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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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Patent Assignment Agreement - FREE - Sample, template

Country: United States

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Free Patent Assignment Agreement Template for Microsoft Word

Download this free Patent Assignment Agreement template as a Word document to help you assign the rights in an existing patent to a third party

Patent Assignment Agreement

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”)

[Insert Assignee Name] [Insert Assignee Address]

(the “Assignee”)

WHEREAS the Assignor is the sole and rightful owner of certain ideas, inventions, patent applications therefor and patents thereon (collectively referred to as the “Patents”) set forth in Exhibit A attached hereto; and

WHEREAS, the Assignee desires to purchase or acquire the Assignor’s right, title, and interest in and to the Patents; and

WHEREAS, the Assignor and Assignee are both duly authorized and capable of entering into this Assignment.

NOW, THEREFORE, for valuable consideration, the receipt of which is acknowledged, the parties hereto agree as follows:

1. ASSIGNMENT.

The Assignor does hereby sell, assign, transfer and set over to Assignee [Insert Amount]% of its right, title, and interest in the Patents to Assignee for the entire term of the Patents and any reissues or extensions and for the entire terms of any patents, reissues or extensions that may issue from foreign applications, divisions, continuations in whole or part or substitute applications filed claiming the benefit of the Patents. The right, title, and interest conveyed in this Assignment is to be held and enjoyed by Assignee and Assignee’s successors as fully and exclusively as it would have been held and enjoyed by Assignor had this assignment not been made.

The Assignor authorizes United States Patent and Trademark Office and any other applicable jurisdictions outside the United States to record the transfer of the patent and/or patent applications set forth in Exhibit A to Assignee as the recipient of Assignor’s right, title, and interest therein.

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

2. WARRANTY.

Assignor warrants that Assignor is the legal owner of all right, title, and interest in the Patents, that the Patents have not been previously pledged, assigned, or encumbered, and that this Assignment does not infringe on the rights of any person.

3. GOVERNING LAW.

This Assignment is governed by and is to be construed in accordance with the laws of the State of [Insert State].

4. ENTIRE AGREEMENT.

This Assignment constitutes the sole agreement of the parties and supersedes all oral negotiations and prior writings with respect to the subject matter hereof.

5. SEVERABILITY.

If one or more provisions of this Assignment are held to be unenforceable under applicable law, the parties agree to renegotiate such provision in good faith. If the parties cannot reach a mutually agreeable and enforceable replacement for such provision, then (i) such provision will be excluded from this Assignment, (ii) the balance of the Assignment will be interpreted as if such provision were so excluded and (iii) the balance of the Assignment will be enforceable in accordance with its terms.

6. ADVICE OF COUNSEL.

EACH PARTY ACKNOWLEDGES THAT, IN EXECUTING THIS AGREEMENT, SUCH PARTY HAS HAD THE OPPORTUNITY TO SEEK THE ADVICE OF INDEPENDENT LEGAL COUNSEL, AND HAS READ AND UNDERSTOOD ALL OF THE TERMS AND PROVISIONS OF THIS AGREEMENT. THIS AGREEMENT WILL NOT BE CONSTRUED AGAINST ANY PARTY BY REASON OF THE DRAFTING OR PREPARATION HEREOF.

IN WITNESS whereof, the Assignor and Assignee have executed this Agreement as of the Effective Date.

________________________________________________________________

By: ___________________________________ Date: __________________ [Insert Name of Assignor]

By: ___________________________________ Date: __________________ [Insert Name of Assignee]

List of Patents

U.S. Patent/Application number: _________________ Dated: _________________ Title: _________________

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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

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

Patent Assignment Agreement: Definition & Sample

Jump to section, what is a patent assignment agreement.

A patent assignment agreement is a document that transfers the rights to an invention or idea from one person or company to another. This agreement includes all necessary information such as the name and contact information for both parties, any limitations on what can be done with the patented technology, and how much money should change hands if someone licenses the patent.

Patent assignment agreements are not always needed when selling a product or process, but they need to be written if you want to protect your intellectual property (IP) rights and make sure no one else uses them without permission.

Common Sections in Patent Assignment Agreements

Below is a list of common sections included in Patent Assignment Agreements. These sections are linked to the below sample agreement for you to explore.

Patent Assignment Agreement Sample

Reference : Security Exchange Commission - Edgar Database, EX-10.19 4 dex1019.htm PATENT ASSIGNMENT AGREEMENT , Viewed December 14, 2021, View Source on SEC .

Who Helps With Patent Assignment Agreements?

Lawyers with backgrounds working on patent assignment agreements work with clients to help. Do you need help with a patent assignment agreement?

Post a project  in ContractsCounsel's marketplace to get free bids from lawyers to draft, review, or negotiate patent assignment agreements. All lawyers are vetted by our team and peer reviewed by our customers for you to explore before hiring.

ContractsCounsel is not a law firm, and this post should not be considered and does not contain legal advice. To ensure the information and advice in this post are correct, sufficient, and appropriate for your situation, please consult a licensed attorney. Also, using or accessing ContractsCounsel's site does not create an attorney-client relationship between you and ContractsCounsel.

