Patent Rebel

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.

what is an assignment what are the main types of assignment in patents

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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what is an assignment what are the main types of assignment in patents

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

what is an assignment what are the main types of assignment in patents

by   Cindy DeRuyter, Esq.

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

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Updated on: December 4, 2023 · 2 min 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.

Young coworkers looking at laptops and paperwork on a desk

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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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.

Yes. But there can be real problems with multiple owners of a patent. Unless there is some other agreement restricting what an entity can do with its ownership interest, a co-owner of any portion of a patent, (whether 99% or 1% or .0001%), can make use of the patent however they want.  For example, a .0001% owner of a patent could license out its rights, and keep 100% of the license fee.  Absent an agreement to the contrary, there is no duty of a co-owner of the patent to share license fees with any of the other co-owners.

One of the big problems with two entities owning portions of a given patent is that the two entities can compete with each other with respect to license fees. For example, if co-owner A offers to license the patent rights for 7%, co-owner B might choose to undercut the previous offer by offering to license the same rights for 5%.  But then co-owner A comes back and offers to license the rights for 2%. Pretty soon the value of the license rights goes to zero.  Also, if co-owner A gets upset with co-owner B, co-owner A could unilaterally abandon the patent, which would make it worthless to everyone.

Even if co-owners agree to share license fees 50-50, there can be problems.  For example, co-owner A could decide to license out its patent rights for one dollar a year to a licensee that co-owner A owns, has an interest in, or perhaps has a relative with an interest in.  Of course co-owner A would be happy to share $0.50 of its annual license fee with co-owner B, but co-owner B would be pretty upset.

Still further, if there is a chain of patents, for example with a parent and a child patent in the same family, the ownership of both patents has to remain to the same at all times.  If, for example, both a parent patent and a child patent are 100% owned by A, assignment of some or all of the child patent to B will immediately invalidate the child patent.  Even if such an assignment is made, and the parties realize the mistake, reassigning the child patent back A would not cure the mistake. The child patent would remain abandoned.

Bottom line, co-ownership of a patent is really problematic.

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29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

Patent Assignment: How to Transfer Ownership of a Patent

  • 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.

what is an assignment what are the main types of assignment in patents

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!

what is an assignment what are the main types of assignment in patents

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: Everything You Need to Know

A patent assignment is an irrevocable agreement for a patent owner to sell, give away, or transfer interest to an assignee, who can enforce the patent. 6 min read updated on January 01, 2024

Updated November 5, 2020:

Patent Assignment: What Is It?

A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue others for making or selling the invention or design.

There are four types of patent assignments:

Assignment of Rights - Patent Issued: This is for patents that have already been issued.

Assignment of Rights - Patent Application : This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.

Assignment of Intellectual Property Rights - No Patent Issued or Application Filed: This is for unregistered inventions with no patent.

Exclusive Rights

Advantages of a Patent Assignment

Assignees don't create a unique invention or design. They also don't go through the lengthy patent process . They simply assume exclusive rights to intellectual property.

Profit Potential

Many patents cover intellectual property that can earn the owner money. A patent owner can charge a lump sum sale price for a patent assignment. After the transfer, the assignee can start to earn profits from the patent. Both original owners and assignees can benefit from this business arrangement.

Disadvantages of a Patent Assignment

Too Many or Not Enough Inventors

Patents can have multiple owners who invented the product or design. Sometimes patents list too many or not enough inventors. When this happens, owners can argue about an incorrect filing. This kind of dispute can make a patent assignment impossible.

Limited Recourse

Older patents may already have many infringements. Not all patent assignments include the right to sue for past infringements. This is known as the right to causes of action. This can cost the assignee a lot of potential profit.

Examples of What Happens When You File a Patent Assignment vs. When You File a Patent License

When You File a Patent Assignment

The patent owner changes permanently. You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public.

Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits.

When You File a Patent License

The patent owner doesn't change permanently. Most licenses have a time limit. At the end of the period, the original owner takes control again. Licensing information isn't always available through an online USPTO search. Contact the recordation office directly to get information about patent licenses.

The licensee can assign rights to another person or company. This adds another layer of ownership over the intellectual property.

Many owners charge royalties for a patent license. The licensee pays royalty fees throughout the license period. If the royalty fees are high and the license period is long, a patent assignment may be a better choice for earning the new owner more money.

Common Mistakes

Not Filing an Assignment Document

A verbal agreement is not official. File a patent assignment to change patent ownership.

Taking Action Before Filing

The assignee shouldn't make or sell the invention before the patent assignment is official. If an error or another problem happens, this could be patent infringement .

Making a Filing Error

Patent assignments are official documents. The assignee's name must be legal and correct. Before filing, check the spelling of the assignee name. If the assignee is a business, confirm the legal name. Many patents have more than one owner. List all names on the assignment.

Misidentifying the Patent

Include as much information about the patent as you can. List the patent number and title. Describe the intellectual property completely.

Not Searching for Security Interests

Patents can be collateral. A bank or another party can file a security interest in a patent, and this can limit how much an assignee can earn from a patent. Check for security interests before filing a patent assignment.

Not Filing a Proprietary Information Agreement

Many businesses file patents, as this is part of a business plan , and it's especially common for startup businesses. Inventorship problems can happen if employees file patents instead of the business.

Often, employees have an obligation to assign inventions to a company. This is true if they developed the invention on the job.

To avoid confusion, require employees to sign a proprietary information agreement. This automatically assigns inventions and designs to the business. Other options include signing an automatic assignment or an explicit assignment. These all clarify patent ownership.

