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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.

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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.

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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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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Navigating the USPTO Patent Assignment Search: A Comprehensive Guide

By Babak Akhlaghi on March 28, 2024.

The United States Patent and Trademark Office (USPTO) is a pivotal institution in the realm of intellectual property, playing a crucial role in protecting the innovations that fuel progress. Among its varied services, the USPTO patent assignment search stands out as an essential resource for individuals and organizations navigating the intricacies of patent ownership and assignments. This guide delves deep into the functionality and significance of the USPTO’s patent assignment search tool, shedding light on its utility and operation for all stakeholders involved in the patenting process.

Understanding Patent Assignments

To fully appreciate the value of the USPTO assignment search, one must first understand what a patent assignment entails. Essentially, a patent assignment is the transfer of an owner’s rights, title, and interest in a patent or patent application to another entity or individual. This process can occur through the sale of the patent, a transfer of ownership during a business transaction, or through inheritance. The completion of an assignment confers upon the new owner the exclusive rights to the patent, including the authority to prevent others from exploiting the patented invention.

The Role of the USPTO Patent Assignment Search

Central to the USPTO’s offerings is the USPTO assignment database, a comprehensive repository that records all patent assignment information from August 1980 to the current day. This database becomes indispensable for verifying the present ownership of a patent or patent application whenever the USPTO processes pertinent assignment details.

For inventors, legal professionals, and corporations alike, the USPTO assignment search is vital for various reasons. It facilitates due diligence efforts prior to the acquisition or licensing of patents, aids in the resolution of patent right disputes, and ensures adherence to assignment recording protocols.

Utilizing the USPTO Patent Assignment Search

Thanks to the user-friendly interface of the USPTO assignment search tool , users can effortlessly access detailed records of patent assignments. This tool, part of the broader USPTO Electronic Patent Assignment System (EPAS), allows searches by multiple criteria such as patent number, assignor and assignee names, publication numbers, and reel/frame numbers. Results from this assignee search provide comprehensive details about each assignment, including participant names, assigned patents or applications, and the date of assignment.

The USPTO patent assignment search tool is far more than a mere database; it serves as a critical access point to the legal and commercial dimensions of patenting. By facilitating access to exhaustive records of US patent assignments, the USPTO empowers stakeholders across the innovation landscape to make well-informed decisions. This, in turn, helps in averting disputes and promoting the seamless transfer of technology. Whether you are conducting a US patent assignment search, exploring the USPTO assignment database, or utilizing the USPTO trademark assignment search function, the USPTO’s resources are invaluable for anyone involved in the intricate world of patents and trademarks.

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Navigating The USPTO Patent Assignment Search: A Comprehensive Guide

Contributor

The United States Patent and Trademark Office (USPTO) is a pivotal institution in the realm of intellectual property, playing a crucial role in protecting the innovations that fuel progress. Among its varied services, the USPTO patent assignment search stands out as an essential resource for individuals and organizations navigating the intricacies of patent ownership and assignments. This guide delves deep into the functionality and significance of the USPTO's patent assignment search tool, shedding light on its utility and operation for all stakeholders involved in the patenting process.

Understanding Patent Assignments

To fully appreciate the value of the USPTO assignment search, one must first understand what a patent assignment entails. Essentially, a patent assignment is the transfer of an owner's rights, title, and interest in a patent or patent application to another entity or individual. This process can occur through the sale of the patent, a transfer of ownership during a business transaction, or through inheritance. The completion of an assignment confers upon the new owner the exclusive rights to the patent, including the authority to prevent others from exploiting the patented invention.

The Role of the USPTO Patent Assignment Search

Central to the USPTO's offerings is the USPTO assignment database, a comprehensive repository that records all patent assignment information from August 1980 to the current day. This database becomes indispensable for verifying the present ownership of a patent or patent application whenever the USPTO processes pertinent assignment details.