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Patent Assignment Agreement

Lawyers within our network have agreed to share some of the documents they regularly use in the course of their practice along with annotations explaining different provisions and outlining decisions you might need to make. You can contact our lawyers and download a copy of this document .

This free template Patent Assignment Agreement would be used to assign some or all of the rights in an existing Patent to a third party. A Priori lawyer can help you customize it to meet your company's needs. You can learn more about the requirements to draft a legal binding Patent Assignment Agreement here , as well as when it would be more appropriate to use a Patent License Agreement . 

A lawyer is available for free consultations through Priori to discuss this document and much more.

ASSIGNMENT OF PATENT RIGHTS

_______________ to _____________

THIS ASSIGNMENT, effective the __ day of ________ 20__ by and between __________________, a _____________ residing at _____________________, (hereunder referred to as Assignor), and ____________________, a _______________ having  a place of business at ______________ (hereunder referred to as Assignee).

WHEREAS, Assignor is the owner of the entire right, title and interest in and to the patents and patent applications, and the inventions disclosed therein, (hereinafter referred to collectively as the Patent Rights) identified on the attached Schedule.

WHEREAS, Assignee is desirous of obtaining all right, title and interest in and to the inventions represented by the Patent Rights in the ________ ; and

WHEREAS, Assignor is agreeable to assigning the Patent Rights for the _____________ .

NOW, THEREFORE, for good and valuable consideration, the receipt of which is hereby acknowledged, the said Assignor has sold, assigned, transferred and set over, and by these presents does hereby sell, assign, transfer and set over, unto the said Assignee, its successors, legal representatives and assigns as of the effective date recited above, all right, title and interest in, to and under the Patent Rights in the _________ , including specifically the right to claim priority from said Patent Rights as fully and entirely as the same would have been held and enjoyed by Assignor if this assignment and sale had not been made, together with all claims for damages by reason of past infringement of the Patent Rights with the right to sue for and collect the same for Assignee’s own use and enjoyment, and for the use and enjoyment of its successors, assigns or other legal representatives.

Assignor hereby covenants that it has full right to convey the rights herein assigned, and that it has not executed, and will not execute, any agreements in conflict herewith.

This assignment may be executed in any number of counterparts, each of which will be deemed an original, but all of which together constitute one and the same instrument.  Executed signature pages to this assignment may be delivered by facsimile, or by email in portable document format (.pdf) and delivery of the signature page by such method will have the same effect as if the original signature had been delivered by the sending party to the receiving party.

IN WITNESS WHEREOF the said Assignor and Assignee have caused their respective corporate and legal names to be hereto signed.

                                         ASSIGNOR

______ __, 20__              By:__________________________

                                         Name:  _______________________

                                 Title:  ________________________  

______ __, 20__               By:__________________________

                                          Name:  _______________________ Title:  ________________________ Schedule Assignment of Patent Rights    

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

The Assignor has invented certain new and useful inventions (the " Inventions ") and has applied for patents on the Inventions, which are listed on Exhibit A (collectively, the " Applications ").

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 Inventions and Applications.

The parties therefore agree as follows:

1. ASSIGNMENT OF APPLICATIONS.

Effective as of the Effective Date, the Assignor assigns to the Assignee, and the Assignee assumes from the Assignor, all of the Assignor's interest in the following in the following in the United States and its territories and throughout the world:

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

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. AUTHORIZATION TO DIRECTOR.

The Assignor hereby authorizes the director of the United States Patent & Trademark Office to issue all patents and registrations that may be granted on the Inventions to the Assignee, as the assignee of the entire interest in those, for the Assignee's sole use to the full end of the term for which those patents may be granted, as fully and entirely as they would have been held by the Assignor had this assignment and sale not been made.

4. NO EARLY ASSIGNMENT.

The Assignee may not assign or otherwise encumber its rights in the Inventions, Applications, or 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. ASSIGNOR'S REPRESENTATIONS.

The Assignor hereby represents to the Assignee that it:

• (a) is the sole owner of all interest in the Inventions and the Applications;
• (b) has not assigned, exclusively licensed, or encumbered any Invention or Application or agreed to do so;
• (c)  is not aware of any violation or infringement of any third party's rights (or any claim of a violation or infringement) by the Inventions or Applications;
• (d) is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment; and
• (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 Inventions purportedly assigned in section 1.

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.

6. DOCUMENTATION.

The Assignor will, as soon as is reasonably possible following a request from the Assignee, provide the Assignee with a complete copy of all documentation (in any format) relating to the Inventions and Applications for the Assignee's own use, to meet record-keeping requirements of the Assignee, or to allow the Assignee to assert its rights granted pursuant to this assignment. The Assignor will also, on request and without further consideration:

• (a) execute and deliver, or cause to be executed and delivered, to the Assignee any additional papers, including any separate assignments of the Inventions or Applications, reasonably necessary to record the assignment in the United States and throughout the world;
• (b) generally do all other lawful acts reasonable and necessary to record the assignment in the United States and throughout the world; and
• (c) execute all lawful papers that may be required in connection with the filing, prosecution, and maintenance of the Applications or any other patent applications in the United States for the Inventions, including additional documents that may be required to affirm the rights of the Assignee in the Inventions.

