• Find the point of novelty
  • Broadcast your rights
  • Turn ideas into assets
  • Drive forward
  • Draw the future

Tag: patent assignment

Filing an Assignment with a Patent Application

An assignment can be filed with a patent application to immediately convey control of the patent application to the assignee. This is frequently necessary where the inventor is an employee of a company that will be controlling the patent application. Only an inventor – a human – can be an applicant for a patent, not the company, so the inventor must be the initial applicant with a corresponding assignment conveying to the company thereafter. An assignment doesn’t need to be recorded with the USPTO to pass ownership of the patent application, but it must be on file to allow the company to control prosecution. The cleanest, simplest way of doing this is by drafting an assignment agreement, having the inventor and assignee-company sign it, notarizing it, and then recording it in the Patent Office at the time the application is filed.



Does a patent assignment need to be notarized?

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

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



What is a patent assignment?

A patent assignment is a transfer or sale of the entire interest in a patent.  That means all rights that were originally granted to the patentee transfer to the assignee.  Any other transfer of lesser than full rights in a patent is a license.

Assignments can be made before and after a patent application issues as a patent.  Within a large corporation setting, applications are typically immediately assigned from the inventor to the corporation so that the corporation can control the prosecution of the application through the Patent Office and so that it can add the eventual patent to its portfolio.  However, a patent can just as easily be assigned after it issues as an actual patent.

Patent assignments should generally be recorded to protect against subsequent transfers away from the assignor.  An unrecorded assignment is not effective against third party purchasers who do not otherwise have knowledge of the assignment.  There is no requirement with the Patent Office that an assignment be recorded, but it is generally a very good idea to do so, especially when the associated filing fees are very inexpensive.



What is a patent license?

Patents can be thought as a “bundle of rights.” An issued patent carries with it a number of exclusive rights, each of which can be divided up individually from the others – removed from the bundle like one of many pick-up sticks and given to another. A patent owner can therefore prevent anyone from making, using, or selling the invention in a way that contravenes their patent rights. And, reciprocally, the patent owner can grant a person an exception by giving them a license. Thus, a patent owner can license, say, the exclusive right to use an invention to Person A, the exclusive right to make an invention in the Southwest to Person B, and the exclusive right to sell an invention for 3 years to Person C. The license essentially says, “I won’t sue you for doing this….”

The bundle can be divided in an enormous number of ways. Generally, though, the license is limited in scope, geography, or time. A license that purports to transfer all the rights in a patent for the life of the patent is really an assignment.