Not Being Notarized

Make sure all official documents concerning your patent are notarized. There is a huge legal advantage to being notarized. It makes it so that your documents will be accepted as correct until it is proven otherwise. If you can't get your documents notarized, gather two witnesses. Have them attest to the signatures.

You have to file a patent assignment within three months of signing the form. If you don't, the assignee could lose ownership rights.

Frequently Asked Questions

Where Do I Record a Patent Assignment?

If you have a U.S. patent, record your patent assignment with the USPTO. If you have a foreign patent, file with the correct national patent offices.

I Can't Get a Signature from the Inventor. What Happens Now?

First, it needs to be officially established that:

  • Whoever is pursuing the application has the right to do so.
  • The inventor cannot be reached.

In order to establish this, the patent office will need a copy of the following:

  • the employee agreement
  • the assignment
  • other evidence of the rights

After that, the patent office will continue as if the signature has been obtained, even though it hasn't.

If the inventor has died, the patent office will try to contact the person in charge of managing the deceased's estate or the heir. If the invented refuses to sign or is missing, the patent office will ask for a declaration from the person who is trying to contact them. They will also look at the following items that have been sent to the inventor:

  • Do I Have to File a Patent Assignment if the Owner's Name Changed?

No, you don't need a patent assignment if only the person's or company's name changed. If the company merged with another, you may need a patent assignment.

What if I Make a Mistake on My Patent Assignment?

You can't correct a patent assignment. You have to assign it back to the original owner. Then you have to reassign with the correct information.

How Much Does a Patent Assignment Cost?

The patent assignment fee is $25. Filing electronically doesn't cost extra. You do have to pay an additional $40 fee if you file on paper.

Should I Hire a Lawyer?

Yes, you should get a lawyer to help with a patent assignment. A lawyer will make sure there are no filing errors. A lawyer knows how to describe the patent correctly. Errors and bad descriptions can limit the power of a patent assignment. This could cost the assignee a lot of money in future profits and legal fees.

Steps to File a Patent Assignment

1. Fill Out a Recordation Form Cover Shee t

The Recordation Form Cover Sheet is an official USPTO document. This includes the names of the assignor(s) and the assignee(s). It also includes the patent title and number.

2. Complete a Patent Assignment Agreement

The patent assignment agreement should list the assignor(s) and the assignee(s). It should state that the assignor has the right to assign the patent. It should also describe the intellectual property clearly and completely. It should also explain any financial or other transactions that have to take place. This includes a description of the lump sum payment.

3. Sign the Patent Assignment Agreement

All patent owners and assignees must sign the patent assignment agreement.

4. Submit the Patent Assignment

Finally, submit the patent assignment with the USPTO. You have to pay the assignment fee at this time.

If you need help with patent assignments, you can post your question or concern on UpCounsel's marketplace . UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Patent Assignment: A Basic Guide

March 12th, 2020 ‧ 5 min read.

what is an assignment what are the main types of assignment in patents

When it comes to patents, many people outside of the industry often make the assumption that the person listed as the inventor on a patent is automatically the owner of that patent as well.

While this is certainly true in some cases, there are several instances when another person or even a company may be assigned ownership of the patent. This is called a “patent assignment,” and it is the subject of today’s article.

Table of contents

Patent assignment: a basic definition, an example of a patent assignment, an additional patent assignment in writing, patent assignments and the uspto, patent assignment database, patent assignment search, is a patent assignment a type of licensing, patent assignment: an important element of the patent ecosystem.

Curious about the patent assignment history? Check out the specific data  here !

Basically speaking, a patent assignment is a legal way for an inventor to transfer ownership of a patent to a business.

As you may recall, in the United States, only a person (or group of people) can be listed as the inventor of a patent; a business cannot be listed as the inventor. However, a business can be assigned the ownership of the patent by a person (or group of people).

In this type of agreement, the “assignor” transfers their patent rights to the “assignee.”

It might be helpful to look at an example of a patent assignment. Let’s say an employee of a company comes up with a new invention. This individual employee is the inventor of the product and will be listed on the patent application as such. However, since patents can be very valuable, most companies already have a patent assignment agreement with their employees in place.

This type of agreement would typically state that any type of intellectual property created by an employee of a company while employed by that company would become the property of the company.

Since the company in this example made sure that its employee signed a patent assignment form upon being hired, the invention that the employee came up in the company’s R&D facility will be assigned to the company. The inventor will still be listed in the patent application (and on the patent, if granted) as the inventor.

In addition to the patent assignment agreement mentioned above, it is also recommended that a specific written assignment from the inventor to the company be made whenever a patent application is filed.

If this step is taken, then there will be less trouble if an inventor leaves the company before the patent application has been completed or attempts to contest the patent down the road.

In the United States, patent assignments can be recorded at the USPTO. This can be done at the US patent office’s  Assignment Recordation Branch .

Although this can be done online (and without any fees if done electronically) using the  Electronic Patent Assignment System (EPAS) , it should be noted that all patent assignment paperwork must be submitted within three months of the patent’s assignment date.

The Patent Assignment Database from USPTO keeps all the patent assignment data records from August 1980 until now. The transfer record will be updated by USPTO, the most recent entry should be the current assignee. However, the system does not check the correctness of the data, specify the current assignee and update timely. It is best to double-check with a third-party database for accuracy.

what is an assignment what are the main types of assignment in patents

If you need to find out who owns a patent, then you can conduct a patent assignment search. This will tell you who has been assigned a particular patent in the past and who the current assignee is now. The USPTO does offer a free  patent assignment search tool  on its website, as do other third-party intelligence platforms, such as  Patentcloud .

