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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
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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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This patent assignment is between , an individual a(n) (the " Assignor ") and , an individual a(n) (the " Assignee ").
The Assignor has full right and title to the patents and patent applications listed in Exhibit A (collectively, the " Patents ").
The Assignor wishes to transfer to the Assignee, and the Assignee wishes to purchase and receive from the Assignor, all of its interest in the Patents.
The parties therefore agree as follows:
1. ASSIGNMENT OF PATENTS.
The Assignor assigns to the Assignee, and the Assignee accepts the assignment of, all of the Assignor's interest in the following in the United States and its territories and throughout the world:
- (a) the Patents listed in Exhibit A ;
- (b) the patent claims, all rights to prepare derivative works, goodwill, and other rights to the Patents;
- (c) all registrations, applications (including any divisions, continuations, continuations-in-part, and reissues of those applications), corresponding domestic and foreign applications, letters patents, or similar legal protections issuing on the Patents, and all rights and benefits under any applicable treaty or convention;
- (d) all income, royalties, and damages payable to the Assignor with respect to the Patents, including damages and payments for past or future infringements of the Patents; and
- (e) all rights to sue for past, present, and future infringements of the Patents.
2. CONSIDERATION.
The Assignee shall pay the Assignor a flat fee of as full payment for all rights granted under this agreement. The Assignee shall complete this payment no later than .
3. RECORDATION.
In order to record this assignment with the United States Patent and Trademark Office and foreign patent offices, within hours of the effective date of this assignment, the parties shall sign the form of patent assignment agreement attached as Exhibit B . The Assignor Assignee is solely responsible for filing the assignment and paying any associated fees of the transfer.
4. NO EARLY ASSIGNMENT.
The Assignee shall not assign or otherwise encumber its interest in the Patents or any associated registrations until it has paid to the Assignor the full consideration provided for in this assignment. Any assignment or encumbrance contrary to this provision shall be void.
5. ASSISTANCE.
- (1) sign any additional papers, including any separate assignments of the Patents, necessary to record the assignment in the United States;
- (2) do all other lawful acts reasonable and necessary to record the assignment in the United States; and
- (3) sign all lawful papers necessary for Assignee to retain a patent on the Patents or on any continuing or reissue applications of those Patents.
- (b) Agency. If for any reason the Assignee is unable to obtain the assistance of the Assignor, the Assignor hereby appoints the Assignee as the Assignor's agent to act on behalf of the Assignor to take any of the steps listed in subsection (a).
6. NO LICENSE.
After the effective date of this agreement, the Assignor shall make no further use of the Patents or any patent equivalent, except as authorized by the prior written consent of the Assignee. The Assignor shall not challenge the Assignee's use or ownership, or the validity, of the Patents.
7. ASSIGNOR'S REPRESENTATIONS.
The Assignor hereby represents to the Assignee that it:
- (a) is the sole owner of all interest in the Patents;
- (b) has not transferred, exclusively licensed, or encumbered the Patents or agreed to do so;
- (c) is not aware of any violation or infringement of any third party's rights (or a claim of a violation or infringement) by the Patents;
- (d) is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment;
- (e) was not acting within the scope of employment of any third party when conceiving, creating, or otherwise performing any activity with respect to the Patents.
The Assignor shall immediately notify the Assignee in writing if any facts or circumstances arise that would make any of the representations in this assignment inaccurate.
8. INDEMNIFICATION.
The Assignor shall indemnify the Assignee against:
- (a) any claim by a third party that the Patents or their creation, use, exploitation, assignment, importation, or sale infringes on any patent or other intellectual property;
- (b) any claim by a third party that this assignment conflicts with, violates, or breaches any contract, assignment, license, sublicense, security interest, encumbrance, or other obligation to which the Assignor is a party or of which it has knowledge;
- (c) any claim relating to any past, present, or future use, licensing, sublicensing, distribution, marketing, disclosure, or commercialization of any of the Patents by the Assignor; and
- (d) any litigation, arbitration, judgments, awards, attorneys' fees, liabilities, settlements, damages, losses, and expenses relating to or arising from (a), (b), or (c) above.