For inventors, legal professionals, and corporations alike, the USPTO assignment search is vital for various reasons. It facilitates due diligence efforts prior to the acquisition or licensing of patents, aids in the resolution of patent right disputes, and ensures adherence to assignment recording protocols.

Utilizing the USPTO Patent Assignment Search

Thanks to the user-friendly interface of the USPTO assignment search tool , users can effortlessly access detailed records of patent assignments. This tool, part of the broader USPTO Electronic Patent Assignment System (EPAS), allows searches by multiple criteria such as patent number, assignor and assignee names, publication numbers, and reel/frame numbers. Results from this assignee search provide comprehensive details about each assignment, including participant names, assigned patents or applications, and the date of assignment.

The USPTO patent assignment search tool is far more than a mere database; it serves as a critical access point to the legal and commercial dimensions of patenting. By facilitating access to exhaustive records of US patent assignments, the USPTO empowers stakeholders across the innovation landscape to make well-informed decisions. This, in turn, helps in averting disputes and promoting the seamless transfer of technology. Whether you are conducting a US patent assignment search, exploring the USPTO assignment database, or utilizing the USPTO trademark assignment search function, the USPTO's resources are invaluable for anyone involved in the intricate world of patents and trademarks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

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SEARCHABLE AOTW FIELDS

Reel/Frame Query (Ex:020252/0217) Enter at least 1 digit in the reel field and then tab to the frame field to enter at least 1 numeric digit.

Patent Number Query (Ex:8000000) Search assignments based on Patent issued.

Publication Number Query (Ex:20040002535) Search assignments based on Published Applications.

Assignor Name Query     Assignee Name Query     Assignor/Assignee Name Query User must enter at least 2 characters for a name search. Records that contain the exact data entered at a minimum will be extracted and displayed in a name summary page--> To reduce the number of records returned, more specific search criteria should be entered. Enter the name SMITH (without a comma) all records that contain the name SMITH will be displayed. However if you enter SMITH,(with a comma) only records beginning with SMITH, will be displayed. Individual names are stored in the database by last name followed by first name or first name initial.

Assignee Name Index Query     Assignor Name Index Query Enter at least 1 character (alpha and/or numeric) to execute a name index search. This type of search permits the user to browse the assignment assignee records alphabetically. An index search returns all records starting with the entered character(s) and continuing through all assignment (assignee or assignor) records that follow alphabetically. The results from conducting an Assignee Name Index search provides an Assignee Summary screen and contains additional queries for each property number and each name displayed. Please see "Assignee Name Index Query" above for additional information.

Depending on your query, All data associated with the recorded assignment will be displayed. The search results contain assignment details for a specific recorded assignment.

Additional Queries Available

Select to get and view patents, abstract viewer.

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In response to public feedback regarding the retirement of the legacy search systems, a new simplified interface of Patent Public Search named Basic Search is now available. Basic Search is recommended for users new to Patent Public Search, or for users who only need to perform a quick look up.

PatFT, AppFT, PubEAST and PubWEST were retired on September 30. Preexisting links to U.S. patents and pre-grant publications are no longer available. You will need to create new links for saved documents. Read through this  step-by-step guide  on how to set up a web link to access a saved document, as well as set up saved search queries. For questions regarding Patent Public Search, please contact the Public Search Facility at  [email protected] .

Search for patents

New to Patent Searching? See this important information about searching for patents:

How to Conduct a Preliminary U.S. Patent Search: A Step by Step Strategy  - Web Based Tutorial (38 minutes)

• The Seven Step Strategy  - Outlines a suggested procedure for patent searching
• A detailed handout of the Seven Step Strategy with examples and screen shots.

Patents may be searched using the following resources:

Patent Public Search

The Patent Public Search tool is a new web-based patent search application that will replace internal legacy search tools PubEast and PubWest and external legacy search tools PatFT and AppFT. Patent Public Search has two user selectable modern interfaces that provide enhanced access to prior art. The new, powerful, and flexible capabilities of the application will improve the overall patent searching process.

