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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.

The basics of patent assignments

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

Find out more about Patents

by   Cindy DeRuyter, Esq.

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

Read more...

Updated on: December 4, 2023 · 2min read

Defining Patent Assignment

Requirements to assign a patent, searching for patent assignments.

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

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

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

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

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

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

Here are the requirements for a valid written assignment:

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

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

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

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

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What is a Patent Assignment?

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

What is a Patent Assignment ?

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

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

An assignment transfers the ownership of the patent from the inventor or employee to the company for which he is working. That said, assignments can also be made by any two parties that agree to transfer ownership of a patent.

So, now we know that a patent holder can transfer his patent rights to a third party, can an inventor assign a pending patent application? Absolutely, yes! An inventor can assign his rights under a pending patent application to another party.

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

What is a Patent Assignor?

A patent assignor is a party that transfers it’s interest and right to the patent to the transferee (assignee) or the party receiving the patent. Once an agreement is executed and recorded with the patent office, the assignee becomes the patent right holder.

What is a Patent Assignee?

A patent assignee is a person to whom the patent rights are transferred to. Said differently, the assignee is the new owner of the patent. An assignee should immediately record an assignment agreement with the patent office to establish his rights as the new patent owner.

Requirements to Execute a Patent Assignment Agreement

For a patent holder to assign (transfer) his interest in a patent to another party, the assignor (person transferring patent rights) must execute a written agreement that includes details, such as the name of the assignor and the assignee, as well as the patent that is to be assigned (transferred) to the assignee.

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

The assignment agreement must include the following information:

• The agreement must contain the legal names of both the assignor (person transferring patent rights) and the assignee (person receiving patent rights).
• The agreement must clearly identify the patent by stating the name of the patent, as well as the patent number.
• The terms of the agreement must be included in the assignment agreement.
• Both the assignor(s) and assignee(s) must sign the agreement.

Who Owns the Patent After a Patent Assignment?

Once the assignor and assignee execute an assignment agreement and file the assignment with the USPTO, the assignee owns the patent. As the new patent owner, the assignee will have the right to stops others from using, making, and selling the patented invention for the remaining patent term.

The assignor (person who transferred his rights) loses his rights under the patent and will no longer be able to enforce the patent. Assigning a patent is similar to selling a car and registering the title in someone else’s name. Once the patent is assigned, similar to registering the title of a vehicle in someone else’s name, the new owner is the assignee (person to whom the patent was transferred to). Once the assignment is recorded with the patent office, the records will be updated to show the assignee (new owner) of the patent. This information will then be made available to the public.

Assigning a Patent vs Licensing a Patent

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

Does a Patent Assignment Need to be Notarized?

The USPTO does not require patent assignments to be notarized. The patent office only requires that the assignment be executed and signed by both the assignor and the assignee. Once an agreement is executed and signed by the parties, the assignment must be recorded with the patent office.

If the assignee fails to record the assignment, there is nothing to protect the assignee from the assignor assigning the patent to a third party. So, if you’re an assignee, make sure to record your assignment as soon as it’s executed to avoid problems.

Although a patent assignment does not need to be notarized, notarizing it can be beneficial in the event that the previous patent holder claims that he did not make the assignment. It’s an added layer of protection that could prove to be very valuable.

Can Multiple People Own a Patent?

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

If there are multiple inventors on a patent application, all inventors must execute an assignment agreement to assign each of their interest to the assignee for the assignee to own the entire patent.

For example, if only 1 of 3 inventors assigns his interest, the assignment would be a partial assignment until all 3 inventors each assign (transfer) their interest to the assignee.

Patent Assignment Tips

1) hire an attorney to assist you with your patent assignment.

Any individual who’s either an assignor or assignee should hire an attorney to assist with the assignment of a patent. Attorneys will ensure that the assignment agreement complies with the law and contains all of the information that is required for a successful patent assignment. Although it’s not unheard of for parties to execute an assignment agreement on their own, making a mistake could cause legal troubles down the road.

2) Don’t Forget to Record A Patent Assignment

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

If an assignee does not record the assignment with the patent office, it is as if the assignment never took place. Also, if it’s not recorded, the assignor could possibly assign the patent to a third party. So, make sure to record your assignment as quick as possible.