- (i) the Assignee promptly notifies the Assignor of that claim;
- (ii) the Assignor controls the defense and settlement of that claim;
- (iii) the Assignee fully cooperates with the Assignor in connection with its defense and settlement of that claim;
- (iv) the Assignee stops all creation, public use, exploitation, importation, distribution, or sales of or relating to the infringing Patents, if requested by the Assignor.
- (i) obtain the right for the Assignee to continue to use the infringing Patent;
- (ii) modify the infringing Patent to eliminate the infringement;
- (iii) provide a substitute noninfringing patent to the Assignee pursuant to this assignment; or
- (iv) refund to the Assignee the amount paid under this assignment for the infringing Patent.
- (c) No Other Obligations. The Assignor shall have no other obligations or liability if infringement occurs, and shall have no other obligation of indemnification or to defend relating to infringement. The Assignor shall not be liable for any costs or expenses incurred without its prior written authorization and shall have no obligation of indemnification or any liability if the infringement is based on (i) any modified form of the Patents not made by the Assignor, (ii) any finding or ruling after the effective date of this assignment, or (iii) the laws of any country other than the United States of America or its states.
9. GOVERNING LAW.
- (a) Choice of Law. The laws of the state of govern this agreement (without giving effect to its conflicts of law principles).
- (b) Choice of Forum. Both parties consent to the personal jurisdiction of the state and federal courts in County, .
10. AMENDMENTS.
No amendment to this assignment will be effective unless it is in writing and signed by a party or its authorized representative.
11. ASSIGNMENT AND DELEGATION.
- (a) No Assignment. Neither party may assign any of its rights under this assignment, except with the prior written consent of the other party. All voluntary assignments of rights are limited by this subsection.
- (b) No Delegation. Neither party may delegate any performance under this assignment, except with the prior written consent of the other party.
- (c) Enforceability of an Assignment or Delegation. If a purported assignment or purported delegation is made in violation of this section, it is void.
12. COUNTERPARTS; ELECTRONIC SIGNATURES.
- (a) Counterparts. The parties may execute this assignment in any number of counterparts, each of which is an original but all of which constitute one and the same instrument.
- (b) Electronic Signatures. This assignment, agreements ancillary to this assignment, and related documents entered into in connection with this assignment are signed when a party's signature is delivered by facsimile, email, or other electronic medium. These signatures must be treated in all respects as having the same force and effect as original signatures.
13. SEVERABILITY.
If any one or more of the provisions contained in this assignment is, for any reason, held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or unenforceability will not affect any other provisions of this assignment, but this assignment will be construed as if those invalid, illegal, or unenforceable provisions had never been contained in it, unless the deletion of those provisions would result in such a material change so as to cause completion of the transactions contemplated by this assignment to be unreasonable.
14. NOTICES.
- (a) Writing; Permitted Delivery Methods. Each party giving or making any notice, request, demand, or other communication required or permitted by this assignment shall give that notice in writing and use one of the following types of delivery, each of which is a writing for purposes of this assignment: personal delivery, mail (registered or certified mail, postage prepaid, return-receipt requested), nationally recognized overnight courier (fees prepaid), facsimile, or email.
- (b) Addresses. A party shall address notices under this section to a party at the following addresses:
- If to the Assignor:
| , | |
- If to the Assignee:
- (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.
15. WAIVER.
No waiver of a breach, failure of any condition, or any right or remedy contained in or granted by the provisions of this assignment will be effective unless it is in writing and signed by the party waiving the breach, failure, right, or remedy. No waiver of any breach, failure, right, or remedy will be deemed a waiver of any other breach, failure, right, or remedy, whether or not similar, and no waiver will constitute a continuing waiver, unless the writing so specifies.