These platforms often feature superior patent assignment databases, with processes that ensure that the assignment data has been cleansed and corrected, meaning more accurate and comprehensive search results.

what is an assignment what are the main types of assignment in patents

Start your patent assignment search  here with Patentcloud’s Patent Search.

Although similar in some ways, these two patent activities are actually quite different.

A licensing agreement means that the owner of the patent (or “licensor”) gives another person or company (the “licensee”) the right to use the patented technology for an agreed-upon period of time. However, the licensor remains the owner of the patent.

A patent assignment, on the other hand, involves a complete and permanent transfer (or “assignment”) of ownership of a patent from the owner (or “assignor”) to another party (the “assignee”). Put simply, patent assignment involves “ownership” while patent licensing involves “permission to use.”

Assignment data analysis can provide actionable insights for those operating in the transaction market and IP stakeholders alike, enabling them to:

  • Anticipate the future strategy of a company: the acquisition of patents covering a specific technology could well be an indicator of the company’s future plans and strategies;
  • Anticipate the developments of an industry: multiple companies — especially larger ones — acquiring patents in a certain technology field could also prove to be an indicator of the imminent popularity of a technology field.

The acquisition of Oculus VR by Facebook is a perfect example of this: in 2014, Facebook bought the VR company for around $2 billion. In the deal, Facebook also acquired all of the patents. Facebook’s focus on VR was a significant moment: today, VR technology is one of the most active patent-wise. This activity is not just limited to the gaming sector, the following industries have also experienced increased activity:

  • Data visualization;
  • The treatment of mental illnesses.

The acquisition by Facebook proved to be a clear signal that:

  • Facebook was likely to invest heavily in the development of VR technologies;
  • The VR industry was going to be popular in the near future.

There you have it. Though often overlooked and even misunderstood, patent assignments are actually a very important element of the patent ecosystem. With a better understanding of patent assignments, you can gain valuable insights into industry trends and even the business strategies of specific companies. You can also gain a better understanding of a company’s own R&D capabilities.

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Related posts.

Patent Assignment: The Importance of Current Patent Assignee Accuracy

Essential Takeaways from 2020’s Q1 US Patent Assignment Data

Patent Assignment Data: 8 Essential Takeaways from 2019 Q4 US Patent Market

An Inventor’s Guide to Understanding Prior Art

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Owning a patent is much like owning property. Just as you can sell or lease your property, you could do the same with your patent with assignment or license, respectively. Patent assignment is an inventor’s granting of all of his patent rights (or future patent rights) to another person or entity. In contrast, a license only grants another person or entity a portion of the patent rights for a limited period of time. The portion and duration of those rights is something the licensor and licensee can negotiate.

When the inventor assigns his patent rights to a third party, he gives up his patent rights in their entirety to the third party. The transfer of the patent rights is embodied in an assignment of the patent to the purchaser. An assignee appears on the cover page of a patent and provides notice of who owns the patent rights. If an assignee is not listed, it is assumed that the inventors own the patent rights. For this reason, each assignment should be reported to the USPTO.

Often times the assignee may not be listed on the patent or the listed assignee may no longer own the rights to the patent. This is usually because an assignment is made after a patent has been granted. To determine the most recent owner of the patent rights, a search through the USPTO database may be required.

When multiple inventors are members of the same entity (such as a business organization), it is advised that all inventors assign their patent rights to that entity. In this way, there is only one entity that can control the licensing and assignment of the patent without conflict. How that entity decides to control the patent is not a matter of how the entity is structured and what roles the inventors play within that entity.

Often times, inventors are obligated under their Employment Agreement to assign their patent rights to their employer. It is advised that each inventor have a Patent Attorney review his employment contract prior to filing for patent. In this way, the inventor can avoid future disputes as to patent ownership after having already invested resources into procuring the patent.

If you are interested in more detail related to your situation it is best to speak with an attorney. Discuss Your Patent Needs with a Professional .

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Who may apply for a patent?

You (the inventor) or your legal representative may apply for a patent, with some exceptions. These include if the inventor has died, is legally incapacitated, refuses to apply, or cannot be found. Two or more people inventing something together may apply for a patent as joint inventors. A person (e.g., a company) to whom an inventor has assigned an invention, or to whom the inventor is obligated (e.g., contractually required) to assign an invention, may also apply for a patent.

If you only contribute money but are not the inventor or co-inventor, you cannot be named as an inventor or co-inventor in the patent application. Furthermore, if you are not the inventor, and the inventor(s) did not assign the invention to you or does not have an obligation to assign the invention to you, you may not apply for a patent. USPTO employees cannot apply for or own a patent unless they inherit it.

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.

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.

  Patent Assignment Search

This searchable database contains all recorded Patent Assignment information from August 1980 to the present.

  Trademark Assignment Search

The database contains all recorded Trademark Assignment information from 1955 to the present. Trademark Assignments recorded prior to 1955 are maintained at the National Archives and Records Administration.

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The Difference Between an Assignment and a License of a Patent

The transfer of rights in a patent generally fall into two categories: an assignment and a license. The transfer is usually accomplished by an agreement.

Whether the agreement at issue is an assignment or a license matters because generally an assignee can sue for infringement alone, while a licensee of less than substantially all of the patent rights cannot sue for infringement alone without the patent owner.