7. NO FURTHER USE OF INVENTIONS.

After the Effective Date, the Assignor shall make no further use of the Inventions or any equivalent, except as authorized by the prior written consent of the Assignee, and the Assignor shall not challenge the Assignee's use or ownership, or the validity, of the Inventions. 

8. INDEMNIFICATION.

The Assignor shall indemnify the Assignee against: If any of the Applications or Inventions infringe on a United States patent of a third party not affiliated with the Assignee, the Assignor shall indemnify the Assignee against that claim, if all of the following are true:

• (a) any claim by a third party that the Applications, the Inventions, or their creation, use, exploitation, assignment, importation, or sale infringes on any patent or other intellectual property; (a) the Assignee promptly notifies the Assignor of that claim;
• (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; (b) the Assignor controls the defense and settlement of that claim;
• (c) any claim relating to a past, present, or future use, licensing, sublicensing, distribution, marketing, disclosure, or commercialization of the Inventions by the Assignor; and (c) the Assignee fully cooperates with the Assignor in connection with its defense and settlement of that claim; and
• (d) any litigation, arbitration, judgments, awards, attorneys' fees, liabilities, settlements, damages, losses, and expenses relating to (a), (b), or (c) above. (d) the Assignee stops all creation, public use, exploitation, importation, distribution, or sales of or relating to the infringing Applications or Inventions, if requested by the Assignor.

If the Assignee is enjoined from further practice or use of any infringing Applications or Inventions or if the Assignee stops using any of the Inventions because of the Assignor's request (as described in (d) above), the Assignor shall, at its own expense:

• (a) obtain the right for the Assignee to continue to use the infringing Invention;
• (b) modify the infringing Invention to eliminate that infringement;
• (c) provide a substitute noninfringing Invention to the Assignee pursuant to this assignment; or
• (d) refund the amount paid under this assignment for the infringing Inventions gnee.

The Assignor shall have no other obligations or liability if infringement occurs, and shall have no other obligation of indemnification relating to infringement. The Assignor will 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 Applications or Inventions not made by the Assignor or (ii) 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, .
• (c) Attorneys' Fees. If either party employs attorneys to enforce any rights arising out of or relating to this assignment, the losing party shall reimburse the prevailing party for its reasonable attorneys' fees.

10. AMENDMENTS.

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

11. ASSIGNMENT AND DELEGATION.

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

12. COUNTERPARTS; ELECTRONIC SIGNATURES.

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

13. SEVERABILITY.

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

14. NOTICES.

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

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

15. WAIVER.

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

16. ENTIRE AGREEMENT.

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

17. HEADINGS.

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

18. EFFECTIVENESS.

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

19. NECESSARY ACTS; FURTHER ASSURANCES.

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

[SIGNATURE PAGE FOLLOWS]

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

[PAGE BREAK HERE]

EXHIBIT A LIST OF APPLICATIONS

FORM OF RECORDABLE PATENT APPLICATION ASSIGNMENT

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

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

ATTACHMENT A ASSIGNED PATENT APPLICATIONS

Free Patent Application Assignment Template

What's a patent application assignment.

When a company buys patent applications, it should ensure the party selling them owns them. A patent application assignment transfers patent ownership and rights while still pending. This agreement helps the buyer and seller by providing a record of ownership and transfer.

Here's the information you'll need to have handy to complete your patent application 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 and the invention's application number and date

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Drafting Effective Patent Assignment Contracts

When drafting effective patent assignment contracts, it is vital to precisely define the patent rights transferred, specify the assignment scope, and identify the parties involved. A clear understanding of patent assignment basics is fundamental for traversing the complex landscape of intellectual property transactions. The contract should outline the assignment term, duration, and termination provisions, as well as the consideration value and risk allocation strategies. Effective dispute resolution procedures and post-assignment obligations must also be established. By carefully crafting each element, parties can secure a successful transfer of patent rights. A thorough examination of these key components can reveal additional nuances and critical considerations.

Table of Contents

Understanding Patent Assignment Basics

A patent assignment is a legal agreement that transfers ownership of a patent or patent application from one entity to another, typically involving the transfer of rights, titles, and interests in the intellectual property. This transfer is a crucial aspect of intellectual property law, as it allows inventors, companies, and organizations to buy, sell, and license their innovations. A thorough understanding of patent assignment basics is essential for navigating the complex landscape of intellectual property transactions.

Patent assignment has a rich history, dating back to the early days of patent law . The concept of transferring patent rights has evolved significantly over time, shaped by court decisions, legislative reforms, and changes in the intellectual framework. Today, patent assignments play a vital role in facilitating innovation, driving technological progress, and fostering economic growth. By grasping the fundamental principles of patent assignment, parties can ensure that their intellectual property rights are properly protected, licensed, and enforced. A solid understanding of these basics is critical for drafting effective patent assignment contracts that meet the needs of all parties involved.