16. ENTIRE AGREEMENT.
This assignment constitutes the final agreement of the parties. It is the complete and exclusive expression of the parties' agreement about the subject matter of this assignment. All prior and contemporaneous communications, negotiations, and agreements between the parties relating to the subject matter of this assignment are expressly merged into and superseded by this assignment. The provisions of this assignment may not be explained, supplemented, or qualified by evidence of trade usage or a prior course of dealings. Neither party was induced to enter this assignment by, and neither party is relying on, any statement, representation, warranty, or agreement of the other party except those set forth expressly in this assignment. Except as set forth expressly in this assignment, there are no conditions precedent to this assignment's effectiveness.
17. HEADINGS.
The descriptive headings of the sections and subsections of this assignment are for convenience only, and do not affect this assignment's construction or interpretation.
18. EFFECTIVENESS.
This assignment will become effective when all parties have signed it. The date this assignment is signed by the last party to sign it (as indicated by the date associated with that party's signature) will be deemed the date of this assignment.
19. NECESSARY ACTS; FURTHER ASSURANCES.
Each party shall use all reasonable efforts to take, or cause to be taken, all actions necessary or desirable to consummate and make effective the transactions this assignment contemplates or to evidence or carry out the intent and purposes of this assignment.
[SIGNATURE PAGE FOLLOWS]
Each party is signing this agreement on the date stated opposite that party's signature.
Date: _________________ | __________________________________________ |
| Name: | |
Date: _________________ | __________________________________________ |
| Name: |
[PAGE BREAK HERE]
EXHIBIT A PATENTS AND APPLICATIONS
| add border | ||||
|---|---|---|---|---|
FORM OF RECORDABLE PATENT APPLICATION ASSIGNMENT
For good and valuable consideration, the receipt of which is hereby acknowledged, between , an individual a(n) (the " Assignor ") and , an individual a(n) (the " Assignee ") all of the Assignor's interest in the Assigned Patents identified in Attachment A to this assignment, and the Assignee accepts this assignment.
Each party is signing this agreement on the date stated opposite that party's signature.
Date: ________________________ | __________________________________________ |
| Name: | |
| NOTARIZATION: | |
| Date: ________________________ | __________________________________________ |
| Name: | |
| NOTARIZATION: |
ATTACHMENT A ASSIGNED PATENTS
| add border | ||||
|---|---|---|---|---|
| **DATE(S) OF EXECUTIONOF DECLARATION ** | ||||
Free Patent Assignment Template
How-to guides, articles, and any other content appearing on this page are for informational purposes only, do not constitute legal advice, and are no substitute for the advice of an attorney.
Patent assignment: How-to guide
A company’s ability to buy and sell property is essential for its long-term life and vitality. Although it doesn’t take up physical space, too much intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product.
Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including patents and other inventions) to support their growth must be sure that the seller does have title to the desired items. A properly drafted patent assignment can help in these circumstances.
A patent assignment is the transfer of an owner’s property rights in a given patent or patents and any patent applications. These transfers may occur independently or as part of larger asset sales or purchases. Patent assignment agreements provide both records of ownership and transfer and protect the rights of all parties.
This agreement is a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations, and you will be well on your way to establishing a clear record of title for all of your patents.
Important points to consider while drafting patent assignments
What is a patent.
A patent is a set of exclusive rights on an invention given by the government to the inventor for a limited period. Essentially, in exchange for the inventor’s agreement to make their invention public and allow others to examine and build on it, the government provides the inventor with a short-term monopoly on their creation. In other words, only they can make, use, or sell that invention.
Are licenses and assignments different from each other?
Licenses are different from assignments. The individual who receives license rights from the patent holder isn’t gaining ownership. Rather, they’re getting assurance from the patent holder that they won’t be sued for making, using, or selling the invention. The terms of the license will vary from agreement to agreement and may address issues of royalties, production, or reversion.
What are the different kinds of patent assignments?
A patent assignment can take many forms.
- It can be the transfer of an individual’s entire interest to another individual or company.
- It can also transfer a specific part of that interest (e.g., half interest, quarter interest, etc.) or a transfer valid only in a designated country area. The exact form of the transfer is specific to the parties' agreement.
