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
Patent Assignment: What Is It?
A patent assignment is a part of how to patent and 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 the exclusive rights to the 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.
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.
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.
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 the 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.
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.
Patent assignments are official documents. The assignee 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.
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.
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 Sheet
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, Stripe, and Twilio.
The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012. These new provisions went into effect on September 16, 2012 and apply to all non-PCT U.S. patent applications filed under 35 U.S.C.§ 111(a) (including continuing and PCT bypass applications) filed on or after September 16, 2012. These provisions are applicable to oaths and declarations in design, plant, and reissue applications irrespective of the fact that they are not filed under 35 U.S.C.§ 111(a).
Forms are now available for download. Our old forms are also available since for PCT national stage applications, the new inventor's oath/declaration provisions only apply to applications having an international filing date on or after September 16, 2012. Accordingly, the old inventor oath/declaration forms should be used for any such national stage applications with an international filing date prior to September 16, 2012.
You will notice that there are now several options available: A combined Declaration/Assignment document or a Declaration document that will need to be filed with a separate Assignment instrument. In both cases a separate Power of Attorney form will need to be submitted. These forms are available on our "Download" tab above. The other noticeable change is that as a result of the new requirement for an Application Data Sheet to be submitted with all new applications, the Declaration form itself contains only very basic information, and each inventor signs his or her own copy of the Declaration or Declaration/Assignment form. All of the signed forms are then submitted to the USPTO.
Regarding the Power of Attorney, if an assignee files an application as the applicant, a Power of Attorney by Applicant form should be signed by a party authorized to act on behalf of the assignee. After a company provides our firm with an executed Power of Attorney by Applicant, it will not be necessary to provide us any further Power of Attorney forms for future filings of patent applications on behalf of that assignee so long as the assignee is the applicant in those cases. Accordingly, a copy of the Power of Attorney by Applicant will be filed along with a Transmittal form, which our firm will prepare and execute, identifying a specific application for the Power of Attorney.
Similarly, if there is no assignee, or if the assignee has opted not to file the application and not to take over prosecution to the exclusion of the Inventor(s), the Inventor(s) and/or an Inventor’s Legal Representative (if an Inventor is deceased or legally incapacitated) are the applicants and should execute the Power of Attorney by Applicant . This will grant our firm Power of Attorney for one specific patent application identified in an attached Transmittal form, which we will prepare and execute. If, however, the Inventor(s) are the original applicants of an application and an assignee or assignees wishes to take over prosecution to the exclusion of the Inventor(s), a representative of the company, i.e., the assignee, should execute a Power of Attorney to Prosecute to be filed along with a Statement Under § 3.73(c) establishing ownership of the application. To establish ownership, any Assignment from the Inventor(s) must be recorded concurrently with or prior to the filing of the Power of Attorney to Prosecute. Please note that the filing of an ADS with a new application sets forth the identification of the applicant. Where an application is filed without indentifying an assignee(s) as the applicant, the USPTO identifies the inventor(s) as the applicant. Under such circumstances, if the assignee wishes to be identified as the applicant, then the assignee(s) would need to execute a Power of Attorney to Prosecute to be filed along with along with a Statement Under § 3.73(c) rather than a Power of Attorney by Applicant.
The following USPTO patent forms may be installed on your computer. Please click on the appropriate declaration or assignment form below to see instructions on how to use the form and how to download/save it to your computer. You may then open and use the forms directly from your computer.
Forms for Applications filed on or After September 16, 2012
Forms for U.S. Applications with a filing date before September 16, 2012 or for PCT Applications with an international filing date before September 16, 2012
Combination Inventor Declaration/Power of Attorney
Separate Inventor Declaration & Power of Attorney
Inventor Declaration (All Languages)