certificate of acknowledgement, which is evidence of the execution of the assignment, grant, or ...
What is a patent assignment?
A patent assignment is a legal document that transfers ownership of a patent from one party to another. The invention rights vest with the person that conceives of the invention unless the inventor has assigned the invention rights to another using the patent assignment. Understanding the basics of patent assignments is crucial for anyone that ...
Online patent tools
Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.
Recording of Assignments
The Office records assignments, grants, and similar instruments sent to it for recording, and the recording serves as notice. If an assignment, grant, or conveyance of a patent or an interest in a patent (or an application for patent) is not recorded in the Office within three months from its date, it is void against a subsequent purchaser for a valuable consideration without notice, unless it ...
Search for patents
Public Search Facility. The United States Patent and Trademark Office (USPTO) Public Search Facility located in Alexandria, VA provides the public access to patent and trademark information in a variety of formats including on-line, microfilm, and print. Trained staff are available to assist public users.
Process Overview for Patent Assignments
This involves analyzing patent office records, assignment agreements, and other relevant documents to identify any changes in ownership. By examining the patent history, one can identify the rightful owner of the patent, including any co-owners or joint owners. Additionally, it is vital to determine if there are any encumbrances, such as liens ...