What is the role of the United States Patent and Trademark Office in patent transfer?
A patent transfer is usually accomplished through a contract, like the following written agreement form. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO) . The agreement will only be effective if this registration is made. Moreover, if the transfer isn’t recorded within three months from the date of the assignment, there can be no later purchasers. In other words, such patents are no longer sellable to a third party by the assignee if it isn’t recorded quickly and correctly.
Note that there is a fee for recording each assignment of a patent or patent application.
What details should I add to my patent application?
Although you can adapt the document to suit your arrangement, you should always identify the patent(s) being assigned by their USPTO number and date and include the name of the inventor and the invention’s title (as stated in the patent itself). This is a requirement of federal law, and failure to follow it could invalidate your assignment.
What are the benefits of patent assignment?
The advantage of selling your invention or patent outright (and not simply licensing or attempting to develop and market it yourself) is that you’re guaranteed payment at the price you and the purchaser have negotiated.
On the other hand, that one-time payment is all that you will ever receive for your property. You will no longer have the right to control anyone else’s use of your creation.
By using it yourself or offering a temporary license, you retain the potential for future income. However, such income isn’t certain, and your opportunities are paralleled by risk.
Before selling all of your rights in a patent or patent application, ensure this is the best (and most lucrative) approach for you and your company.
Is it necessary to do due diligence before buying a patent?
Provide valuable consideration to due diligence, and don’t agree without completing it. If you purchase a patent, conduct searches with the patent office on the patents issued and online directories to ensure the seller has complete and unique rights in the offered property. Look for these:
- Has an application already been filed by another person or company?
- What are the chances that this is a patentable item?
Although your findings won’t be guaranteed, you may be protected as an “innocent purchaser” if disputes arise.
You might also find critical information about the value of the patent. Consider hiring a patent attorney to help in your investigation. Comparing patents and applications often requires a specialized and technical understanding to know how useful and unique each one is.
What should I consider while selling a patent?
If you sell an invention or patent, ensure you own it. Although this may seem obvious, intellectual property ownership sometimes must be clarified. This may be the case if, for example, the invention was created as part of your employment or if it was sold or otherwise transferred to somebody else. A thorough search of the USPTO website for the publication number should be conducted before you attempt to sell your property.
Is reviewing and signing the patent necessary?
Review the assignment carefully to ensure all relevant deal points are included. Don't assume certain terms are agreed upon if not stated in the document.
Once the document is ready, sign two copies of the assignment, one for you and one for the other party.
Get the assignment notarized by the notary public to reduce the challenges to the validity of a party’s signature or the transfer itself.
If you’re dealing with a complex agreement for a patent assignment , contact an attorney to help draft an assignment that meets your needs.
Key components to include in patent assignments
The following provisions will help you understand the terms of your assignment. Please review the entire document before starting your step-by-step process.
Introduction of parties
This section identifies the document as a patent assignment. Add the assignment effective date, parties involved, and what type of organization(s) they are. The “assignor” is the party giving their ownership interest, and the “assignee” is the party receiving it.
The “whereas” clauses, or recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the patent. Remember that the assignor can transfer all or part of its interest in the patents.
Assignment of patents
This section constitutes the assignment and acceptance of patents and inventions. Be as complete and clear as possible in your description of the property being transferred.
Consideration
In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the assignee gives money (sometimes called “consideration”) to receive the assignor’s property. Enter the amount to be paid, and indicate how long the assignee has to make that payment after the agreement is signed.
Authorization to a director
This section is the assignor’s authorization to issue patents in the assignee’s name. In other words, this tells the head of the patent and trademark office that the transfer is valid and that ownership is changing hands by the assignment.
If the assignment is being recorded after the USPTO has issued a patent number, add the patent application number here.
Assignor’s representations and warranties
In this section, the assignor is agreeing to the following terms:
- They’re the sole owner of the inventions and the patents. If there are other owners who aren’t transferring their interests, this means that the only part being transferred is the assignor’s part.