Defining the Patent Rights Transferred

When executing a patent assignment contract, it is imperative to precisely define the patent rights being transferred, as this clarity is critical to verifying that the assignee's expectations are met and the assignor's obligations are fulfilled. A clear definition of the patent rights transferred confirms that both parties understand the scope of the assignment, avoiding potential disputes and misinterpretations.

| Patent Improvements | Defines whether improvements are included in the assignment | Determines the assignee's rights to future enhancements

Specifying the Assignment Scope

When specifying the assignment scope, it is crucial to clearly outline the patent rights being transferred, including the specific patents, patent applications, or inventions being assigned. This scope also covers the assignment term details, which may include the effective date, duration, and termination provisions. Additionally, the contract should identify any excluded intellectual property, making certain that both parties are aware of what is being transferred and what is being retained.

What to Assign

Specifying the scope of assignment is vital, as it determines the exact patent rights and interests being transferred to the assignee. This provision outlines the patent scope, defining the intellectual boundaries of the assignment. It is imperative to clearly identify the specific patents, patent applications, or inventions being assigned, including any related intellectual property rights.

The assignment scope should be tailored to the specific needs of the parties involved, taking into account the purpose of the assignment and the desired outcome. This may include specifying the jurisdictional scope, the type of patent rights being transferred, and any limitations or exceptions to the assignment. For instance, the assignment may be limited to a specific geographic region or field of use, or it may exclude certain patent rights, such as the right to sublicense.

Assignment Term Details

Defining the assignment term details is vital, as it outlines the duration and nature of the patent rights transfer, thereby establishing the parameters of the assignee's ownership. This section of the patent assignment contract specifies the term duration, which can be perpetual, fixed, or conditional. A perpetual term grants the assignee ownership for the entire life of the patent, while a fixed term limits the ownership to a specific period. Conditional terms, on the other hand, specify certain events or milestones that must be met for the assignment to take effect or continue.

Expiration clauses are also key in assignment term details, as they outline the circumstances under which the assignment will terminate. These clauses may include events such as patent expiration, non-payment of royalties, or breach of contract. It is imperative to carefully draft these clauses to guarantee that they align with the parties' intentions and protect their interests. By clearly defining the assignment term details, parties can avoid disputes and facilitate a smooth transfer of patent rights.

Excluded Intellectual Property

The patent assignment contract's scope is further refined by identifying excluded intellectual property, which may include trade secrets, know-how, or other proprietary information that the assignor wishes to retain or reserve for future use. This is crucial to ensure that the assignor is not inadvertently assigning valuable intellectual property that is not intended to be part of the agreement.

Identifying the Assignor and Assignee

In a patent assignment contract, accurately identifying the assignor and assignee is vital to facilitate a valid transfer of rights. The assignor, typically the patent owner, must be clearly defined to establish their authority to assign the patent. The assignee's capacity, whether as an individual or entity, also requires precise definition to avoid ambiguity and potential disputes.

Assignor's Identity Matters

Specifically, the assignor's identity plays a pivotal part in a patent assignment contract, as it directly impacts the validity and enforceability of the assignment. It is imperative to accurately identify the assignor, verifying that the entity or individual transferring the patent rights is correctly named. This includes entity verification, which involves confirming the assignor's legal existence and good standing. Failure to properly identify the assignor can lead to issues with the assignment's validity, potentially rendering it unenforceable.

Moreover, identity protection is paramount, as the assignor's personal or business information may be sensitive. The contract should strike a balance between disclosing necessary information and maintaining confidentiality. The assignor's identity should be clearly stated in the contract, along with their capacity to assign the patent rights. This clarity is key in preventing disputes and facilitating a smooth transfer of ownership. By accurately identifying the assignor, parties can establish a valid and enforceable patent assignment contract that protects their interests.

Assignee's Capacity Defined

Upon execution of the patent assignment contract, it is vital to define the assignee's capacity to receive and exercise the assigned patent rights, thereby establishing a clear understanding of the assignee's function and responsibilities. This involves identifying the assignee's legal status, including its entity authority to enter into the agreement. The assignee's capacity may be defined as an individual, corporation, limited liability company, partnership, or other legal entity. It is imperative to specify the assignee's capacity to avoid ambiguity and guarantee that the patent rights are assigned to a legally recognized entity with the authority to receive and exercise them.

The assignee's capacity should be clearly stated in the contract to avoid disputes or misunderstandings. For instance, if the assignee is a corporation, it should be specified whether the corporation is acting in its individual capacity or as an agent for another entity. Additionally, the contract should outline the assignee's responsibilities, such as maintaining confidentiality, paying royalties, and defending the patent rights. By clearly defining the assignee's capacity, the contract establishes a foundation for a successful patent assignment that safeguards the interests of all parties involved.

Determining the Consideration Value

Determining the consideration value in a patent assignment contract is a crucial step, as it directly impacts the rights and obligations of both the assignor and assignee. The consideration value represents the payment or compensation provided by the assignee to the assignor in exchange for the patent rights. To determine a fair consideration value, parties should consider the patent's fair market value, which can be estimated through various methods such as the income approach, market approach, or cost approach.

