uspto assignment rules

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35 U.S. Code § 261 - Ownership; assignment

Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.

Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant or conveyance of a patent or application for patent.

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.

Based on Title 35, U.S.C., 1946 ed., § 47 (R.S. 4898, amended (1) Mar. 3, 1897, ch. 391, § 5, 29 Stat. 93 [ 29 Stat. 693 ], (2) Feb. 18, 1922, ch. 58, § 6, 42 Stat. 391 , (3) Aug. 18, 1941, ch. 370, 55 Stat. 634 ).

The first paragraph is new but is declaratory only. The second paragraph is the same as in the corresponding section of existing statute. The third paragraph is from the existing statute, a specific reference to another statute is omitted. The fourth paragraph is the same as the existing statute but language has been changed.

2012— Pub. L. 112–211 inserted “The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.” at end of first par. and substituted “An interest that constitutes an assignment” for “An assignment” in fourth par.

1982— Pub. L. 97–247 inserted “, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States”.

1975— Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.

Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012 , applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effective date, see section 203 of Pub. L. 112–211 , set out as an Effective Date note under section 27 of this title .

Amendment by Pub. L. 97–247 effective Aug. 27, 1982 , see section 17(a) of Pub. L. 97–247 , set out as a note under section 41 of this title .

Amendment by Pub. L. 93–596 effective Jan. 2, 1975 , see section 4 of Pub. L. 93–596 , set out as a note under section 1111 of Title 15 , Commerce and Trade.

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.

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Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights.  Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed.  This article summarizes the requirements for filing and prosecuting a U.S. patent application filed post-America Invents Act (AIA) without a patent assignment and identifies pitfalls when establishing ownership of patent rights for patent prosecution.  Inventors being unavailable may also complicate obtaining the declarations required for U.S. patent prosecution, but solutions are available as we previously discussed  here .

Need for an Assignment

For a patent to issue to an assignee, the United States Patent and Trademark Office (the “USPTO”) must be made formally aware of the assignment so that the assignee is recognized as the patent applicant.  Filing an Application Data Sheet (ADS) for a patent application identifying the assignee as the applicant provides informal notice to the USPTO.   MPEP § 301  discusses ownership/assignability of patents and applications, including formal assignment recordation at the USPTO.  Recording an assignment may be necessary to permit the assignee to “take action” in the patent application during prosecution and for the patent to issue in the name of the assignee.   37 CFR 1.46 ; MPEP §§  301 ,  302 ,  605 .  In other words, assignees may face obstacles prosecuting a patent without an executed assignment.  The assignment(s) must transfer the entirety of patent rights from each of the inventors to the assignee, e.g., corporation, partnership, university, government entity, etc.  There can be multiple assignees if different inventors assign their rights to different assignees, a situation that results in two or more partial assignees that must each be identified to the USPTO as an applicant.   MPEP § 301 .

As only one patent assignment is required per inventor per patent application, subsequent applications claiming priority may often rely on an earlier assignment (depending on the assignment’s particular language).  If new subject matter is introduced in the application being filed, such as in a continuation-in-part application, another assignment may be required.

Persons who may file a Patent Application without an Assignment

Fortunately, applicants may procure a patent even if an inventor is not available to sign an assignment before application filing or during prosecution before payment of the issue fee. 

A person to whom the inventor is under the obligation to assign the invention may file a patent application and be identified as the applicant.  An assignment can then be subsequently executed and the USPTO notified as discussed above.  Alternatively, other documentary evidence of ownership, such as an employment agreement, invention disclosure form, or other documentation, can be recorded with the USPTO in lieu of a signed assignment document.   37 CFR 1.46 .  Employment agreements may contain language stating that the inventor assigns all rights, title, and interests in any invention developed while employed by the employer.  In some instances, the employment agreement may affirmatively state that the employee is under an obligation to assign the invention to the employer.  An invention disclosure form may contain language stating that the inventor’s signature on the form acknowledges the inventor’s assignment of and/or obligation to assign any rights, title, and interest in the invention disclosure to the employer.  If the invention disclosure form includes the inventor’s signature, this may be sufficient evidence that the employer is an obligated assignee.   37 C.F.R. 1.46(b)(1) .  It is important to examine any documentary evidence of ownership before recordation to identify any information (e.g., industry trend language, discussion of prior art, personal information of an employee, etc.) that may require redaction before recordation and/or may make public recording of the documentary evidence an undesirable option for the applicant.