- They haven’t sold or transferred the inventions and the patents to any third party.
- They have the authority to enter the agreement.
- They don’t believe that the inventions and the patents have been taken from any third party without authorization (e.g., a knowing copy of another company’s invention).
- They don’t know if any permissions must be obtained for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
- The patents weren’t created while a third party employed the creator. In many cases, if a company employs an individual and comes up with a product, the company will own that product. This section offers assurance to the assignee that there are no companies that will make that claim about the patents being sold.
If you and the other party want to include additional representations and warranties, you can do so here.
Assignee’s representations and warranties
In this section, the assignee is agreeing to the following terms:
- They have the authority to enter into the agreement
- They have enough funds to pay for the assignment
No early assignment
This section prevents the assignee from re-transferring the inventions or patents or using any of them as collateral for loans until it has completely paid the money due under the agreement.
Documentation
This clause is the assignor’s promise to help with any paperwork needed to complete an assignment, such as filing information about the assignment with the USPTO, transferring document titles, transferring paperwork for filing to foreign countries, etc.
No further use of inventions or patents
This section indicates that after the agreement’s filing date, the assignor will stop using all the inventions and patents being transferred and won’t challenge the assignee’s use of those inventions or patents.
Indemnification
This clause describes each party’s future obligations if the patent or any application is found to infringe on a third party’s rights. Either the assignor agrees to take all responsibility for infringement, promising to pay all expenses and costs relating to the claim, or the assignor makes its responsibilities conditional, significantly limiting its obligations if a claim is brought.
Successors and assigns
This section states that the parties’ rights and obligations will be passed on to successor organizations (if any) or organizations to which rights and obligations have been permissibly assigned.
No implied waiver
This clause explains that even if one party allows the other to ignore or break an obligation under the agreement, it doesn’t mean that the party waives any future rights to require the other to fulfill those (or any other) obligations.
Provide the assignor and assignee’s address where all the official or legal correspondence should be delivered.
Governing law
This provision lets the parties choose the state laws used to interpret the document.
Counterparts; electronic signatures
This section explains that if the parties sign the agreement in different locations, physically or electronically, all the separate pieces will be considered part of the same agreement.
Severability
This clause protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it won’t undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.
Entire agreement
This section indicates the parties’ agreement that the document they’re signing is “the agreement” about transferring the issued patent.
This clarifies that the headings at the beginning of each section are meant to organize the document and shouldn’t be considered operational parts of the note.
Frequently asked questions
What is a patent assignment.
If you want to buy patents, the first step is to ensure the seller (original owner) owns the patent rights. The second step is the transfer of the patent owner's rights to the buyer. Patent assignments are agreements that cover both steps, helping the buyer and the seller with ownership records and quickly enabling transfer.
What are the requirements for patent assignment?
Here's the information you'll require to complete a patent assignment:
- Who the assignor is : Have their name and contact information ready
- Who the assignee is : Have their information available
- Invention info : Know the inventor's name, invention's registration number, and filing date
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Patent Assignment Agreement
This Patent Assignment Agreement is a comprehensive document designed to facilitate the transfer of patent ownership from the original patent owner, known as the assignor, to another party, known as the assignee .
A patent is a legal grant issued by the United States Patent and Trademark Office (USPTO) to an inventor, providing exclusive rights to make, use, and sell their invention for a limited period , typically 20 years from the filing date. This protection is granted in exchange for the public disclosure of the invention. This system encourages innovation and lets inventors benefit from their creations for a specified period of time.
An assignment is the legal transfer of ownership or rights of a patent from one party (assignor) to another (assignee) . Using a Patent Assignment Agreement, the assignor forever relinquishes their rights to the patent, and the assignee assumes control and ownership of those rights for the duration of the patent.
This assignment can be made either before or after a patent application has been issued as a patent. By law, a patent is considered personal property and, so, can be sold or transferred in the same way one could sell a car or a piece of furniture. This document formally initiates the transfer process, providing clarity and protection for both parties involved. This agreement is particularly useful when inventors, companies, or individuals who wish to transfer their patent rights, whether for financial considerations, strategic partnerships, or other business transactions.