A patent grants the owner certain rights, such as 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.  35 U.S.C. § 154(a)(1) 

Usually, an assignment transfers all of the rights* of one party in a patent to the recipient (the assignee). Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A. , 944 F.2d 870, 875 (Fed. Cir. 1991); 35 USC 261. Also, a transfer of substantially all of the patent rights can be considered an assignment for the purposes of standing to sue for infringement. A transfer of less than substantially all of the rights, is a mere license. It is the content and legal effect of the agreement that determines whether it is an assignment or license, not its title.

In the Vaupel case, the court found the agreement at issue there transferred substantially all of the rights in the patent, where the seller retained the following rights: “1) a veto right on sublicensing by Vaupel; 2) the right to obtain patents on the invention in other countries; 3) a reversionary right to the patent in the event of bankruptcy or termination of production by Vaupel; and 4) a right to receive infringement damages.” Therefore, despite the seller retaining these rights, the agreement at issue was considered an assignment.

In contrast, in Sicom Sys. v. Agilent Techs., Inc. , 427 F.3d 971, 978-979 (Fed. Cir. 2005), Canada licensed the patent at issue to plaintiff Sicom. The court found the license did not transfer substantially all of the rights, where Canada reserved the right to use the patented technology itself, to veto Sicom’s reassignment of its rights, and to sue for non-commercial infringement. Canada also retained legal title to the patent.

The line between a transfer of substantially all of the rights and less than substantially all of the rights is gray. Ignoring this issue and simplifying it, an assignment usually transfers everything (including legal title) whereas a license grants less than all of the rights and reserves rights to the person or entity granting the license.

*The Supreme Court has also said that the transfer of an undivided portion or share of a patent can also be an assignment, but then assignor and assignee must act together to sue for infringement. Waterman v. Mackenzie , 138 U.S. 252 (1891).

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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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What Is an Intellectual Property Assignment Agreement?

An intellectual property assignment agreement is a legally binding contract that transfers ownership of intangible assets, such as patents, trademarks, copyrights, and trade secrets, from one party to another. This agreement establishes clear boundaries and legal clarity regarding the ownership and usage of intellectual property rights. A meticulously drafted assignment agreement offers numerous benefits, including clarity on ownership, enhanced legal protections, and streamlined dispute resolution mechanisms. By understanding the intricacies of intellectual property assignment agreements, parties can navigate complex transactions with confidence, securing a financial future and minimizing the risk of disputes and litigation.

Table of Contents

Purpose of an Assignment Agreement

Assigning intellectual property rights through an assignment agreement serves to legally transfer ownership and facilitate the smooth exchange of intangible assets between parties. This transfer can be vital in various business transactions, such as mergers and acquisitions, licensing agreements, and collaborations. The primary purpose of an assignment agreement is to establish clear boundaries and legal clarity regarding the ownership and usage of intellectual property rights.

Key Components of the Agreement

A thorough intellectual property assignment agreement typically comprises several fundamental elements that delineate the terms and scope of the intellectual property transfer. These components are pivotal in facilitating a seamless transfer of ownership and minimizing potential disputes.

One of the key components is the assignment scope, which outlines the specific intellectual property rights being transferred. This includes the type of intellectual property, such as patents, trademarks, or copyrights, as well as the geographical region in which the rights apply. The assignment scope should be clearly defined to avoid ambiguity and confirm that both parties understand the extent of the transfer.

Ownership clauses are another indispensable component of an intellectual property assignment agreement. These clauses establish the new owner's rights and responsibilities, including the right to use, modify, and license the assigned intellectual property. The ownership clauses should also address any existing licenses or agreements related to the intellectual property, facilitating a smooth transfer of ownership and minimizing potential disputes. By including these key components, an intellectual property assignment agreement can provide a clear and exhaustive framework for the transfer of intellectual property rights.

Types of Intellectual Property Assigned

The types of intellectual property assigned under an intellectual property assignment agreement can vary widely, spanning patents, trademarks, copyrights, trade secrets, and other forms of intangible assets. These intellectual property rights can include creative assets such as literary works, musical compositions, and artistic creations. Patent protections, including utility patents, design patents, and plant patents, can also be assigned. In addition, trade secrets, including confidential business information and proprietary knowledge, can be transferred under the agreement. Additionally, copyrights, including those related to software, databases, and other digital works, can be assigned. The agreement may also cover industrial property rights, such as industrial designs and geographical indications. The specific types of intellectual property assigned will depend on the nature of the transaction and the parties involved. By clearly defining the intellectual property rights being transferred, the assignment agreement guarantees that all parties are aware of their rights and obligations.

Benefits of a Comprehensive Agreement

A meticulously drafted intellectual property assignment agreement offers numerous benefits, including clarity on ownership, enhanced legal protections, and streamlined dispute resolution mechanisms. By establishing clear expectations, parties can avoid misunderstandings and guarantee a smooth transfer of intellectual property rights. This, in turn, fosters mutual trust and cooperation, vital for a successful collaboration. A detailed agreement also provides a clear understanding of the rights and obligations of each party, minimizing the risk of disputes and litigation. In addition, it enables parties to address potential issues proactively, reducing the likelihood of costly and time-consuming disputes. With a well-crafted agreement in place, parties can concentrate on their core objectives, secure in the knowledge that their intellectual property rights are protected. By providing a clear framework for the transfer of intellectual property rights, a detailed agreement promotes confidence, stability, and predictability, ultimately leading to more successful collaborations and business relationships.