Also, a person who shows sufficient proprietary interest in the matter may file a patent application and be identified as the applicant upon showing that such an action is appropriate, with the resulting patent being issuable in the applicant’s name.   37 CFR 1.46 .  If filing a national stage application, the applicant must have been identified in the international stage of the international application or as the applicant in the publication of the international registration. 

Showing Sufficient Proprietary Interest or Obligation to Assign

As provided in  37 CFR 1.46(b)(2) , “[i]f the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.”  Additionally, as stated in  MPEP § 409.05 , “[t]he ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.”

Showing sufficient proprietary interest requires “proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”   37 CFR 1.46(a) ;  37 CFR 1.424 .  Showing sufficient proprietary interest is discussed in  MPEP § 409.05  and may be established in various ways depending on the circumstances.  MPEP § 409.05 states that

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant.  The facts in support of any conclusion that a court would award title to the 37 CFR 1.46 applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same.  The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved.  A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

Remember that an applicant as a person who otherwise shows sufficient proprietary interest in the matter must submit the required petition, fee, and information prior to paying the issue fee as set forth in  37 CFR 1.46 .

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights even without execution of a signed assignment by an inventor.  Before doing so, however, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

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E-Signing Patent Documents Might Sometimes Be the Wrong Approach

By Joseph Hetz and Hervey Su

Prior to the Covid-19 pandemic, the US Patent and Trademark Office’s electronic signature rules required inventors to type their signature between two slashes or use a graphically inserted replica of a previously created wet—or ink—signature.

During the pandemic’s early days, the USPTO revised its e-signature guidance to allow e-signatures created with a commercial platform, such as DocuSign.

With many inventors working from home, the platform became a popular tool for obtaining inventor signatures on declarations and assignments.

Although many employees are returning to the office, the work-from-home-era practice of using DocuSign is here to stay, especially since people are accustomed to using the tool in various aspects of their lives. However, there are three misconceptions about using DocuSign for patent documents.

Myth: The USPTO Accepts ‘DocuSign Signatures’

One misconception is that, because of its revised guidance, the USPTO now accepts “DocuSign signatures,” as if a “DocuSign signature” was monolithic. But there are many ways DocuSign can be used to create an e-signature, and only some comply with the guidance.

For example, the signor often chooses a signature to adopt—usually having a script font that has the appearance of a written signature. Such a signature wouldn’t comply with USPTO guidance because it is missing slashes before and after the signature.

Fortunately, DocuSign allows the slashes to be prepopulated, eliminating the risk of forgetting to include them. Also, the USPTO allows “hand-drawn” signatures—e.g., using a mouse or a fingertip—that don’t require slashes, and DocuSign can be configured to force the inventor to create such a signature.

Myth: E-Signature Rules Apply to Assignments

Since declarations and assignments are often presented together to an inventor, USPTO rules on e-signatures often are assumed to apply to both declarations and assignments.

Unlike signatures on declarations, which are governed by USPTO rules, signatures on assignments are only governed by federal and state law, such as the E-signatures in Global and National Commerce Act and the Uniform Electronic Transactions Act .

Still, since the documents are typically signed together, it’s good practice to configure DocuSign to use the same signature rules on both the declaration and the assignment.

Also, since evidence of the signor’s intent is typically examined when determining the validity of an e-signed document, it’s good practice to include language in the assignment that the assignor agrees to using e-signatures.

