types of assignment in patent

Patent Assignment: Everything You Need to Know

A patent assignment is an irrevocable agreement for a patent owner to sell, give away, or transfer interest to an assignee, who can enforce the patent. 6 min read updated on January 01, 2024

Updated November 5, 2020:

Patent Assignment: What Is It?

A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue others for making or selling the invention or design.

There are four types of patent assignments:

Assignment of Rights - Patent Issued: This is for patents that have already been issued.

Assignment of Rights - Patent Application : This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.

Assignment of Intellectual Property Rights - No Patent Issued or Application Filed: This is for unregistered inventions with no patent.

Exclusive Rights

Advantages of a Patent Assignment

Assignees don't create a unique invention or design. They also don't go through the lengthy patent process . They simply assume exclusive rights to intellectual property.

Profit Potential

Many patents cover intellectual property that can earn the owner money. A patent owner can charge a lump sum sale price for a patent assignment. After the transfer, the assignee can start to earn profits from the patent. Both original owners and assignees can benefit from this business arrangement.

Disadvantages of a Patent Assignment

Too Many or Not Enough Inventors

Patents can have multiple owners who invented the product or design. Sometimes patents list too many or not enough inventors. When this happens, owners can argue about an incorrect filing. This kind of dispute can make a patent assignment impossible.

Limited Recourse

Older patents may already have many infringements. Not all patent assignments include the right to sue for past infringements. This is known as the right to causes of action. This can cost the assignee a lot of potential profit.

Examples of What Happens When You File a Patent Assignment vs. When You File a Patent License

When You File a Patent Assignment

The patent owner changes permanently. You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public.

Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits.

When You File a Patent License

The patent owner doesn't change permanently. Most licenses have a time limit. At the end of the period, the original owner takes control again. Licensing information isn't always available through an online USPTO search. Contact the recordation office directly to get information about patent licenses.

The licensee can assign rights to another person or company. This adds another layer of ownership over the intellectual property.

Many owners charge royalties for a patent license. The licensee pays royalty fees throughout the license period. If the royalty fees are high and the license period is long, a patent assignment may be a better choice for earning the new owner more money.

Common Mistakes

Not Filing an Assignment Document

A verbal agreement is not official. File a patent assignment to change patent ownership.

Taking Action Before Filing

The assignee shouldn't make or sell the invention before the patent assignment is official. If an error or another problem happens, this could be patent infringement .

Making a Filing Error

Patent assignments are official documents. The assignee's name must be legal and correct. Before filing, check the spelling of the assignee name. If the assignee is a business, confirm the legal name. Many patents have more than one owner. List all names on the assignment.

Misidentifying the Patent

Include as much information about the patent as you can. List the patent number and title. Describe the intellectual property completely.

Not Searching for Security Interests

Patents can be collateral. A bank or another party can file a security interest in a patent, and this can limit how much an assignee can earn from a patent. Check for security interests before filing a patent assignment.

Not Filing a Proprietary Information Agreement

Many businesses file patents, as this is part of a business plan , and it's especially common for startup businesses. Inventorship problems can happen if employees file patents instead of the business.

Often, employees have an obligation to assign inventions to a company. This is true if they developed the invention on the job.

To avoid confusion, require employees to sign a proprietary information agreement. This automatically assigns inventions and designs to the business. Other options include signing an automatic assignment or an explicit assignment. These all clarify patent ownership.

Not Being Notarized

Make sure all official documents concerning your patent are notarized. There is a huge legal advantage to being notarized. It makes it so that your documents will be accepted as correct until it is proven otherwise. If you can't get your documents notarized, gather two witnesses. Have them attest to the signatures.

You have to file a patent assignment within three months of signing the form. If you don't, the assignee could lose ownership rights.

Frequently Asked Questions

Where Do I Record a Patent Assignment?

If you have a U.S. patent, record your patent assignment with the USPTO. If you have a foreign patent, file with the correct national patent offices.

I Can't Get a Signature from the Inventor. What Happens Now?

First, it needs to be officially established that:

• Whoever is pursuing the application has the right to do so.
• The inventor cannot be reached.

In order to establish this, the patent office will need a copy of the following:

• the employee agreement
• the assignment
• other evidence of the rights

After that, the patent office will continue as if the signature has been obtained, even though it hasn't.

If the inventor has died, the patent office will try to contact the person in charge of managing the deceased's estate or the heir. If the invented refuses to sign or is missing, the patent office will ask for a declaration from the person who is trying to contact them. They will also look at the following items that have been sent to the inventor:

• Do I Have to File a Patent Assignment if the Owner's Name Changed?

No, you don't need a patent assignment if only the person's or company's name changed. If the company merged with another, you may need a patent assignment.

What if I Make a Mistake on My Patent Assignment?