Risks of Not Having an Agreement

In the absence of a thorough intellectual property assignment agreement, parties risk forfeiting valuable rights and facing unforeseen consequences. Without a clear understanding of ownership and usage rights, parties may inadvertently relinquish control over their intellectual property, leading to potential infringement and litigation. Additionally, failure to establish a formal agreement can lead to financial losses and reputational damage.

Loss of IP Rights

Frequently, failure to establish clear intellectual property rights through a formal agreement can lead to unintended and irreversible consequences, including loss of IP ownership and control. This can culminate in abandoned innovation, where valuable ideas and creations are left unprotected and open to exploitation by others. Without a formal agreement, creators and inventors risk expropriation, where their intellectual property is taken and used without their consent or compensation.

In the absence of a clear assignment agreement, intellectual property rights can be lost or compromised, leaving creators vulnerable to unauthorized use, reproduction, and distribution of their work. This can lead to a loss of revenue, reputation, and competitive advantage. Furthermore, the lack of a formal agreement can create uncertainty and ambiguity, making it challenging to resolve disputes or negotiate licensing agreements.

To avoid these risks, it is crucial to establish a clear and detailed intellectual property assignment agreement that defines the terms of ownership, use, and exploitation of intellectual property. By doing so, creators and innovators can safeguard their valuable assets and guarantee that their intellectual property rights are respected and enforced.

Infringement and Litigation

Without a thorough intellectual property assignment agreement, creators and innovators expose themselves to the risks of infringement and litigation, where unauthorized use of their intellectual property can lead to costly legal battles and reputational damage.

Infringement and litigation risks can manifest in various ways, including:

Financial Consequences

Failure to establish a thorough intellectual property assignment agreement can lead to substantial financial losses, including legal fees, damages, and lost revenue. Without a clear agreement, parties may be exposed to unforeseen financial burdens, which can be detrimental to a business's financial health.

Some of the financial consequences of not having an intellectual property assignment agreement include:

  • Unanticipated tax implications, such as unexpected tax liabilities or lost deductions
  • Increased legal fees associated with disputes or litigation
  • Loss of revenue due to unauthorized use or misappropriation of intellectual property

In the absence of a comprehensive agreement, parties may be forced to allocate significant resources to resolve disputes, which can divert attention and funds away from core business activities. Furthermore, the financial consequences of not having an agreement can have long-term effects on a business's financial stability and growth prospects. It is essential to prioritize the establishment of a thorough intellectual property assignment agreement to mitigate these risks and ensure a secure financial future.

Negotiating the Terms of Transfer

During the negotiation process, it is vital to carefully consider the terms of transfer to secure that the intellectual property rights are assigned in a manner that aligns with the parties' interests and objectives. This phase is pivotal in verifying that the rights are transferred effectively, and the parties' expectations are met.

Set Boundaries: A key aspect of negotiating the terms of transfer is to establish clear boundaries and define the scope of the intellectual property rights being assigned. This includes specifying the type of intellectual property, the territory where the rights will be exercised, and the duration of the assignment. By setting these boundaries, parties can avoid potential disputes and confirm a smooth transfer process.

Define Expectations: It is imperative to define the expectations of both parties regarding the assignment. This includes outlining the responsibilities of each party, the payment terms, and the consequences of non-compliance. By defining these expectations, parties can confirm that they are on the same page and that the assignment is carried out as intended. A well-negotiated agreement can prevent potential conflicts and confirm a successful transfer of intellectual property rights.

Enforcing the Assignment Agreement

Once the terms of the intellectual property assignment agreement have been negotiated and finalized, the next step is to guarantee that the agreement is properly enforced to protect the interests of all parties involved. This is crucial to ensure that the intellectual property rights are transferred correctly and that all obligations are fulfilled.

To ensure effective enforcement, parties should be aware of potential issues that may arise, including:

  • Contract Breaches : One or both parties may fail to fulfill their obligations, which can lead to disputes and legal action.
  • Jurisdictional Issues : Disputes may arise due to conflicting laws or regulations in different jurisdictions, making it essential to define the governing law and dispute resolution mechanisms in the agreement.
  • Dispute Resolution Mechanisms : Establishing clear procedures for resolving disputes, such as arbitration or mediation, can help prevent costly and time-consuming litigation.

Frequently Asked Questions

Can an assignment agreement be verbal or must it be written?.

While oral contracts are legally binding, it is highly advisable to have a written intellectual property assignment agreement, providing written proof of the terms and minimizing potential disputes, as verbal agreements can be difficult to enforce.

Are There Jurisdictional Differences in Assignment Agreement Laws?

Jurisdictional differences in assignment agreement laws exist, particularly in cross-border issues, with regional variations in contractual requirements, formalities, and statutory provisions governing intellectual property rights, necessitating careful consideration of local laws and regulations.

Can Intellectual Property Be Assigned to Multiple Parties Simultaneously?

Yes, intellectual property can be assigned to multiple parties simultaneously, leading to joint ownership and shared rights, where each co-owner holds an undivided interest in the IP, with corresponding rights and obligations.

Is an Assignment Agreement the Same as a Non-Disclosure Agreement?

No, an assignment agreement and a non-disclosure agreement are distinct, with contractual differences and legal implications. The former transfers intellectual property rights, while the latter protects confidential information, each serving unique purposes in safeguarding intellectual property.

Can an Assignment Agreement Be Terminated or Cancelled?

A well-drafted assignment agreement can be terminated or cancelled upon mutual agreement or due to material breach, with consequences outlined in the contract, while contractual loopholes may provide avenues for termination or renegotiation.