3) Notarize Your Assignment Agreement

It’s good practice to have an assignment agreement notarized. This helps in a situation where the assignor claims that he did not execute the assignment agreement. In the event that an assignor claims he did not execute the assignment agreement, you will have evidence to show otherwise. The burden may shift to the assignor to prove that he did not execute the assignment agreement. So, notarize your agreement, as well as other documents relating to the assignment of a patent.

4) How Much Does it Cost to Record an Assignment with the USPTO?

It’s currently free to record an assignment with the USPTO if a party submits the assignment electronically. However, if a party chooses to record the assignment agreement by paper, there is a $50 fee for the service. So, record your assignment online if you want to avoid paying anything. That said, you may need to publish your assignment in an official gazette, such publication does cost $25.

Patent Assignment

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

To assign a patent, both parties must execute a written assignment agreement to reflect the transfer of ownership. Once the parties execute the agreement, they must record it with the patent office to establish the new ownership. If you have any general questions or comments, please feel free to leave them in the comments section below.

My name is Noah and I love everything about patents and patent law. During my law school years, I studied intellectual property law and took courses in patent law, trademark law, and copyright law. I graduated from Loyola Marymount Law School and obtained my Juris Doctorate in 2014.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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Patent Assignment

What is a patent assignment.

Patents convey the right to exclude others from making, using or selling the inventions claimed in the patents in the country or countries that issued the patents. To enjoy the benefits of these patent rights, your business should own its patents. However, under U.S. law, only an inventor or an assignee can own a patent and businesses cannot be listed as an inventor. Patent assignment is the legal mechanism to transfer ownership from inventors to your business or from one business to another.

Assignment differs from licensing in that an assignment transfers the assignor’s interest in an invention, patent application or patent while licensing grants particular rights to make, use or sell the invention in covered jurisdictions. An 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 any patents that may issue or be acquired that are subject to the assignment. In a license agreement, the patent owner grants another entity (the licensee) exclusive or non-exclusive rights to make, use or sell the patented technology, while the patent owner retains ownership.

Assignments typically are made by inventors to their employers as a requirement of employment contracts. Businesses also may assign patents to other businesses to transfer rights in connection with sales of patent portfolios or transfer of intellectual property rights associated with business interests transferred or acquired during mergers or acquisitions.

Clean title to patents including assignments from all inventors and prior owners of patents and patent applications to the current owner is a key factor in maintaining the enforceability and value of the underlying patent assets. Absence of clean and complete title can have significant adverse impacts on portfolio valuations for mergers and acquisitions. To ensure clean title to all patents, all new employees should be required to sign an employment agreement that establishes up front what intellectual property the company owns, which typically should include anything the employee invents while under your employment. In addition to a general assignment of rights in an employment agreement, specific written assignments for each new patent application should be executed by all inventors when it is filed, in order to memorialize ownership of the specific patent property.

To protect and reflect ownership, companies should record all patent assignment with the U.S. Patent and Trademark Office’s Assignment Recordation Branch using the Electronic Patent Assignment System (EPAS) as soon as possible after execution. Failure to promptly record assignments may put the assignee’s claim of ownership at risk. For example, if an assignor were to subsequently improperly assign to another purchaser that is unaware of the previous assignment and the prior assignment had not been recorded with the USPTO, the subsequent purchaser may be able to successfully claim ownership.

Barceló, Harrison & Walker LLP has extensive experience with managing and reviewing patent assignments in a variety of patent prosecution, portfolio management and mergers and acquisitions and can help you make sure you have clear title to all intellectual property that you have developed or acquired.

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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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Other names for the document:

Patent Assignment Contract, Intellectual Property Transfer Agreement, Technology Rights Conveyance Agreement, Innovation Assignment and Transfer Accord, Assignation of Patent Rights Contract

Country: United States

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Teva, Viatris win new chance to challenge J&J schizophrenia drug patent

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Reporting by Blake Brittain in Washington, Editing by Alexia Garamfalvi and Bill Berkrot

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets, for Reuters Legal. He has previously written for Bloomberg Law and Thomson Reuters Practical Law and practiced as an attorney.

BYD may hand back top EV seller title to Tesla after Q1 sales decline

BYD, China's biggest electric vehicle (EV) maker, reported first quarter 2024 sales fell 43% compared to the fourth quarter of 2023, which may mean it will hand back the title of world's biggest EV seller to Tesla after winning it last year.

TikTok Forced Sale Bid Embroils ByteDance’s Vast Patent Trove

By Annelise Gilbert

ByteDance Ltd.'s sizable intellectual property portfolio would make a forced divestiture of TikTok especially messy, lawyers say, as it would play a significant role in shaping the potential blockbuster deal.

