uspto assignment recordation epas

29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

• 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.

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!

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.

An official website of the United States government Here’s how you know keyboard_arrow_down

An official website of the United States government

The .gov means it’s official. Federal government websites often end in .gov or .mil. Before sharing sensitive information, make sure you’re on a federal government site.

The site is secure. The https:// ensures that you are connecting to the official website and that any information you provide is encrypted and transmitted securely.

Jump to main content

Coming soon: USPTO’s new modernized assignment system is replacing ETAS and EPAS

As part of our updates to online services, the U.S. Patent and Trademark Office (USPTO) is reforming the Electronic Trademark Assignment System (ETAS) and the Electronic Patent Assignment System (EPAS) into one cohesive and modernized system: Assignment Center. The new system will be available to customers starting on January 22, 2024 . 

Assignment Center provides integrated information support by processing all patent and trademark reassignment requests, in which a patent or trademark holder transfers ownership or changes the owner’s name on their pending or granted application or registration. It also enhances customer service by enabling USPTO staff to track the status of customer requests, record data, and issue reports from one secure cloud-based system. 

This upgrade of USPTO systems is just one way we are updating our online services. For information on additional enhancements, visit our website improvements page . Stay current with the USPTO by subscribing to receive email updates at our Subscription Center .

Additional information about this page

• Technologies

S+B - May 04, 2018

The difference between theoretically and practically: Correcting Assignment Coversheets at the USPTO

This is why the USPTO rules and guidelines provide procedures to correct mistakes, in particular typos and other mistakes of clerical nature at various stages of the prosecution (see, for examples, 37 CFR 1.76(c) Correction of ADS, PCT Rule 91.1 Rectification of Obvious Mistakes, 37 CFR 1.121(b) Amendments to Specification, 37 CFR 1.323 Certificate of Correction of Applicant’s Mistake, and 37 CFR 3.34 Correction of Cover Sheet Errors).

These procedures typically work well unless one has to deal with correction of assignment cover pages. In those situations, a user is faced with an apparent disconnect between how the MPEP instructs that the USPTO handle requests for a correction to an assignment coversheet and how the USPTO Assignment Branch actually handles those requests.

In theory (i.e., MPEP 323.01(a); 37 CFR 3.34), the requirements for correcting a cover sheet are to provide a) a copy of the originally recorded assignment document, b) a corrected cover sheet, and c) the payment of a fee. Also the request can be filed by mail (see MPEP 302.08)   or fax (see MPEP 302.09). If you want to file the correction electronically with EPAS, the MPEP instructs to check the box marked “other” under “nature of conveyance” and fill in reel/frame and the nature of the correction. Simple, right?

In practice, requests for correction of Notices of Recordation of Assignment (NORA) by mail and fax and request filed by EPAS checking the box marked “other” in accordance with the MPEP procedure can be inexplicably rejected by the USPTO Assignment Branch.

It appears from exchanges with the USPTO Assignment Branch Examiners that the main reason is the presence of a  de facto  EPAS-centered procedure at the USPTO Assignment Branch and an EPAS configuration that makes the option indicated by the MPEP impractical.

In particular, it appears that the only practical way to perform the correction of a NORA incorrect due to information of the cover page, is to file the related request as a request for a “corrective assignment”, which is a different option than “other” and refers to a completely different situation (an error in the recorded assignment, see MPEP 323).

This is inexplicable because EPAS is a system that is specifically tailored for Assignment Branch requests, and yet EPAS cannot handle a type of request that is so common that the request has its own MPEP section.

There should be no difficulty in having a separate button under “nature of conveyance” labeled “Correction to Cover Sheet” with text fields for the required information, just like the “Corrective Assignment” button.

This would aid the public in having an evident-on-its-face selection for addressing that specific request and it would aid the Assignment Branch in removing the ambiguity in the rules regarding how they should process such requests.

Regardless, USPTO Assignment Branch’s practice should allow Applicants to file requests by mail and/or fax as these routes are specifically indicated in the MPEP.

If that turned out to be impractical, a modification of the USPTO guidance, rules (MPEP and CFR) and/or practice so that they align and clearly address different situations (such as a correction of a cover page and a correction of an assignment) would also help users and Examiners.