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Home of the Litigation Quality Patent

The main difference between assigning your intellectual property rights to another person or entity vs. licensing them to use your intellectual property is that in an assignment, ownership does not stay with the original owner, but goes to the assignee. In a licensing agreement, the licensee is granted the use of the intellectual property, but the ownership stays with the original holder of the property rights, whether a copyright, a trademark, or a patent. Which arrangement is better for your particular situation can be complicated to figure out. Let one of our experienced patent attorneys at Thompson Patent Law help you make the decision and draw up the kind of agreement that will work best for you. Call our office today at (512) 649-1046.

What is an Assignment Agreement?

An assignment agreement is a legal contract that transfers the ownership of intellectual property rights—usually a copyright, patent, or trademark—to another person or entity. The original owner of the rights does not retain any interest in the intellectual property in question. Assignments must be registered with the United States Patent and Trademark Office (USPTO) in most cases. Assignments carry a one-time, lump-sum payment at the time the agreement is signed and recorded. The original owner does not get any ongoing income from the intellectual property that they have assigned to another party. Assignments agreements are enforceable in court if they have been executed and recorded properly.

What is a Licensing Agreement?

In a licensing agreement, the original owner of the intellectual property rights does retain an interest in the intellectual property in question. The agreement may include a time limit on the licensee’s use of the product or idea, and usually includes some kind of ongoing payments to the owner of the rights (the licensor). Profits are generally not guaranteed at any particular level but may be set out as a percentage of the recipient licensee’s profits. In some licensing agreements, the licensor retains the right to use the property simultaneously, and in other agreements, the licensee is granted exclusive rights for a period of time.

Am I Better Off with a Licensing Agreement or an Assignment?

Each situation, each business, and each intellectual property rights owner is different. The best way to determine what the right course for you might be is to talk with an experienced professional intellectual property attorney . The lead attorney at Thomson Patent Law, Craige Thompson, has over 20 years of experience dealing with intellectual property rights issues and can give you the solid legal advice you need to decide whether to license or assign your hard-won intellectual property rights. Call us today to get your questions answered at (512) 649-1046.

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Patent Assignments in Employment Agreements – a Sometimes Overlooked, but Always Important Component

  • November 16, 2021

By: Peter C. Lando and Thomas P. McNulty

With assistance from summer intern Tyler Gruttadauria

Businesses, of course, have a strong interest in owning intellectual property created by their employees. Intellectual property—patents, copyrights, and other confidential and proprietary information including trade secrets—is often the most valuable asset a business can own, so it is important to ensure that employee developments and inventions belong to the employer. In the United States, inventions presumptively belong to the inventor, and any transfer of ownership (“assignment”) must be in writing to be effective. Rather than requiring employees to sign assignment agreements for each patent application filing, employers sometimes rely on employment agreements and handbooks to establish ownership in intellectual property created by an employee. Employers often provide employment agreements with assignment clauses that are intended to give the employer rights in inventions made by the employee during the period of employment. These assignment clauses are often treated as mere boilerplate, yet the precise wording of these clauses can have major impacts on the effectiveness and limitations of any assignment.

Ensure that you have an Assignment and not a mere promise to assign

When drafting an agreement to have an employee assign future inventions, it is vital that the language used in an assignment clause states a present-tense, actual assignment. Phrases such as “hereby assign,” “agrees to grant and does hereby grant,” or that inventions “shall belong” to the employer and employee “hereby conveys, transfers and assigns” have been deemed by the courts to be effective to transfer ownership of a future invention without the need for any subsequent agreement. Ownership effectively transfers immediately, once the invention has been made. Assignment clauses that use future tense language, on the other hand, generally will require an additional agreement to result in a transfer of ownership of the invention, and any intellectual property (“IP”) covering the invention. Terms such as “will assign,” “agree to assign,” “will be assigned,” and the like, have been found by numerous courts to constitute nothing more than a promise or contract to assign an invention in the future, but not to serve as an actual assignment.

In addition to the wording used in the assignment clause, the language of any carve-outs should also be scrutinized. Agreements may contain a carve-out clause to exclude a new employee’s prior inventions from being assigned, or to prevent assignment of inventions unrelated to the employee’s work from being swept into the assignment provision. A broad, non-specific carve-out clause may prevent an employee agreement from automatically assigning inventions of that employee, even where the assignment clause includes the proper “hereby assign” type of language, because this leaves open the possibility that an invention is not subject to the assignment clause. This contrasting language may create an ambiguity in the employment agreement that subjects it to construction under state law, which in turn may allow for the employee to introduce extrinsic evidence, such as conversations that took place during employment negotiations, to defeat the automatic assignment. While patent assignment provisions are governed by Federal Circuit law, resolution of contractual ambiguities is governed by state law, which varies considerably regarding the admissibility of such extrinsic evidence.

Failure to obtain an automatic assignment can have negative consequences

An assignment clause that is deemed ineffective to automatically transfer ownership of an invention can create significant problems for an employer. In such circumstances, a business would not have standing to bring a patent infringement suit until it has taken the necessary steps to obtain a valid assignment. This may require the filing of a breach of contract claim against the employee to require fulfillment of the contractual obligations, including execution of assignment documents. In the interim, infringers could continue practicing the invention; and if the infringing activity has gone on long enough, the six-year statute of limitations may prohibit full recovery of damages. Further, if an inventor/employee has made only a promise to assign, and instead transfers ownership to a third party who lacks knowledge of the assignment obligation, that second transfer of ownership may well prevail, leaving the original employer with no exclusionary rights at all.