In addition to the patent's fair market value, parties should also consider any hidden assets or liabilities associated with the patent. Hidden assets may include potential licensing opportunities or pending litigation, while hidden liabilities may include ongoing maintenance fees or potential infringement claims. Failing to account for these factors can lead to an inaccurate consideration value, giving rise to disputes or unfair agreements. By carefully evaluating the patent's fair market value and considering any hidden assets or liabilities, parties can establish a consideration value that reflects the patent's true worth and facilitates a mutually beneficial agreement.

Addressing Representations and Warranties

In addition to establishing a fair consideration value, parties to a patent assignment contract must also address representations and warranties to allocate risk and facilitate a smooth transfer of patent rights. Representations and warranties are vital in providing accurate information about the patent and its validity, while the assignee relies on such representations to make informed decisions. The contract should clearly outline the representations and warranties made by the assignor, including those related to patent validity, infringement, and ownership. This includes warranties that the patent is free from encumbrances, that the assignor has the right to assign the patent, and that the patent is not subject to any pending or threatened litigation . The contract should also specify the remedies available in the event of warranty breaches, such as indemnification or termination of the agreement. By addressing representations and warranties, parties can mitigate the risk of warranty disputes and guarantee a successful transfer of patent rights.

Allocating Risks and Liabilities

When allocating risks and liabilities in a patent assignment contract, parties must carefully consider the distribution of potential risks and consequences. Effective risk allocation strategies can help mitigate losses and guarantee that each party is accountable for their respective obligations. By incorporating limitation of liability clauses and indemnification provisions, parties can better manage potential exposures and establish a more balanced agreement.

Risk Allocation Strategies

A patent assignment contract's risk allocation strategy plays a critical function in defining the responsibilities and liabilities of each party involved, thereby minimizing potential disputes and facilitating a seamless transfer of ownership. This strategy involves identifying, assessing, and allocating potential risks and liabilities between the assignor and the assignee. Effective risk allocation strategies can help mitigate potential losses and ensure that each party is aware of their obligations and responsibilities.

To achieve optimal risk allocation, consider the following strategies:

• Risk Mitigation : Identify potential risks and take proactive measures to minimize or eliminate them.
• Liability Caps : Establish a maximum amount of liability for each party, providing a clear understanding of their potential exposure.
• Indemnification Provisions : Include provisions that require one party to compensate the other for losses or damages resulting from specific events or actions.
• Warranty and Representation Clauses : Include clauses that outline specific warranties and representations made by each party, providing a clear understanding of their commitments and obligations.

Limitation of Liability Clauses

Limitation of liability clauses play a vital function in patent assignment contracts, as they enable parties to allocate risks and liabilities by establishing the maximum extent of their financial responsibility in the event of a breach or other specified circumstances. These clauses are indispensable in managing the financial risks associated with patent assignment agreements, protecting that neither party is disproportionately burdened.

| Damage Caps for Specific Breaches | Sets specific financial limits for damages stemming from specific breaches

Indemnification Provisions

Indemnification provisions in patent assignment contracts serve as a crucial risk allocation mechanism, allowing parties to shift potential liabilities and costs to the responsible party in the event of a breach or other specified circumstances. These provisions allocate risks and liabilities between the assignor and assignee, providing financial protection and minimizing potential losses.

When drafting indemnification provisions, it is essential to consider the following key aspects:

• Scope Limit : Define the scope of indemnification, specifying the types of claims, damages, or losses covered.
• Liability Triggers : Identify the events or circumstances that trigger the indemnification obligation, such as patent infringement or breach of warranty.
• Indemnification Procedure : Outline the procedure for notifying and responding to indemnification claims, including notice periods and dispute resolution mechanisms.
• Caps and Exclusions : Establish limits on indemnification liability and specify exclusions, such as intentional misconduct or gross negligence.

Establishing Dispute Resolution Procedures

By incorporating clear and concise dispute resolution procedures into the patent assignment contract, parties can mitigate potential conflicts and provide assurance of efficient resolution of disputes that may arise during the term of the agreement. This can be achieved by specifying the procedures to be followed in the event of a dispute, including the selection of Arbitration Forums and the implementation of Mediation Protocols.

It is vital to define the scope of disputes subject to resolution, the jurisdiction, and the applicable law. The contract should also outline the process for initiating dispute resolution, including the notice period, the method of service, and the response timeframe. Additionally, the contract should specify the rules governing the dispute resolution process, such as the rules of evidence, the function of specialists, and the admissibility of documents. By establishing a clear and detailed dispute resolution procedure, parties can avoid costly and time-consuming litigation, resulting in swift and efficient resolution of disputes. This, in turn, will facilitate a smoother and more effective collaboration throughout the term of the agreement, thereby promoting a successful partnership.

Notifying and Obtaining Consent

In patent assignment contracts, notification and consent provisions play a vital function in guaranteeing that all parties are informed and aligned with key decisions, thereby facilitating a collaborative and mutually beneficial partnership. These provisions ensure that all stakeholders are aware of crucial developments and are in agreement with significant changes, thereby fostering trust and cooperation.

To effectively notify and obtain consent, consider the following:

• Specify notification methods : Clearly outline the acceptable methods for providing notice, such as email, certified mail, or in-person communication.
• Define consent requirements : Establish the necessary level of consent required for key decisions, such as majority vote or unanimous agreement.
• Establish timelines for consent : Set specific deadlines for obtaining consent to ensure timely decision-making.
• Maintain a record of consent : Keep a detailed record of all notifications and consents obtained to ensure legal compliance and stakeholder engagement.

