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Patent Assignments: Everything You Need to Know

Are you an inventor or a savvy business owner with a new idea? Then you’re in the right place! You’re probably wondering how to protect your intellectual property, and a patent is a great way to do just that. But, did you know that simply getting a patent isn’t always the best option for all inventors? Enter the patent assignment – a legal written agreement that transfers ownership of your patent to another party. Don’t worry if you’re new to the concept, we’ve got you covered.

What is a patent assignment?

A patent assignment is a legal document that transfers ownership of a patent from one person (or business) to another. This can be done for a variety of reasons. For example, maybe you decide to sell your patent. Or, you may want to transfer the ownership to a business partner or collaborator. A patent can also be assigned as collateral for a loan. In any case, the assignment must be in writing and signed by both parties in order to be legally binding.

There are a few key things to keep in mind when it comes to patent assignments. First, it is important to note that patents can be assigned in whole or in part. This means that you can assign your entire patent to another individual/company, or you can assign just a portion of the patent rights, such as the right to manufacture or sell the invention.

When can I execute a patent assignment?

Another important consideration is the timing of the assignment. Patent assignments can be made at any time after a patent is granted, but it is typically best to do so as early as possible to ensure that the assignment is legally valid and enforceable. In addition, if you plan to assign your patent to someone else, it is important to make sure that the assignment is in compliance with any contractual obligations you may have, such as agreements with investors or business partners.

Why would a patent assignment be valuable to me?

Patent assignments can be a great way to monetize your invention. By assigning your patent rights to another party, you can receive a lump sum payment or ongoing royalties in exchange for the use of your invention. This can be especially beneficial for inventors or small business owners who may not have the resources to fully commercialize their invention on their own. Additionally, assigning your patent rights can allow you to focus on other aspects of your business, such as research and development, without worrying about the day-to-day operations of manufacturing and sales.

How do I find information on patent assignments?

The USPTO has a patent assignment search tool that contains assignment information on all patents issued after 1980. And yes, it’s public and free to use!

Simply visit the link above and select whether you want to search for a patent assignment or a trademark assignment. You can switch between the two search tools at the top of the page.

There’s options for a quick lookup, basic search, and advanced search depending on what parameters you want to search by. You will need to enter one or more search criteria, which can include the patent number, the assignee name, the assignor name, or the publication number. You can also specify the date range for your search to limit the results.

Once you have entered your search criteria, click on the “Submit” button, and the search results will be displayed. Here’s an example of a result from the basic search option.

The search results will include a list of patent assignments that match your search criteria, along with the assignee name, the assignor name, the recorded date of the assignment, and the reel and frame number for the assignment document. You can click on the hyperlinked patent number to view the patent details, including the application and grant information, as well as any related documents, such as assignments or maintenance fees.

I want to learn more about assigning my patent.

If you are considering a patent assignment, it is essential to work with an experienced attorney. A patent attorney can help you understand your legal rights and obligations, and can guide you through the assignment process to ensure that your interests are fully protected.

At Bold Patents Law Firm, we have extensive experience in patent assignments and other aspects of intellectual property law. Our team of skilled attorneys can help you navigate the complex legal landscape of patent assignments, from drafting the assignment agreement to ensuring that it is legally valid and enforceable.

In addition to patent assignments, we also offer a wide range of other related services, including patent searches, patent applications, and trademark services. Whether you are an inventor, a business owner, or a patent holder, we are here to help you protect your intellectual property and achieve your business goals.

If you’re ready to take action, schedule a free screening call with our advisors. We want to help you realize your visionary dreams! Go Big, Go Bold!

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Patent Assignment: A Basic Guide

March 12th, 2020 ‧ 5 min read.

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.

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.

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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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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An intellectual property law firm: patents, trademarks, and copyrights., viewing patent assignments.

Patent assignment documents can be searched for - and viewed - by using the United States Patent and Trademark Office Patent Assignment Search webpage .

You can search for an assignment by using: the assignor’s name; the assignee’s name, patent application number, patent number, and other information tied to the patent. 

A patent assignment is generally considered the transfer of patent rights. 

Use this information as a starting point for doing due diligence on investments; or mergers and acquisitions.

How do I research patent assignments?

There are three main elements you will need to be able to do for research on patent assignments: 

The main task is: 

A) finding patent assignments filed with the Patent Office

• this will show you the actual documents or contracts where the patent rights are transferred 

In order to do that you will need to:

a) look up the patent or patent application  

• this will show you what patents or patent applications the company publicly owns so you can view the relevant assignments

b) view the full patent or patent application file  

• this will show you the continuity data about related applications/patents so you can view any later patents or patent applications which were created later in time, to determine if those property rights were also transferred 

How do I find a patent assignment?