Ineffective assignment provisions can affect more than just litigation. Businesses and investors typically conduct IP due diligence when entering into transactions involving the investment in or sale of IP assets, company divisions or entire entities, and any weaknesses in assignment provisions may affect the perceived value of the IP assets and/or business being considered.

Do not count on the “Hired-to-Invent” doctrine to result in ownership of employee inventions

Some employers do not require employees to sign an agreement containing an assignment of inventions because they believe that they automatically own inventions that they paid someone to create. Under the “hired-to-invent” doctrine, this will only occasionally be correct. Employees or contractors hired (and paid) specifically to create a particular invention or to solve a particular problem may be deemed to have implicitly assigned their rights in the invention to the employer. This is a highly fact-based determination, however, and applies only to inventions created in response to the specific thing the employee was hired to do. A mere title of “researcher” or even “inventor” will not, standing alone, suffice to ensure ownership of inventions by the employer. Further, until a court has ruled one way or the other, an employer relying on this doctrine will not have any certainty in its rights to the invention. Should the court rule against the employer, it would lose the exclusionary rights it believed it possessed and may face an infringement lawsuit from the employee or anyone to whom the employee may have assigned the invention/patent rights.

Absent an effective assignment, an employer may obtain limited “shop rights” in inventions made using the employer’s time, materials, facilities or equipment. Shop rights take the form of an implied license to practice the invention, precluding the employee from obtaining damages or injunctive relief on a patented invention. Shop rights are limited, however, and do not allow the employer to prevent others from competing by practicing the invention. Further, shop rights cannot be transferred via license or assignment, effectively devaluing the IP assets and, perhaps, the company.

Other Considerations

In addition to having the proper “hereby assign” language, employment contracts should ensure that inventions , rather than just patents or patent applications, are subject to the assignment clause. Language stating that all inventions, improvements, discoveries, and the like, whether or not patentable or copyrightable, are subject to the assignment, ensures that information that could be protected through other regimes, such as trade secrets, automatically become the property of the employer.

Intellectual property has taken on an ever-increasing role in determining the value of a business. A company’s ability to develop and protect its intellectual property is a key factor in its future success. Given this, it is important that businesses recognize that assignment provisions of employment agreements are not mere boilerplate, but instead may be one of the most important legal provisions that ultimately can impact not only an employment arrangement, but the value of the business itself.

what is an assignment what are the main types of assignment in patents

  • Peter C. Lando
  • Thomas P. McNulty

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United States Patent and Trademark Office - An Agency of the Department of Commerce

Resources available to support transition to Assignment Center

As previously announced , starting on February 5, 2024 , our modernized assignment system, Assignment Center, will fully replace the Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS) for processing all patent and trademark assignment requests. 

How-to guides on using Assignment Center for patents and trademarks are now available to help stakeholders make a smooth transition to the new system, in addition to training videos that provide step-by-step guidance for submitting a patent or trademark assignment request. 

Assignment Center provides a one-stop-shop to submit patent or trademark assignment orders, which allow patent or trademark owners to transfer ownership or change the owner name on a pending or granted patent application or trademark application or registration. The user-friendly system guides customers through each step of the assignment process and provides a central location to track your submitted application’s status. 

Please note : the location to search for patent and trademark assignments will not change. 

For more information or questions, please email [email protected] or call 571-272-3350. 

Find more information on recent enhancements we’ve made to our digital tools, as well as opportunities to volunteer to test new web features, on the USPTO website .

Additional information about this page

What Part B covers

If you're in a Medicare Advantage Plan or other Medicare plan, your plan may have different rules. But, your plan must give you at least the same coverage as Original Medicare. Some services may only be covered in certain facilities or for patients with certain conditions.

What's covered?

NEW INSULIN BENEFIT!  If you use an insulin pump that's covered under Part B's durable medical equipment benefit, or you get your covered insulin through a Medicare Advantage Plan, your cost for a month's supply of Part B-covered insulin for your pump can't be more than $35. The Part B deductible won't apply. If you get a 3-month supply of Part B-covered insulin, your costs can't be more than $35 for each month's supply. This means you'll generally pay no more than $105 for a 3-month supply of covered insulin. If you have Part B and Medicare Supplement Insurance ( Medigap ) that pays your Part B coinsurance, you plan should cover the $35 (or less) cost for insulin.

Part B covers 2 types of services

  • Medically necessary services: Services or supplies that are needed to diagnose or treat your medical condition and that meet accepted standards of medical practice.
  • Preventive services :  Health care to prevent illness (like the flu) or detect it at an early stage, when treatment is most likely to work best.

You pay nothing for most preventive services if you get the services from a health care provider who accepts assignment .

Part B covers things like:

  • Clinical research  
  • Ambulance services
  • Durable medical equipment (DME)
  • Partial hospitalization
  • Intensive outpatient program services (starting January 1, 2024)
  • Limited outpatient prescription drugs

2 ways to find out if Medicare covers what you need

  • Talk to your doctor or other health care provider about why you need certain services or supplies. Ask if Medicare will cover them. You may need something that's usually covered but your provider thinks that Medicare won't cover it in your situation. If so, you'll have to  read and sign a notice . The notice says that you may have to pay for the item, service, or supply.
  • Find out if Medicare covers your item, service, or supply .

Medicare coverage is based on 3 main factors 

  • Federal and state laws.
  • National coverage decisions made by Medicare about whether something is covered.
  • Local coverage decisions made by companies in each state that process claims for Medicare. These companies decide whether something is medically necessary and should be covered in their area.