You can't correct a patent assignment. You have to assign it back to the original owner. Then you have to reassign with the correct information.

How Much Does a Patent Assignment Cost?

The patent assignment fee is $25. Filing electronically doesn't cost extra. You do have to pay an additional $40 fee if you file on paper.

Should I Hire a Lawyer?

Yes, you should get a lawyer to help with a patent assignment. A lawyer will make sure there are no filing errors. A lawyer knows how to describe the patent correctly. Errors and bad descriptions can limit the power of a patent assignment. This could cost the assignee a lot of money in future profits and legal fees.

Steps to File a Patent Assignment

1. Fill Out a Recordation Form Cover Shee t

The Recordation Form Cover Sheet is an official USPTO document. This includes the names of the assignor(s) and the assignee(s). It also includes the patent title and number.

2. Complete a Patent Assignment Agreement

The patent assignment agreement should list the assignor(s) and the assignee(s). It should state that the assignor has the right to assign the patent. It should also describe the intellectual property clearly and completely. It should also explain any financial or other transactions that have to take place. This includes a description of the lump sum payment.

3. Sign the Patent Assignment Agreement

All patent owners and assignees must sign the patent assignment agreement.

4. Submit the Patent Assignment

Finally, submit the patent assignment with the USPTO. You have to pay the assignment fee at this time.

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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.

Find out more about Patents

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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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.

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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.

The basics of patent law - assignment and licensing

The articles cover, respectively: Types of intellectual property protection for inventions and granting procedure ; Initiating proceedings ; Infringement and related actions ; Revocation, non-infringement and clearing the way ; Trial, appeal and settlement ; Remedies and costs ; Assignment and Licensing and the Unified Patent Court and Unitary Patent system .

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017, for which Gordon Harris and Ailsa Carter wrote the UK chapter.

Introduction

Any patent, patent application or any right in a patent or patent application may be assigned (Patents Act 1977 (also referred to as "PA") s.30(2)) and licences and sub-licences may be granted under any patent or any patent application (PA s.30(4)).

The key difference between an assignment and a licence is that an assignment is a transfer of ownership and title, whereas a licence is a contractual right to do something that would otherwise be an infringement of the relevant patent rights. Following an assignment, the assignor generally has no further rights in relation to the relevant patent rights. On the granting of a licence, the licensor retains ownership of the licensed rights and generally has some continuing obligations and rights in relation to them (as set out in the relevant licence).

Formalities

Any assignment of a UK patent or application, or a UK designation of a European patent, must be in writing and signed by, or on behalf of, the assignor. For an assignment by a body corporate governed by the law of England and Wales, the signature or seal of the body corporate is required (PA s.30-31). With regards the assignment of a European patent application however, such assignment must be in writing and signed not just by the assignor but by both parties to the contract (Article 72 EPC).

There is no particular statutory provision regarding the form of a licence or sub-licence (exclusive or otherwise). However, in view of the advisability of registration (discussed below) and legal certainty, it is sensible that any licence be in writing. In addition, normal contractual formalities apply, such as intention to create legal relations, consideration and certainty of terms, etc.

Registration

Registration (with the UKIPO) of an assignment or licence is not mandatory. However, if the registered proprietor or licensor enters into a later, inconsistent transaction, the person claiming under the later transaction shall be entitled to the property if the earlier transaction was not registered (PA s.33). Registration is therefore advisable. Failure to register an assignment or an exclusive licence within six months will also impact the ability of a party to litigation to claim costs and expenses (PA s.68) and might, potentially, enable an infringer to defend a claim for monetary relief on the basis of innocent infringement (PA s.62).

The procedure for registration is governed by the Patents Rules 2007. The application should be made on the appropriate form, should include evidence establishing the transaction, instrument or event, and should be signed by or on behalf of the assignor or licensor. Documents containing an agreement should be complete and of such a nature that they could be enforced. A translation must be supplied for any documentary evidence not in English.

In practice (particularly in the context of a larger corporate transaction in which many different asset classes are being transferred, not just intellectual property), parties sometimes agree short form documents evidencing the transfer of the relevant patent rights and will submit these for registration. This can enable parties to save submitting full documents for the whole transaction, which may include sensitive commercial information that is not relevant to the transfer of the patent rights themselves.

Types of licence

A licensee may take a non-exclusive or exclusive licence from the licensor. The distinction between such licences is both legally and commercially significant.

On a basic level an exclusive licence means that no other person or company can exploit the rights under the patent and this means the licensor is also excluded from exploiting such rights. Exclusivity may be total or divided up by reference to, for example, territory, field of technology, channel, or product type. The extent of exclusivity generally goes to the value of the rights being licensed and will feed into the agreed financials. It is worth noting that the term "exclusive licence" does not have a statutory definition under English law, so it is very important to define the contractual scope of exclusivity in the relevant licence agreement.