Global Dossier

Global Dossier is a set of business services aimed at modernizing the global patent system and delivering benefits to all stakeholders through a single portal/user interface .  Through this secure service, users have access to the file histories of related applications from participating IP Offices, which currently include the IP5 Offices.

By using this service, users can see the patent family for a specific application, containing all related applications filed at participating IP Offices, along with the dossier, classification, and citation data for these applications. This service also provides Office Action Indicators to help users identify applications that contain office actions, a Collections View for saving documents and applications for review later on in the session, and the ability to download the documents in an application.

Public Search Facility

The United States Patent and Trademark Office (USPTO) Public Search Facility located in Alexandria, VA provides the public access to patent and trademark information in a variety of formats including on-line, microfilm, and print. Trained staff are available to assist public users.

Patent and Trademark Resource Centers (PTRCs)

Your nearest Patent and Trademark Resource Center (PTRC) maintains local search resources and may offer training in patent search techniques.

• Find your nearest PTRC
• 7 Steps to Searching at a PTRC

Patent Official Gazette

The Electronic Official Gazette allows users to browse through the issued patents for the current week. The Official Gazette can be browsed by classification or type of patent, for example, utility, design, and plant.

Common Citation Document (CCD)

The Common Citation Document (CCD) application aims to provide single point access to up-to-date citation data relating to the patent applications of the IP5 Offices. It consolidates the prior art cited by all participating offices for the family members of a patent application, thus enabling the search results for the same invention produced by several offices to be visualized on a single page. The creation of the CCD application is part of an ongoing process of technical harmonization at international level aimed at establishing an appropriate infrastructure to facilitate greater integration of the global patent system.

Search International Patent Offices

To see if your idea has been patented abroad, you'll want to refer to searchable databases made available from other International Intellectual Property offices. Free online access to patent collections is provided by many countries. Some available databases include:

• European Patent Office (EPO) provides esp@cenet a network of Europe's patent databases- This site also provides access to machine translation of European patents for some languages. 
• Japan Patent Office (JPO) - This site also provides access to machine translations of Japanese patents.
• World Intellectual Property Organization (WIPO) provides PATENTSCOPE ® Search Service, which features a full-text search of published international patent applications and machine translations for some documents as well as a list of international patent databases.
• Korean Intellectual Property Rights Information Service (KIPRIS)
• China National Intellectual Property Administration (CNIPA) - This site also provides access to machine translation of Chinese patents.
• Other International Intellectual Property Offices that provide searchable patent databases include: Australia , Canada , Denmark , Finland , France , Germany , Great Britain , India , Israel , Netherlands , Norway , Sweden , Switzerland and Taiwan .

Stopfakes.Gov provides informative Toolkits that give an overview of the Intellectual Property Rights (IPR) environment in various countries around the world.

For additional search resources, contact your local Patent and Trademark Resource Center , visit the USPTO Public Search Facility or the USPTO Main STIC Library . The staff in the Main STIC Library are experts on foreign patents and able to help the public as needed.

Search Published Sequences

The Publication Site for Issued and Published Sequences (PSIPS) website provides Sequence Listings, tables, and other mega items for granted US patents or published US patent applications.

All sequences (SEQ ID NOs.) and tables for listed patents or publications are available for viewing, without downloading, by accessing the proper document detail page and then submitting a SEQ ID NO or a mega table ID number.

Patent Assignment Search

Visit the Patent Assignment Search website to search for patent assignments and changes in ownership.

Patent Examination Data System (PEDS)

The Patent Examination Data System (PEDS) in the Amazon Cloud provides public users the ability to search, view and download bibliographic data for all publicly available Patent applications in a secure manner. The solution allows public users to search and download bibliographic data in bulk as well as manage the volume of data that can be downloaded at any given period of time by a particular user.

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