This document is different from a Trademark Assignment Agreement, which is used for the transfer of a different kind of intellectual property, known as a trademark. A trademark is usually a brand name or logo, unlike a patent, which is usually an invention of some sort. This is also slightly different from an Intellectual Property Release . Although that form could be used for a patent, it is generally used for copyrighted material, like works of art or pieces of music. In that case, payment is not made and, instead, the copyrighted works are simply "released," or given to another party. This document can also be distinguished from an Intellectual Property Permission Letter, as there, one party is writing to request permission to use the intellectual property of another. The Patent Assignment Agreement would then come after the letter, but the letter is not the formal legal document that initiates the transfer.
How to use this document
This document includes all the information necessary to transfer the ownership of a patent from one party to another. This document should be used when the transfer will be permanent, usually for a one-time fee , and no royalties will be due after the assignment. This document allows the parties to fill in details of the patent to be transferred, such as the patent name, original recordation number, and date the patent was initially issued . This ensures that everything needed for new recordation with the United States Patent and Trademark Office (USPTO) is present.
Once the document has been completed, both parties should sign the document in front of a notary and have the notary complete the notary page. The document must then be recorded with the USPTO within three months of its signing, or it becomes void. The current cost for filing an assignment with the USPTO is $40 per patent. The assignment can be filed either online or by mail.
Applicable law
In the United States, specific federal laws govern patent assignments, primarily under Title 35 of the United States Code , which pertains to the country's patent system. Section 261 of Title 35 outlines the general provisions related to patent ownership and transfers. According to this statute, patent assignments must be in writing to be valid, and they require the signature of the owner of the patent or their authorized representative. The law also specifies that the assignment must be recorded with the USPTO to establish priority and provide notice to the public.
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You fill out a form. The document is created before your eyes as you respond to the questions.
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Patent Assignment Agreement - Template - Word & PDF
Country: United States
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Ant-Like Persistence
Best practice for recording US patent assignments
I’ll share my notion of the Best Practice for recordation of US patent assignments. Please post comments below.
As a starting point to this discussion, I will remind the reader that if we receive a signed assignment and if we sit on it too long, we eventually come out on the wrong side of the 3-month period set forth in 35 USC § 261:
An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.
So we will take as our starting point that whatever else we do about recording an assignment or postponing the recording of an assignment, we ought to try extremely hard to avoid getting on the wrong side of this three-month period. (There are similar statutory three-month periods for trademark assignments and copyright assignments.)
Old-timers (or at least, practitioners who were in practice prior to January 1, 2014) will recall the days when it was necessary to pay a government fee to record a patent assignment. In those old days, practitioners would go to great lengths to try to avoid paying two fees if there was a way to squeeze two recordations into a single recordation (so as to pay only one fee). A practitioner having encountered a problem with an existing recordation filing would go to great lengths to try to salvage the filing so as to avoid having to pony up a second government fee. If there were two inventors, each of whom was supposed to sign an assignment, and if the signed assignments showed up on different days, most folks would carefully save up the first one and postpone e-filing it until the second signed assignment arrived. This way, the filer could bunch them together and e-file them all in the same package.
As I say, the overarching goal for most practitioners in those old days was to try as hard as possible to get away with paying only one government fee for multiple assignments.
But the US eliminated the fee on January 1, 2014. So that is no longer a reason to drag our feet on e-filing a signed assignment if we have it in hand.
A first drawback to intentionally postponing recording a signed assignment is that one might inadvertently permit the three-month period to pass (which I will call a “recordation failure”). By this I mean that to avoid a recordation failure, one needs to aggressively docket the three-month period. The docket steps would be (a) receive the signed assignment from the client; (b) note the date of execution (which might not be the same as the date that we received the signed assignment from the client); (c) add three months to the date of execution to arrive at a drop-dead recordation date, and (d) docket the drop-dead date and one or two warning dates.