The Chinese company has gained more than 900 US patents since 2020, according to an analysis by Bloomberg Law. They cover technology including an artificial intelligence tool that creates music and ways to recommend videos to users . Buyers usually want to obtain IP rights in this kind of transaction, lawyers said, but ByteDance might not be willing to part with its valuable technology.

Parsing out ByteDance’s thousands of patents worldwide would be one part of a massive deal that would require “thousands upon thousands of lawyers, investment bankers, lobbyists, all trying to get this done,” said Jonathan Lazarow of corporate and IP boutique Ambrose, Mills & Lazarow.

Patents provide cash flow and business protection, he said. “If you’re a buyer on the market, you know, you need to use those patents to help justify your” financing, he added.

The US House passed a bill March 13 that would ban TikTok from operating in the US unless ByteDance sells off the short-video app. The legislation is pending in the Senate, and President Joe Biden said he’ll sign it if it makes it to his desk. The ban would go into effect 180 days after the bill is enacted. The US Justice Department this week has plans to brief Senators and push for action on the measure, Bloomberg News reported.

TikTok plans to exhaust all legal challenges before considering a divestiture if the bill is passed, Bloomberg News reported last week.

ByteDance’s Portfolio

ByteDance has more that 900 issued US patents and more than 600 pending applications , according to Bloomberg Law. TikTok is listed as an assignee on several dozen US patents, which means it has an ownership interest in them. It could also be using others in its parent company’s portfolio.

The inventions assigned to TikTok range from methods for live streaming to voice-controlled content creation and a 3D eyelash filter . Some of ByteDance’s US patents overlap with equivalent ones it’s been issued in China, where the company holds more than 2,000 patents , according to a Bloomberg Law analysis.

It’d be a “massive undertaking” to sort through ByteDance’s global portfolio if a sale were to happen, said Brown Rudnick LLP Partner Ian DiBernardo . The parties would have to figure out which bucket each patent falls into, he said—whether it’s being used exclusively by TikTok, across multiple ByteDance businesses, or primarily by other businesses but still with some relevance to TikTok.

In most spin offs, both the parent company and subsidiary want the other to be successful, said Dickinson Wright PLLC Partner Jomy Methipara . But the divestiture could become more difficult if there are internal battles over which business should get what IP, he said.

Neither ByteDance nor TikTok immediately responded to Bloomberg Law’s requests for comment.

Tight Timeline

The House-passed bill’s six-month deadline is an even quicker turnaround than when the US forced the Chinese owner of popular gay-dating app Grindr to sell in 2020. Beijing Kunlun Tech Co. said in May 2019 that it’d reached an agreement with the Committee on Foreign Investment in the US to sell Grindr before the end of June 2020. The company sold the app in March 2020 for $608.5 million.

“They probably left some money on the table because they had to transact at a much quicker, much swifter sense of speed,” Lazarow said.

The dating app had just four issued US patents at the time of sale, according to Bloomberg Law data.

Some senators, including Richard Blumenthal (D-Conn.), have said six months may not be enough time for TikTok to line up a buyer, but the timetable could change through an amendment process. Other lawmakers have said ByteDance investors could benefit from selling TikTok because it’d remove uncertainty for the company due to the tense relationship between the US and China.

Lazarow agreed that investors could push for a sale if they view the alternative as losing access to the US market.

“Will the owners, ByteDance, and the private equity funds and venture capitalists who funded ByteDance say, ‘Look, we need you to sell this because the risk is you get nothing for the work. All of a sudden you’re just a Chinese company and that’s not what we signed up for,’” Lazarow said.

Unclear Parameters, Security Concerns

Though the bill calls for ByteDance to relinquish ownership of TikTok, it’s unclear whether a forced divestiture would require selling its US IP rights. The bill defines a qualified divestiture as a deal “the President determines, through an interagency process, would result in the relevant foreign adversary controlled application no longer being controlled by a foreign adversary.”

Divestitures can exclude IP assets or require them to be sold off, said Knobbe Martens Partner Stephen Larson .

A potential buyer would probably prefer ownership, Methipara said, but an exclusive license with enforcement and sublicensing rights could work as well. A global perpetual license could be “just as good as owning the patent,” Lazarow added.