Assignments of patents are publicly recorded through the United States Patent and Trademark Office (USPTO).

Use the steps below find the chain of title transfer -- and in general researching assignments when doing due diligence for investments. 

• You will find relevant patents attached to the company being researched. 
• Then, you will determine all the patents or patent applications which come before or after the relevant patents by viewing Continuity Data in the full patent file. 
• Once all the relevant patents are known, those Patent Numbers and Patent Applications Numbers will be entered into the patent assignment database, with all the assignments for that particular Patent Number or Patent Application Number. Then view the actual contract for each patent assignment to view the transfer of rights starting at the first assignment.

1. Finding the patents or patent applications:  

Start with finding the patents or patent applications which are publicly available (looking up a patent or patent application). All patents are published when issued. Patent applications are usually published 18 months after the filing date of the patent application. In some instances an applicant will request a patent application is not published before issuance.

Find patents or patent applications related to a company or individual by searching under the Field of Assignee name or Applicant name in the Basic Search of the USPTO Public Patent Search .

2. Viewing related patents or patent applications

To find information related to the original patent or patent application you will need to go to t he USPTO Patent Center , which allows you to view the full patent file. When viewing the patent file in the Patent Center, go to the Continuity Data tab. In the Continuity Data tab you will see information about any patents or patent applications which came after the patent file you are looking at – and you will see information about any patent or patent application which came before the patent file you are looking at. 

3. View the assignments

When searching patents in the Patent Office Assignment Database there will be a list of assignments for that Patent or Patent Application. Start at the first assignment until the last assignment to view the chain of title. Within each assignment document review the cover sheet for accuracy but then continue to the next section to the actual contract transferring the patent rights -- and view the transfer.

Other Information for Understanding Patent Assignments

What are you looking at when you view a patent assignment.

You will view: (1) the Patent Assignment Cover Sheet, then (2) the Actual Assignment Contract which shows the transfer of rights.

The Cover Sheet describes the transfer and who the assignment is between.

The parts of the Cover Sheet are:

• Nature of Conveyance: Examples include - assignment, assignment due to merger, change of name, security interest, or court order. 
• Conveying Party Data (the assignor) 
• Receiving Party Data (the assignee) 
• Property Numbers: the US Patent Numbers, the US Patent Application Numbers, or the PCT International Applications 

After the Cover Sheet is the Actual Assignment Contract conveying the interest. The actual agreement can be viewed to determine what the agreement is transferring. There is no verification process by the Patent Office, where the Patent Office will view the actual agreement. The Patent Office only records the assignment. 

What is a patent assignment?

An assignment of a patent is a transfer of ownership of patent rights. An assignor is the person/entity transferring patent rights to another person/entity. An assignee is the person/entity receiving patent rights from another person/entity. The assignor transfers their patent rights to the assignee. 

Can I just look at the patent itself and not do an extensive search?

The patent or patent application may be assigned to another company after what is published in the patent or patent application. Therefore, viewing the assignee information on the Patent Office Assignment Database is important – instead of only looking at what is on the face of a published patent or patent application. 

Other important information about ownership and assignments

35 U.S.C. 261   Ownership; assignment.

“... Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing." 

"An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” 

Extra Reading

From the Law Office of John B. Hudak:

• Read more about looking up patents: Looking up a Patent or Patent Application  
• Read more about searching using different fields in legal research: Using All Fields Available - Explanation of the Most Common Fields  
• Read more about viewing the full patent file: Viewing the Full Patent or Patent Application File  

From the Patent Office:

• Frequently Asked Questions about patent assignments explained by the United States Patent and Trademark Office
• A working paper by the Patent Office explaining patent assignments – gives an example of a lost chain of title

From another Law Firm:

• An article by the Finnegan law firm describing how a patent owner can assert rights in a patent even if a security interest is granted or recorded

Attorney Advertising. This website is for informational purposes only and is not legal advice. Using this site or communicating with the Law Office of John B. Hudak, PLLC through this site does not form an attorney-client relationship.   An attorney-client relationship shall be formed only after an Attorney Engagement Letter is sent by the law office to the Client. Please do not share any unsolicited confidential information with our law firm by email or phone. This site is legal advertising. Copyright © 2024 

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