Ensuring Post-Assignment Obligations

Post-assignment obligations are a critical component of patent assignment contracts, as they dictate the responsibilities and liabilities of the assignor and assignee following the transfer of patent rights. These obligations clarify the duties and commitments of both parties after the assignment, thereby preventing potential disputes and ambiguities.

In particular, post-assignment obligations may include ongoing support and maintenance of the assigned patent, such as updating and renewing the patent, as well as providing necessary documentation and information to the assignee. The assignor may also be required to cooperate with the assignee in any future litigation or disputes related to the patent. Additionally, the assignor may be liable for any claims or damages arising from the patent's use or infringement prior to the assignment.

To facilitate effective post-assignment obligations, it is vital to clearly outline the specific responsibilities and liabilities of each party in the contract. This includes defining the scope of ongoing support, the duration of such support, and the consequences of non-compliance. By doing so, both parties can minimize potential risks and disputes, and facilitate a seamless handover of patent rights.

Frequently Asked Questions

Can patent assignment contracts be electronically signed?.

Yes, patent assignment contracts can be electronically signed, leveraging digital signatures and electronic authentication methods, such as encrypted certificates and biometric verification, to verify and confirm the authenticity and validity of the agreement.

What Happens if the Assignor Goes Bankrupt After Signing?

In the event of assignor bankruptcy post-signing, bankruptcy clauses in the assignment contract can safeguard the assignee's interests, protecting asset protection and preventing patent rights from being included in the bankrupt estate.

How Do I Protect Trade Secrets in the Assignment Contract?

To safeguard trade secrets, incorporate confidentiality clauses and non-disclosure agreements (NDAs) into the assignment contract, specifying the assignee's obligations to maintain secrecy and restrict access to sensitive information.

Can a Patent Assignment Contract Be Amended or Updated?

Yes, a patent assignment contract can be amended or updated through contract revisions, but such changes typically require mutual consent from all parties involved, verifying that the modified agreement accurately reflects their intentions and obligations.

Do Patent Assignment Contracts Need to Be Notarized?

Notarization of patent assignment contracts is not universally required, as legal formalities and jurisdictional requirements vary; however, it is recommended to verify authenticity and prevent disputes, particularly in jurisdictions where notarization is customary or mandated.

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Managing a patent

Once you receive a patent, it is important for you, the patent owner, to understand the nature of your rights and how they can be maintained, enforced, transferred, and protected. This section describes patent rights , factors when managing your patent after it’s issued, and how a patent can be infringed .

These factors include patent markings , determining a patent term , maintaining a patent in force, and correcting a patent. This section also defines patent ownership and how it can be assigned or licensed .

Nature of rights

The patent grant confers “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” The term of a utility or plant patent generally lasts 20 years from the date the application was filed in the United States or, if the application specifically refers to an earlier application filed under  35 U.S.C. 120 ,  121  or  365(c) , from the earliest date of filing and subject to payment of maintenance fees.

To carefully distinguish the exact nature of the patent right conferred, the key phrase above is “right to exclude.” The patent does not grant you the right to make, use, offer for sale, or sell or import the invention, but only the right to exclude others from doing so. Given that a patent only gives the right to exclude, the patent holder’s ability to practice an invention depends on the rights of others (for example, an earlier inventor may have a patent covering an aspect of the invention) and on applicable laws (including if exercising the rights related to the invention would violate any law).

When a utility patent is granted, a maintenance fee is due 3½, 7½, and 11½ years after the original grant in order to keep the patent in force. After the patent has expired, anyone may make, use, offer for sale, or sell or import the invention without permission, as long as such activities are not covered by other unexpired patents. Patent terms may be extended or adjusted under certain circumstances as provided by law.

Patent marking and patent pending

A patent owner who makes or sells patented articles, or someone who does so with the owner’s permission, may notify the public that the article is patented by marking the articles with the word “patent” and its patent number. If you, the patent owner, fail to mark the article accordingly, you may not recover damages unless the infringer was duly notified of the infringement and continued to infringe after the notice ( 35 U.S.C. § 287 ).

Marking an article as patented when it is not is unlawful and subjects the offender to a penalty. Some people mark articles for sale with the terms “Patent Applied For” or “Patent Pending.” These phrases have no legal effect, but only inform the public that a patent application has been filed with the USPTO. Patent protection does not start until actually granted. False use of these phrases or their equivalent is prohibited and subject to a fine, and those suffering competitive injury as a result may seek damages to compensate.

Patent term extension and adjustment

The terms of certain patents may be extended or adjusted under  35 U.S.C. 154(b) . Extension or adjustments result from certain delays in a pending patent application. 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] ).
• The failure of the USPTO to issue a patent within three years of the actual filing date of the application in the United States, or, in an international application, from when the national stage begins (see  37 CFR 1.702[b]  and 1.703[b]).
• Delays as set in  35 U.S.C. 154(b)(1)(C) , including those due to interference or derivation proceedings under 35 U.S.C. 135(a), secrecy orders under 35 U.S.C. 181, or certain instances of successful appellate review (see  37 CFR 1.702(c)-(e)  and  1.703(c)-(e) ).

