Patent Assignment

What is Patent Assignment?

A patent has many attributes of personal property. The owner may assign the legal rights of their patent to another by a formal legal document. For U.S. citizens this is normally accompanied by a certificate of acknowledgment by a person authorized to administer oaths - i.e., a notary public. This assignment should then be recorded with the US Patent and Trademark office. 

Legal Rights

What are these legal rights of the patent that are assigned? The rights of a patent are that the ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. But ownership of the patent does not automatically give the owner the right to make, use, offer for sale, sell, or import the claimed invention because there may be for example, a dominating patent or other legal constraint that prevents that. It is only the right to exclude that is the patent right.

This is what is transferred in a patent assignment - the right to exclude.

A patent assignment can get complicated. It can be the transfer of your entire ownership interest or a percentage of your ownership interest in the patent or application.

Patent Assignment vs. Licensing

Unlike a patent assignment, the licensing of a patent transfers rights which is less than the entire ownership interest. These rights may be limited as to time, geographical area, or field of use. A patent license is a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds set forth by the license agreement. Licensing agreements can be complicated, and you should use an experienced licensing attorney to draft it.

An exclusive license may be granted by the patent owner to a licensee. The exclusive license prevents the patent owner (or any other party to whom the patent owner might wish to sell a license) from competing with the exclusive licensee, as to the geographic region, the length of time, and/or the field of use defined in the license agreement.

A license is not an assignment of the patent.

Joint vs. Individual Ownership

Either an individual or joint entities may own the entire right, title and interest of the patent. There are at least three possibilities- 

  1. There can be multiple inventors;
  2. There can be multiple partial assignees; or
  3. There may be a combination of 1) and 2).

Each individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee provides a subsequent assignee a partial assignee. All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.

The cleanest agreement is, when all inventors jointly assign their patent rights to one entity. 

Recording the Assignment

There are two ways to record the assignment of a patent with the US Patent Office. The first is to record it in the assignment record of the US Patent Office. This is straightforward and can be done online. The second is to make the assignment of record in the file of a patent application - this is necessary to permit the assignee to act in the patent proceeding.

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