Guide To Patenting And USPTO Patent Applications

What Are Patent Assigments? Patent Licensing?

A patent is personal property and may be sold to others or mortgaged; it may be bequeathed by a will, and it may pass to the heirs of a deceased patentee.

What Is A Patent Assignment?

Patent law provides for the transfer or sale of a patent by a written agreement called an "assignment" that can transfer the entire interest in the patent. The assignee, when the patent is assigned to him or her, becomes the owner of the patent and has the same rights that the original patentee had.

Patent law also provides for the assignment of a part interest, that is, a half interest, a fourth interest, etc., in a patent.

You can also grant an assignment that is only for a particularly specified part of the United States.

A mortgage of patent property passes ownership to the mortgagee or lender until the mortgage has been paid back and a retransfer from the mortgagee (linder) back to the mortgagor (the borrower) is made.

This situation is called a "conditional assignment" however, all patent rights are transfered until the conditional assignment is canceled by both parties or by the decree of a competent court.

Use a Notary Public

An assignment, grant, or conveyance of any patent or application for patent should be acknowledged before a notary public or officer authorized to administer oaths or perform notarial acts. The certificate of such acknowledgment constitutes undisputable evidence of the execution of the assignment, grant, or conveyance.

Recording of Assignments

The US Patent Office records assignments, grants, and similar instruments sent to it for recording, and the recording serves as notice.
If an assignment, grant, or conveyance of a patent or an interest in a patent (or an application for patent) is not recorded in the US Patent Office within three months from its date, there can be no subsequent purchaser(s).

Assignments - Correct Style

Any written document should identify the patent by number and date.
The name of the inventor and title of the invention as stated in the patent should also be given. An written document relating to a patent application should identify the application by its application number and date of filing, the name of the inventor, and title of the invention as stated in the application should also be given.

Sometimes an assignment of an application is executed at the same time that the application is prepared and before it has been filed in the Office. Such assignment should adequately identify the application, as by its date of execution and name of the inventor and title of the invention, so that there can be no mistake as to the application intended.

Assignee - Listed on Patent

If an application has been assigned and the assignment is recorded, on or before the date the issue fee is paid, the patent will be issued to the assignee as owner. If the assignment is of a part interest only, the patent will be issued to the inventor and assignee as joint owners.

Joint Ownership - Patent Licensing

Patents may be owned jointly by two or more persons as in the case of a patent granted to joint inventors, or in the case of the assignment of a part interest in a patent. Any joint owner of a patent, no matter how small the part interest, may make, use, offer for sale and sell and import the invention for his or her own profit provided they do not infringe another’s patent rights, without regard to the other owners, and may sell the interest or any part of it, or grant patent licensing to others, without regard to the other joint owner, unless the joint owners have made a contract governing their relation to each other. It is accordingly dangerous to assign a part interest without a definite agreement between the parties as to the extent of their respective rights and their obligations to each other if the above result is to be avoided.

Patent Licensing

The owner of a patent may grant licenses to others. Since the patentee has the right to exclude others from making, using, offering for sale or selling or importing the invention, no one else may do any of these things without his/her permission. A patent licensing agreement is in essence nothing more than a promise by the licensor not to sue the licensee. No particular form of license is required; a license is a written contract and may include whatever provisions the parties agree upon, including the payment of royalties, etc.

The drawing up of a license agreement (as well as assignments) is within the field of an attorney at law.

Such attorney should be familiar with patent matters as well. A few States have prescribed certain formalities to be observed in connection with the sale of patent rights.

Next - Patent Infringement