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COMMENTS

  1. What is a Patent Assignment? (Detailed Answer)

    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.

  2. The basics of patent assignments

    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.

  3. Frequently Asked Questions about Patent Assignment

    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 ...

  4. Patents Assignments: Change & search ownership

    Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.

  5. Patent Assignment: How to Transfer Ownership of a Patent

    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 ...

  6. Patent Assignment

    A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property.

  7. What is a patent assignment?

    A patent assignment is a legal document that transfers ownership of a patent from one party to another. The invention rights vest with the person that conceives of the invention unless the inventor has assigned the invention rights to another using the patent assignment. Understanding the basics of patent assignments is crucial for anyone that ...

  8. What is a Patent Assignment?

    A patent assignment is a written agreement that transfers all ownership and control of the defined property (e.g., patent, patent application, patent family) from an assignor to an assignee for a fixed sum. An assignment is distinct from a license, which merely grants a licensee the right to practice the invention claimed in a patent without ...

  9. Patent Assignment: A Basic Guide

    Patent Assignment: A Basic Definition. Basically speaking, a patent assignment is a legal way for an inventor to transfer ownership of a patent to a business. As you may recall, in the United States, only a person (or group of people) can be listed as the inventor of a patent; a business cannot be listed as the inventor.

  10. What Is a Patent Assignment?

    The transfer of the patent rights is embodied in an assignment of the patent to the purchaser. An assignee appears on the cover page of a patent and provides notice of who owns the patent rights. If an assignee is not listed, it is assumed that the inventors own the patent rights. For this reason, each assignment should be reported to the USPTO.

  11. The basics of patent law

    Introduction. Any patent, patent application or any right in a patent or patent application may be assigned (Patents Act 1977 (also referred to as "PA") s.30 (2)) and licences and sub-licences may ...

  12. PTRC

    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.

  13. The Difference Between an Assignment and a License of a Patent

    The transfer of rights in a patent generally fall into two categories: an assignment and a license. The transfer is usually accomplished by an agreement. Whether the agreement at issue is an assignment or a license matters because generally an assignee can sue for infringement alone, while a licensee of less than substantially all of the patent ...

  14. Patent Assignment

    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 ...

  15. PDF Assignment Center Training Guide Patents

    Steps; Account Creation. Center landing page (public facing). On top of page far right, click the link, 'Create an account'. page. Please provide information for all required input boxes, as indicated with an "*"; 4. Once all input boxes are populated, the "Next" button will become "active". 5.

  16. PDF Patent Assignment Considerations within the U.S. and under the Patent

    PCT Applications and Assignment Issues - Example Example - you file a priority application (e.g., a PRV), and get a fully executed assignment for the priority application; the assignment including specific language that assigns the right to claim priority to the priority application in one or more subsequently filed applications.

  17. Assignment Center

    If the assignment has been recorded, it cannot be canceled. You must follow the procedures outlined in the Trademark Manual of Examining Procedure (TMEP) Section 503.06. Regarding patents and patent applications, assignment records cannot be canceled and are rarely expunged; see MPEP 323.01 for correction of assignment records.

  18. What Is an Intellectual Property Assignment Agreement?

    An intellectual property assignment agreement is a legally binding contract that transfers ownership of intangible assets, such as patents, trademarks, copyrights, and trade secrets, from one party to another. This agreement establishes clear boundaries and legal clarity regarding the ownership and usage of intellectual property rights.

  19. 301-Ownership/Assignability of Patents and Applications

    A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee (s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 . II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ...

  20. What Is The Difference Between Assignment And A License ...

    The main difference between assigning your intellectual property rights to another person or entity vs. licensing them to use your intellectual property is that in an assignment, ownership does not stay with the original owner, but goes to the assignee. In a licensing agreement, the licensee is granted the use of the intellectual property, but ...

  21. Patent Assignment: Difference between Assignment of Patent ...

    The term 'assignment of patent' is not defined in the Indian Patents Act. An assignment is an act by which the patentee assigns whole or part of the patent rights to the assignee who acquires a right to prevent others from making, exercising, using, or vending the invention. There are three kinds of assignments.

  22. Patent Assignments in Employment Agreements

    In addition to the wording used in the assignment clause, the language of any carve-outs should also be scrutinized. Agreements may contain a carve-out clause to exclude a new employee's prior inventions from being assigned, or to prevent assignment of inventions unrelated to the employee's work from being swept into the assignment provision.

  23. Difference between a patent license agreement and a patent assignment

    An assignment agreement is an arrangement between the patent holder (the assignor), and a third party (the assignee) wherein the assignor sells or transfers his property (i.e., the patent) to the assignee for consideration. A patentee may assign all or any part of its rights to the assignee. There are two kinds of assignments, namely (i) legal ...

  24. Resources available to support transition to Assignment Center

    As previously announced, starting on February 5, 2024, our modernized assignment system, Assignment Center, will fully replace the Electronic Patent Assignment System (EPAS) and Electronic Trademark Assignment System (ETAS) for processing all patent and trademark assignment requests.. How-to guides on using Assignment Center for patents and trademarks are now available to help stakeholders ...

  25. What Part B covers

    Part B covers 2 types of services. Medically necessary services: Services or supplies that are needed to diagnose or treat your medical condition and that meet accepted standards of medical practice. Preventive services: Health care to prevent illness (like the flu) or detect it at an early stage, when treatment is most likely to work best.; You pay nothing for most preventive services if you ...