In addition, the terms of certain patents may be extended to compensate the patent owner for term lost due to certain regulatory review procedures of the U.S. Food and Drug Administration or the Department of Agriculture. See the Manual of Patent Examining Procedure starting in Section 2750 for more information.

Any PTA will be reduced by the time period during which you fail to engage in reasonable efforts to conclude prosecution of the application (see  35 U.S.C. 154[b][2][C] ). A non-exclusive list of activities constituting such failure is found in 37 CFR 1.704 ..

The PTA determination is provided with the Issue Notification Letter prior to the issue date and is indicated on the face of the patent. To request reconsideration of this determination, an application for PTA must be filed within two months from the patent grant date (see  37 CFR 1.705 [b]). The two months time period may be extended under the provisions of § 1.136(a).

The USPTO does not calculate expiration dates for patents. Instead it provides a downloadable  patent term calculator  to help you estimate the expiration date.

Maintenance fees

After the USPTO issues a utility patent, the patent owner must periodically pay fees to maintain the patent in force. No fees are required to maintain a design or plant patent in force.

Maintenance fees  are required to keep in force all utility and reissue utility patents based on applications filed on or after December 12, 1980. These fees are due 3½, 7½, and 11½ years from the date the patent is granted. Failure to pay on time may cause the patent to expire. Plant and design patents are not subject to these fees.

A six-month grace period immediately following the due date allows for payment with a surcharge. The USPTO does not mail notices that these fees are due. If, however, a maintenance fee is not paid on time, the USPTO may send a reminder of the ability to pay with a surcharge during the grace period. If the fee and the surcharge are not paid during the grace period, the patent expires on the date the grace period ends.

In submitting maintenance fees and any applicable surcharges, identification of the related patents must include the patent number and U.S. application number. If the payment includes only the patent number, the USPTO may apply payment to the patent identified by number, or return the payment (see  37 CFR 1.366[c] ).

Correction of patents

Certificates of correction.

Once the patent is granted, it is outside USPTO jurisdiction, with certain exceptions. The USPTO may issue without charge a certificate correcting a clerical error, where the printed patent does not correspond with the official record (mostly corrections of typos). Good-faith clerical errors, or those of minor character, made by you rather than the USPTO, may be corrected by a certificate of correction, requiring a fee. For more information, see MPEP 1481 .

When the patent is defective and cannot be corrected by a certificate of correction, the patent holder may apply for a reissue patent. Following an evaluation of proposed changes to correct any defects in the original patent, a reissue patent can be granted to replace the original, but only for the rest of the unexpired term.

The scope of changes in a reissue is limited; new matter cannot be added. For more information, see MPEP 1401 .

Reexamination

Anyone (including the patent owner) may file a reexamination request, along with the required fee, to reevaluate the patentability of issued claims on the basis of prior art consisting of patents or printed publications. Generally, at the end of the reexamination proceeding, the USPTO issues a certificate detailing the results.

You, the patent holder, may disclaim one or more claims from your patent by filing a disclaimer as provided by Statute  35 U.S.C. 253 . The  Office of Data Management (ODM)  handles corrections to patent publications.

Patent ownership gives the owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed. A patent may be owned jointly by two or more entities. Also, the owner may assign a part interest in a patent to another entity.

In the absence of any agreement to the contrary, any joint owner of a patent, no matter how small the part interest, may make, use, offer for sale, sell, and import the invention for personal profit without accounting to the other owners. However, the ability to practice the invention may be constrained by the applicable (non-patent) laws and the rights of others. Joint owners may sell their interest or any part of it, or grant licenses to others, without regard to other joint owners, unless a contract governs their relationship.

Jointly owned or partially assigned patents affect people’s rights. So if you are in such a situation, consult with an attorney to understand the law and protect your rights.

For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the original application unless there is a recorded assignment (see 37 CFR 3.73[a]). For applications filed before then, patent or application ownership initially vests in the named inventors.

Assignments and licenses

A patent is personal property and may be sold or mortgaged, written into a will, and passed to one’s heirs. An experienced, licensed patent attorney can help with licensing agreements and assignments. Some states have set certain formalities to be observed in the sale of patent rights.

Assignments

The transfer or sale of a patent or application is executed through an assignment. Patent law also provides for assignment of part interests (half, fourth, etc.) in a patent. Upon assignment, the assignee becomes the owner of the patent and has the same rights as the original owner.

If the patent is mortgaged, ownership passes to the lender until the mortgage has been satisfied and retransferred to the borrower. Assignments which are made conditional on the performance of certain acts or events, such as the payment of money or other subsequent condition, if recorded in the USPTO, are regarded as absolute assignments for USPTO purposes until canceled with the written consent of all parties or by the decree of a court of competent jurisdiction. The USPTO does not determine whether such conditions have been fulfilled.