Myth: Wet Signatures Needed for Foreign Filings

Another misconception is that foreign countries don’t accept e-signatures. But Canada’s Intellectual Property Office honors a variety of e-signatures, such as /s/ signatures and DocuSign.

Second, the US declaration and assignment don’t need to be submitted in many foreign countries—such as Australia, Canada, and Germany—so it shouldn’t matter if those are e-signed.

E-signatures aren’t accepted in China, Japan, and Mexico, however, and DocuSign contracts may not meet the strict requirements in Brazil for e-signatures.

Inventor-signed formal papers don’t need to be filed when nationalizing into those countries from a Patent Cooperation Treaty application, so it usually shouldn’t matter if the US declaration and assignment are e-signed.

However, if an error in the inventor or applicant information needs to be corrected during the national stage, it might need a copy of the US assignment and, if e-signed, it may be rejected.

The rules aren’t clear for some countries. India requires inventor-signed documents, for example, and its Information Technology Act allows for e-signatures. Nevertheless, the Indian Patent Office has been known to reject e-signatures.

But there’s a workaround. In nationalizing into India from a PCT application, an e-signed declaration under PCT Rule 4 would be accepted, so it’s good practice to include one as part of the DocuSign package if and inventor may file in India.

A wet signature is the gold standard and safest option, especially if foreign filing is contemplated. But if using DocuSign, it’s important to configure its setting to only accept a USPTO-approved signature and add language in the assignment that the assignor agrees to the use of e-signatures.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

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Author Information

Joseph F. Hetz is a partner at Crowell & Moring and co-chair of the firm’s patent prosecution practice group.

Hefeng (Hervey) Su is an associate at Crowell & Moring and splits time between the patent and ITC litigation and patent prosecution groups.

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USPTO advances rules governing PTAB review practices in various proceedings, improving fairness, transparency, and efficiency

CONTACT: (Media Only) Paul Fucito or Mandy Kraft (571) 272-8400 or [email protected] or [email protected]

In light of robust, extensive feedback from a wide array of stakeholders and the Patent Trial and Appeal Board’s (PTAB) experience in implementing the America Invents Act (AIA) for over a decade, today the U.S. Patent and Trademark Office (USPTO) announced a Notice of Proposed Rulemaking (NPRM) seeking public input on proposals to codify many existing PTAB review policies and practices. These proposals would improve fairness, transparency, and efficiency in PTAB processes, further evolving and strengthening the proceedings of USPTO’s patents judicial Board. 

The proposals in the NPRM reflect public feedback starting with a 2020 Request for Comments that received more than 820 comments and a 2023 Advanced Notice of Proposed Rulemaking (ANPRM) that resulted in 14,500 comments, as well as comments received in other fora, expressing a preference that key policy changes be formalized through rulemaking. The proposed rules address a subset of topics from the ANPRM; other topics raised in the ANPRM are still under consideration. 

“The patent system works most efficiently and effectively when the USPTO issues and maintains robust and reliable patents upon which patent owners and the public can rely to invest in innovations and bring them to market, to commercialize ideas, to engage in technology transfer and licensing, and to enforce patent rights,” said Under Secretary of Commerce and Director of the USPTO Kathi Vidal. “This NPRM is an important step towards ensuring an efficient and streamlined patent system that will strengthen patent quality while limiting counterproductive challenges and costs. We are grateful to all stakeholders who have provided their input as part of this important collaborative process and welcome feedback on the proposals we issue today.”

The proposed rules would enhance and build on existing precedent and guidance regarding exercise of the Director’s discretion to determine whether to institute an AIA proceeding with regard to serial petitions, parallel petitions, and petitions implicating the same or substantially the same art or arguments previously presented to the USPTO. The proposed rules would also establish a separate briefing process for discretionary institution arguments and align the procedures for termination of proceedings pre- and post-institution. 

The deadline to comment is June 18, 2024. All comments must be submitted in writing through the Federal eRulemaking Portal at  www.regulations.gov .

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