Meanwhile, it seems that the best way to handle these corrections is to communicate with the USPTO Assignment Branch to ensure streamlining of a procedure that should only be a minor bump on the road.

We surely hope to soon see an improved EPAS system for a speedy processing of recordation requests in line with the USPTO rules.

previous news

© 2017 Steinfl+Bruno LLP Intellectual Property Law //// 155 N Lake Ave Ste 700 / Pasadena, CA 91101 //// +1(626)792-0536 //// [email protected] //// Disclaimer

SITO è un progetto LOLA

Ant-Like Persistence

Recordation delays at USPTO’s Assignment Branch

When we e-file a new patent application in EFS-Web, the prize that we seek is the all-important application number .  EFS-Web gives us this very important number within seconds of our clicking “submit”.

When we e-file an assignment in EPAS (the system for e-filing patent assignments for recordation), the prize that we seek is the all-important reel and frame number.   But the EPAS system does not give us this very important number right away.  Usually it takes a few days.

Why does it take a few days?  Why does USPTO not provide the all-important reel and frame number within seconds of our clicking “submit”?

A cynic would imagine that the explanation is an LMR (labor-management relations) issue.  Maybe the USPTO feels it cannot do away with these jobs.

I suppose that’s not the explanation.  I suppose the USPTO feels the need to check the uploaded PDF to see if it contains scandalous subject matter.  And perhaps to check to see whether the document appears on its face to be an assignment (rather than, say, a newspaper clipping).

Normally this takes two or three days.  But we have an assignment that we e-filed on October 10, 2016.  Almost a month has passed and still we do not have the all-important reel and frame number.

So we phoned up the Assignment Branch.  Once a couple of weeks ago and again today.  The people who answer the phone there are very nice.  They did not fix the problem, but they are very nice.  It seems that our submission is still “in process”.

This particular assignment conveys several dozen properties.  I asked the Assignment Branch person whether this might explain the delay.  She said no, the delay is not due to the large number of properties.  She also said no, it is not tied to the type of conveyance.  It is just the large number of assignments that had been e-filed.

This actually doesn’t make a lot of sense to me.  We have e-filed at least a dozen assignments since that one on October 10, and in each case we received the all-important reel and frame number within a couple of days.

So I don’t really understand why this one is outstanding since October 10.

How old is your oldest assignment that does not yet have a reel and frame number?  Please post a comment below.

Share this:

9 replies to “recordation delays at uspto’s assignment branch”.

My oldest assignment is October 17, and, of course, happens to be involved in an asset-purchase agreement, so we are anxious to have the recordation complete. I, too, called the USPTO and our assignment is in the “queue.” I have received other notices of recordation the next day, but, of course, not this one.

My assignments have all been delayed for the past few months. I received a reel/frame # and Notice of Recordation today for a TRADEMARK Assignment I filed on 10/18. For years I have received the TM reel/frame # in just one or two days, but the past few months have been significantly longer.

My oldest outstanding PATENT Assignment was filed on 10/26.

I have an assignment from October 6, 2016

Thank you Anna for posting. Having heard of your October 6 assignment that USPTO has not yet recorded, I feel less alone in having our October 10 assignment that USPTO has not yet recorded.

In this digital age, why do we use reel/frame anyway? Surely they’re not using microfilm? Or … are they?

I’m calling the Assignment Branch right now about an assignment we submitted on September 15, 2016 – almost two months ago. I understand a delay of a few days, but weeks or months is unacceptable. I think someone is sleeping over there.

• Pingback: Delay of 36 days at USPTO's Assignment Branch - Ant-like Persistence

I feel better finding this discussion. We have outstanding assignments submitted for recordation on October 27 and November 9, and have made a couple of follow up phone calls – waiting two weeks between calls requesting the status, and have experienced the same: very nice and polite personnel, but still do not have recorded documents. It seems unpredictable as we have received notices of recordation for other assignments that were submitted on October 27, November 1, November 9, and November 10.

We have a trademark assignment that we e-filed in ETAS on January 24. Now it is February 8, and still no reel and frame number. A delay of more than two weeks.

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Save my name, email, and website in this browser for the next time I comment.

Notify me of follow-up comments by email.

Notify me of new posts by email.