An assignment, grant, or conveyance of any patent or application may be acknowledged before a notary public or officer authorized to administer oaths or perform notary acts. The certificate of such acknowledgment constitutes  prima facie  evidence of the execution of the assignment, grant, or conveyance. The USPTO records assignments, grants, and similar instruments submitted for recording, and the recording serves as notice. If an assignment, grant, or conveyance of or interest in a patent or application is not recorded within three months from its date, it is void against a subsequent purchaser for a valuable consideration without notice, unless recorded prior to the subsequent purchase.

Patent rights may also be licensed to others by its owner. In a patent license agreement, the one receiving the license essentially promises not to sue the patent owner. No particular form of license is required — it is a contract including agreed-upon provisions (royalty payments, for example).

Assignments may be submitted online or on paper. Use Assignment Center to create and submit the appropriate online forms and supporting legal documents. Use the  Patent Assignment Search Tool  to search the database of all recorded patent assignment information since 1980.

Patent databases must be able to identify patents by their number, and include the issue date, name of the inventor, and stated title of the invention to avoid misidentifying the patent being assigned. Similarly, patent applications must also be identifiable by their number, date of filing, name of the inventor, and title of the invention.

Sometimes assignment of an application is executed at the same time as or after preparing it, but before filing at the USPTO. Such assignment must identify the application — by name of the inventor(s) and title of the invention.

When an application has been assigned, and the assignment recorded or filed for recordation, the patent will be issued to the assignee as owner, if the name of the assignee is provided when the issue fee is paid and the patent is requested to be issued to the assignee. If the assignment is of a part interest only, the patent will be issued to the inventor and assignee as joint owners.

The owner(s) of a patent may request sale or license listings in the  Official Gazette . See our  change and search of ownership  page for more information.

Infringement of patents

Patent infringement consists of “unauthorized making, using, offering for sale, or selling any patented invention within the United States, or importing into the United States any patented invention during its term.” You the patent owner may sue in federal court to stop the infringement and ask for financial damages.

Accused infringers may argue that their actions do not constitute infringement. Determining infringement primarily involves comparing the language of the patent claims to an accused product or process. The parties might hire expert witnesses to help the court understand the issues.

Although U.S. patents are presumed valid, a common defense to an accusation of infringement is to argue that the patent in question is invalid. A federal court makes the final decision.

The USPTO has no jurisdiction over infringement questions. In examining patent applications, the USPTO does not determine whether the invention sought to be patented may infringe a product or process. An invention may be able to be patented, but might also be covered by a prior unexpired patent, since a patent does not grant the right to use an invention.

The U.S. government may use any patented invention without permission of the patent owner, but the owner is entitled to compensation for such use.

For more detail on this topic, see  35 U.S.C. § 271 ,  35 U.S.C. § 281 ,  35 U.S.C. § 282 ,  35 U.S.C. § 283 , and  35 U.S.C. § 284 .

Additional information about this page

IP Assignment and Licensing

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

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

IP rights assignment

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

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

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

IP for Business Guides

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

Read IP for Business Guides

IP licensing

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

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

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

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

Technology licensing agreements

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

• Learn more about Technology Transfer .

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• Alienation of the exclusive right to a trademark

Alienation of the exclusive right to a trademark in Russia

The term "alienation" used in relation to a trademark means that by transferring (assigning) or selling the rights to this type of intellectual property, the original owner loses them completely. Such an action is appropriate for the purposes of:

• business restructuring;
• taking advantage of the sale;
• retention of rights in the situation of liquidation of the company by transferring rights (for example) to a subsidiary or sole proprietorship (director or other person);
• saving the successor in time for registration of the mark.

Registration of trademark alienation agreement

According to the rules governing this process, the exclusive right to trademark may only be transferred to a legal entity or entrepreneur, a natural person is excluded in this case.

Transfer of a trademark for use is made on the basis of an agreement on alienation of trademark.

When drafting the agreement, the following conditions must be kept in mind:

• the subject matter of the agreement provides the numbers of certificates, classes of the Nice Classification and the goods/services for which the agreement is made;
• the value of the transaction for the sale of the trademark is prescribed, since a gratuitous transfer of rights to the trademark is excluded by law due to the recognition of such a transaction as a donation, which contradicts the purpose of entrepreneurial activity,
• assignment of rights to a trademark under the contract of alienation implies the transfer to another person not the trademark itself, but the rights to it.

Transaction features you need to know

Before entering into an agreement, it is advisable to verify that the trademark has been used in commercial activities for a period of 3 years prior to the transaction, since there is a risk of the acquired mark being cancelled due to non-use, should interested parties be found in it.

The state duty, which is charged for the contract of alienation of the trademark, can be paid by either party.

If the right holder has very similar trademarks in the same classes of the Nice Classification, it will be necessary to assign them all, as the law does not allow different owners to have very similar trademarks due to the risk of the possibility of misleading consumers.

Stages of the transaction to alienate a trademark

Stage 1 .  TK Cost Estimation.

Stage  2.  Preparation of the contract.

Stage  3.  Drawing up an application to be submitted for foreclosure.

Stage  4.  Payment of the patent fee.

The procedure for alienation of rights to trademarks takes about three months (the usual period is 45 business days). During this time, the FIPS checks the paperwork and the transaction on the merits.

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