In the event a licensor wants to retain the ability to exploit the rights in some way (for example an academic licensor may want the ability to continue research activities) then appropriate carve outs from the exclusivity should be expressly stated in the licence agreement.

A non-exclusive licensee has the right to exploit rights within the patent as determined by the licence agreement. However, the licensor may also exploit such rights as well as granting multiple other licences to third parties (which may include competitors of the original licensee).

Much less common is a sole licence, by which the patent proprietor agrees not to grant any other licences but gives the licensee the right to use the technology and may also still operate the licenced technology itself.

Compulsory licences

A compulsory licence provides for an individual or company to seek a licence to use another's patent rights without seeking the proprietor's consent. Compulsory licences under patents may be granted in circumstances where there has been an abuse of monopoly rights, but are very rarely granted in the UK.

An application for a compulsory licence can be made by any person (even a current licensee of the patent) to the Comptroller of Patents at any time after three years from the date of grant of the patent. In respect of a patent whose proprietor is a national of, or is domiciled in, or which has a real and effective industrial or commercial establishment in, a country which is a member of the World Trade Organisation, the applicant must establish one of the three specified grounds for relief. If satisfied, the Comptroller has discretion as to whether a licence is granted and if so upon what terms. The grounds are:

• demand for a patented product in the UK is not being met on reasonable terms;
• the exploitation in the UK of another patented invention that represents an important technical advance of considerable economic significance in relation to the invention claimed in the patentee's patent is prevented or hindered provided that the Comptroller is satisfied that the patent proprietor for the other invention is able and willing to grant the patent proprietor and his licensees a licence under the patent for the other invention on reasonable terms;
• the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced;
• by conditions imposed by the patentee, unpatented activities are unfairly prejudiced.

The terms of the licence shall be decided by the Comptroller but are subject to certain restrictions on what type of licence can be granted, namely the licence: cannot be exclusive; can only be assigned to someone who has been assigned the part of the applicant's business that enjoys use of the patented invention; will be for supply to the UK market; will include conditions allowing the patentee to adequate remuneration; and must be limited in scope and duration to the purpose for which the licence is granted.

Infringement

The type of licence is also significant when it comes to tackling infringement. Under statute, an exclusive licensee has the same right as the proprietor of a patent to bring proceedings with respect to infringement committed after the date of the licence and such proceedings may be brought in the licensee's name (PA 67(1)). An exclusive licensee of a patent application may also bring proceedings in its own name (PA ss. 67(1) & 69). In practice, however, these statutory provisions are often excluded or varied by parties negotiating complex licensing transactions. A licensee may also have a right under a licence to bring proceedings for an infringement occurring before the licence came into effect.

A non-exclusive licensee does not have any right under statute to bring proceedings in its own name. However, this could be negotiated into a licence agreement, though it may be difficult for a licensor to agree this point if it has multiple non-exclusive licensees.

Effect of non-registration on infringement proceedings

There is no requirement that a licence must be registered before proceedings can be commenced by an exclusive licensee. However, non-registration can affect a licensee's ability to recover its costs in relation to such proceedings.

Implied terms

Established rules of construction apply to assignment and licence agreements. Parties should ensure that important terms are included as express terms. There is no implied warranty that any assigned or licensed patent will be valid, or that an assignee or licensee will work the invention (for example, that they will exploit the rights and manufacture products). In certain very limited circumstances a court will order 'rectification' of an assignment or licence agreement, namely a court will order a change in the assignment or licence agreement to reflect what the agreement ought to have said in the first place. Regardless of this, all key terms should be included expressly in all assignment and licence agreements.

Termination of licences

Except where there is express contractual provision or where a licence has been wrongly terminated and damages sought, under English law there is no compensation payable to licensees on termination of a licencing agreement. The licence agreement should be clear as to what circumstances may give rise to termination, for example the non-payment of royalties, material breach or insolvency. The agreement should also make clear what happens in the event of termination in relation to, for example, existing stock of licensed products or work in progress.

Next in our 'The basics of patent law' series, we will be discussing the Unified Patent Court and Unitary Patent system.

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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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Inventor Assignment of Patent Application | Practical Law

Inventor Assignment of Patent Application

Practical law standard document w-005-1386  (approx. 11 pages).

IP Assignment and Licensing

IP rights have essentially transformed intangibles (knowledge, creativity) into valuable assets that you can put to strategic use in your business. You can do this by directly integrating the IP in the production or marketing of your products and services, thereby strengthening their competitiveness. With IP assignement and IP licensing, IP owners can also use your IP rights to create additional revenue streams by selling them out, giving others a permission to use them, and establishing joint ventures or other collaboration agreements with others who have complementary assets.

  Expert tip: Assignment, license and franchising agreements are flexible documents that can be adapted to the needs of the parties. Nevertheless, most countries establish specific requirements for these agreements, e.g. written form, registration with a national IP office or other authority, etc. For more information, consult your IP office .