If there were a docket failure (failing to set the drop-dead date, or failing to blow whistles loudly enough toward the end of the three-month period) then this would lead to a recordation failure (failing to record the signed assignment within the three-month period set forth in 35 USC § 261).
In our office, we estimate that the internal cost to set and clear a docket is around $50. So if we can simply do something and get it done, rather than dragging our feet on the task, we don’t need to docket to remember to do whatever it is. And then we save $50.
So to emphasize the above point, if we record each signed assignment promptly after receiving it, this also avoids having to do the above-mentioned fuss of docketing the three-month period under 35 USC § 261. Once we record the signed assignment, we can stop worrying about setting and clearing dockets to remember to record the signed assignment.
The practitioner who makes a decision to postpone recording an assignment is creating a second risk. Whenever we sit on a signed assignment without recording it, we create the risk of misplacing the signed assignment . What if the document falls behind a desk? What if the breeze catches the document and it flies out the window? What if the file server where we store the PDF document crashes? What if the file server does not crash, but through some bad luck the PDF document gets stored in the wrong folder?
The USPTO’s assignment recordation system may thus be thought of as an offsite backup for signed assignments. Saying this a different way, the sooner the signed assignment is recorded, the sooner that one may stop worrying about the risk of misplacing it.
A nay-sayer might ask “yes but if I record each inventor’s assignment when it arrives, I will have to fill in the twenty or so fields of the EPAS system twice instead of once!” The answer to this, of course, is that when we are recording the first assignment, we should save a template. When the second assignment shows up, we can use the template to auto-populate nearly all of the fields of the EPAS system for that second recordation.
Do you think that what I have described is a Best Practice? Please post your comment below.
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8 replies to “best practice for recording us patent assignments”.
Fully agree! And file the 373. I docket neither of these, however I do have my own reminder system. Any new file opened automatically asks several questions in red, such as IDS filed? PoA filed? Assignment recorded? 373 filed? When done I turn each green. Because of 261, I treat newly received executed assignments as “drop everything and record this”. It is engrained. Jeff
So what happens if you record it beyond the 3 month execution date? Is it just not enforceable later during any potential litigation? Don’t we record assignments in divisional and cons, when one is recorded already in parent case? Aren’t those going to be more than 3 months from execution date?
The statute quoted in Carl’s post answers the “what if” Missing the three month deadline is almost always no big deal — not recording at all can turn into a HUGE problem! If you miss the three-month deadline for recording, the assignment is
void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.
The three-month deadline is just a “relation back” type rule.
I wish Carl would have replied to this, as he was requesting comments.
Is the order of recordation important? If ownership flowed from inventors to Company A then to Company B, could there be a problem (perhaps later in litigation) with recording the assignment from Company A to Company B first then later recording the assignment from the inventors to Company A?
The order of the recordation is, generally speaking, not important.
A person rendering an opinion as to title will not (or, at least, should not) pay much attention to the sequence in which the recordations took place.
The one limited area where a date of recordation might make some difference is that under 35 U.S. Code § 261 a filer who dawdles for too long (a filer who permits more than three months to pass after the date of execution of an assignment) could possibly end up on the wrong end of a document signed by a second second purchaser or mortgagee.
Question: In the following the statement, “for a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.1.” does “assignee” refer only to assignees who are not the original Applicants, or does it refer to Assignee-Applicants as well?
In other words, if GIZOMOCO was listed on the ADS as the original Applicant and the 373 was submitted at filing along with a copy of the document assigning the rights from the inventor(s)s to GIZMOCO but the assignment to GIZMOCO wasn’t recorded, will the patent issue to the GIZMOCO or to the inventor(s)?
First, there is no need to file a 3.73 if you list GIZOMOCO as the Applicant on the ADS.
Second, as Carl explains above, there is no reason to fail to record the assignment.
To answer your question: the issued patent will list as Assignee whomever is listed in Box 3 of the Issue Fee Transmittal, regardless of who is Applicant. But the Issue Fee Transmittal reminds you of the 37 C.F.R. 3.81 requirement you quote: to list an Assignee on the Issue Fee Transmittal, you must have recorded the chain of assignments from the inventors to that Assignee.