Non-exclusive licensing rights are another possibility, Larson said. But in that case competitors could also obtain licenses to the technology, which he said makes that option “obviously the least valuable” for any spin-off.

Keeping the IP could be attractive to ByteDance from a revenue perspective, DiBernardo said.

“The aggregate value of selling TikTok and having the IP to separately monetize outside of TikTok—whether it’s a sale or to use in ByteDance’s other businesses—that aggregate, that combined value can be greater than just leaving it with TikTok,” he said.

Wedbush Managing Director Dan Ives has reportedly said TikTok could sell for $100 billion if the source code for the app’s algorithm is included, and for $40 billion if it’s not.

The Chinese government’s interest in being technology innovators could affect whether they’d sell their algorithms and technology to a non-Chinese buyer, DiBernardo said. That could make licensing unworkable if it’s impossible to do so without ByteDance giving up TikTok’s algorithms.

“The buyer is going to want the ability to control the algorithm, update it, or at least take it licensed with all the technology,” DiBernardo said.

Licensing, however, could fall short of the bill’s intent, Lazarow said.

“The whole intent of the legislation is that we don’t want a Chinese entity like ByteDance to have access to US consumer data or user data because it’s a national security risk,” he said. “Will the license itself, if its just a license and not a purchase of the patent portfolio itself, undermine that?”

To contact the reporter on this story: Annelise Gilbert at [email protected]

To contact the editors responsible for this story: Adam M. Taylor at [email protected] ; James Arkin at [email protected]

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Cold weather pay offered to incentivize assignments to North Dakota bases

WASHINGTON (KMOT) – Airmen from other parts of the country sometimes lament assignments in North Dakota due to the cold winters, but the Air Force is starting a new incentive program for servicemembers who have to “come North.”

The Air Force is rolling out a special cold weather duty pay for airmen and guardians assigned to bases where the temperature can drop below -20 degrees Fahrenheit.

This includes Minot Air Force Base, Grand Forks Air Force Base and Cavalier Space Station.

The idea is to help offset the costs of cold-weather items, such as gear, snow tires, engine block heaters and emergency kits for your car.

Pay will begin July 1, and the Air Force will announce specifics on pay amounts closer to the date.

Both North Dakota Senators John Hoeven and Kevin Cramer, along with Alaska Senators Lisa Murkowski and Dan Sullivan, recently sent a letter to the Secretary of the Air Force to implement the program.

Copyright 2024 KFYR. All rights reserved.

US oil production breaks records; expert explains why gas prices remain high

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KFYR First News at Six Sportscast 04/01/24

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Starting a patent assignment request in Assignment Center

Learn how to use start a patent request in Assignment Center. 

Assignment Center is a publicly available USPTO system for recording assignments and other documents relating to interests in patents and trademarks.

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Justin Verlander nearing rehab assignment as he ramps up for Astros return

J ustin Verlander threw three simulated innings in a live batting practice Monday and will likely begin a minor-league rehab assignment as the next step in his return from a shoulder issue.

Verlander threw about 50 pitches in live at-bats against Astros hitters Grae Kessinger and Jon Singleton at Minute Maid Park. He said whether a rehab assignment is next “depends on how I bounce back” but that “all signs point to yes.”

During his buildup this spring, Verlander said his initial challenge was “getting to a certain threshold of velocity.” He said he is now “at that threshold where I can throw max speed,” and the next hurdle was ramping up quickly, which he must do before innings with a limited number of warm-up throws.

RELATED : Luis Garcia throws for first time since having Tommy John surgery

Monday, Verlander threw his live batting practice with the pitch timer operating. He warmed up before his innings with the 2 minute, 15 second time limit and said he was “able to get up to speed in the time that I needed.” He termed the session overall “a huge win.”

“The hardest thing for me to do has been (to) go from zero after 10 minutes of rest to being able to throw 90-plus miles per hour,” Verlander said. “This time was better than last time, because last time I showed my body I could do it, and this time I felt a little easier doing it. And then next time should be hopefully back to norm. If it’s not, I know that I’m still able to do it.”

Manager Joe Espada said Verlander will require multiple minor-league rehab starts to build his pitch count but did not set a number. Espada said the Astros will gauge how Verlander feels Tuesday, then determine when he might begin the rehab assignment.

“I did not see how hard he threw (Monday), but I was behind home plate and the shape of his pitches looked pretty good, the hop on the fastball was there,” Espada said. “So all the qualities that you’re looking for on all his pitches were there.”