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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.
37 CFR 3.11 Documents which will be recorded. (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover ...
302-Recording of Assignment Documents. 302.01-Assignment Document Must Be Copy for Recording; 302.02-Translation of Assignment Document; 302.03-Identifying Patent or Application; 302.04-Foreign Assignee May Designate Domestic Representative; 302.05-Address of Assignee; 302.06-Fee for Recording; 302.07-Assignment Document Must Be Accompanied by ...
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 ...
The U.S. Patent and Trademark Office (USPTO) is streamlining the process for recording assignments and other documents relating to interests in patents and trademarks. Our new system will guide you through the steps of making a submission, provide easier editing capabilities, and allow you to see the progression and status of your submission.
The title listed on the published application or patent. This searchable database contains all recorded Patent Assignment information from August 1980 to the present. When the USPTO receives relevant information for its assignment database, the USPTO puts the information in the public record and does not verify the validity of the information.
Assignment Center is a web portal that allows users to access and manage patent and trademark assignments online. Users can search, record, and review assignments, as well as download forms and instructions. Assignment Center also provides links to FAQs and other resources related to patent and trademark assignments.
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.
Documents & Resources. What do I need to know about assignments? What you need to know, before filing (PDF) 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)
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"). ... To document ownership, you can often rely on an employee agreement, company policy, invention disclosure, or other employment-related documentation.
A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee (s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 . II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ...
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 ...
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 ...
This patent assignment is between , an individual a(n) (the "Assignor") and , an individual a(n) (the "Assignee"). The Assignor has full right and title to the patents and patent applications listed in Exhibit A (collectively, the "Patents").. The Assignor wishes to transfer to the Assignee, and the Assignee wishes to purchase and receive from the Assignor, all of its interest in the Patents.
This Patent Assignment Agreement is a comprehensive document designed to facilitate the transfer of patent ownership from the original patent owner, known as the assignor, to another party, known as the assignee. A patent is a legal grant issued by the United States Patent and Trademark Office (USPTO) to an inventor, providing exclusive rights to make, use, and sell their invention for a ...
This Patent Assignment (hereinafter referred to as the "Assignment") is made and entered into on (the "Effective Date") by and between the following parties: a. , (the "Assignor") AND. , (the "Assignee") WHEREAS, the Assignor is the sole and rightful owner of certain ideas, inventions, patent applications therefor and patents thereon ...
The docket steps would be (a) receive the signed assignment from the client; (b) note the date of execution (which might not be the same as the date that we received the signed assignment from the client); (c) add three months to the date of execution to arrive at a drop-dead recordation date, and (d) docket the drop-dead date and one or two ...
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.
Assignor Name: Assignor Index: Assignee Name: Assignee Index: Assignor/Assignee Name: The database contains all recorded Patent Assignment information from August 1980 to June 14, 2024 . If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350. v.2.6.
This Patent Assignment (hereinafter referred to as the "Assignment") is made and entered into on [Insert Effect Date] (the "Effective Date") by and between the following parties: [Insert Assignor Name] [Insert Assignor Address] (the "Assignor") AND [Insert Assignee Name] [Insert Assignee Address] (the "Assignee") WHEREAS the Assignor is the sole and rightful owner of certain ...
The date shown in the middle column above indicates when each form was last revised. For general assistance in completing the patent forms below or to request paper copies of the forms, contact the USPTO Contact Center Division at 1-800-786-9199 (1-800-PTO-9199) or 571-272-1000, and select option 2. To report a problem with a fillable patent ...
This Assignment is deemed to be executed and delivered within the State of Georgia, and it is the intention of the parties that it shall be construed, interpreted and applied in accordance with the laws of the State of Georgia without regard to its conflicts of law principles. [SIGNATURES ON FOLLOWING PAGE] (SIGNATURE PAGE TO PATENT ASSIGNMENT)
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 ...