IP rights assignment

You can sell your IP asset to another person or legal entity.

When all the exclusive rights to a patented invention, registered trademark, design or copyrighted work are transferred by the owner to another person or legal entity, it is said that an assignment of such rights has taken place.

Assignment is the sale of an IP asset. It means that you transfer ownership of an IP asset to another person or legal entity.

IP for Business Guides

Learn more about the commercialization of patents, trademarks, industrial designs, copyright.

Read IP for Business Guides

IP licensing

You can authorize someone else to use your IP, while maintaining your ownership, by granting a license in exchange for something of value, such as a monetary lump sum, recurrent payments (royalties), or a combination of these.

Licensing provides you with the valuable opportunity to expand into new markets, add revenue streams through royalties, develop partnerships etc.

If you own a patent, know-how, or other IP assets, but cannot or do not want to be involved in all the commercialization activities (e.g. technology development, manufacturing, market expansion, etc.) you can benefit from the licensing of your IP assets by relying on the capacity, know-how, and management expertise of your partner.

  Expert tip: Licensing can generally be sole, exclusive or non-exclusive, depending on whether the IP owner retains some rights, or on whether the IP rights can be licensed to one or multiple parties.

Technology licensing agreements

Trademark licensing agreements, copyright licensing agreements, franchising agreements, merchande licensing, joint venture agreements, find out more.

• Learn more about Technology Transfer .

• Patent Laws, Regulations, Policies & Procedures
• Manual of Patent Examining Procedure
• Chapter 0300
• Section 302

302 Recording of Assignment Documents [R-07.2015]

37 cfr 3.11  documents which will be recorded..

• (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
• (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
• (c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.

37 CFR 3.58  Governmental registers.

• (a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12 .
• (b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.

37 CFR Part 3 sets forth Office rules on recording assignments and other documents relating to interests in patent applications and patents and the rights of an assignee.

37 CFR 3.11(c) provides that the Office will record a joint research agreement or an excerpt of a joint research agreement.

302.01 Assignment Document Must Be Copy for Recording [R-08.2012]

37 cfr 3.24  requirements for documents and cover sheets relating to patents and patent applications..

• (a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
• (b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.

The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317 . The document submitted for recordation will not be returned to the submitter. If the copy submitted for recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.

302.02 Translation of Assignment Document [R-08.2012]

37 cfr 3.26  english language requirement..

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.

302.03 Identifying Patent or Application [R-07.2015]

37 cfr 3.21  identification of patents and patent applications..

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.

The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:

“I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.”

302.04 Foreign Assignee May Designate Domestic Representative [R-10.2019]

35 u.s.c. 293   nonresident patentee; service and notice..

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

37 CFR 3.61  Domestic representative.

If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document. The designation of a domestic representative should be clearly labeled “Designation of Domestic Representative” and it will be entered into the record of the appropriate application or patent file. The designation must be signed in accordance with 37 CFR 1.33(b) .

302.05 Address of Assignee [R-08.2012]

The address of the assignee may be recited in the assignment document and must be given in the required cover sheet. See MPEP § 302.07 .

302.06 Fee for Recording [R-10.2019]

37 cfr 3.41  recording fees..

• (a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
• (1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
• (2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27 .

The recording fee set in 37 CFR 1.21(h) is charged for each patent application and patent identified in the required cover sheet except as provided in 37 CFR 3.41(b) . If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1) , currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2) . Customers should check the current fee schedule on the Office website before submitting documents for recordation. See MPEP §§ 302.08 - 302.10 for additional information regarding the acceptable ways to submit documents for recordation.

302.07 Assignment Document Must Be Accompanied by a Cover Sheet  [R-10.2019]

37 cfr 3.28  requests for recording..

Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31 ) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.

37 CFR 3.31  Cover sheet content.

• (1) The name of the party conveying the interest;
• (2) The name and address of the party receiving the interest;
• (3) A description of the interest conveyed or transaction to be recorded;
• (i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
• (ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
• (5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
• (6) The date the document was executed;
• (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
• (ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
• (8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.
• (b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
• (1) Indicate that the document relates to a Government interest; and
• (2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see §  3.41(b) ).
• (d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
• (e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
• (f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
• (1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
• (2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
• (3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
• (4) Indicate the date the joint research agreement was executed.
• (h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.

Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28 . The cover sheet for patents or patent applications must contain:

• (A) The name of the party conveying the interest;
• (B) The name and address of the party receiving the interest;
• (C) A description of the interest conveyed or transaction to be recorded;
• (D) Each patent application number or patent number against which the document is to be recorded, or an indication that the document is filed together with a patent application;
• (E) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
• (F) The date the document was executed; and
• (G) The signature of the party submitting the document.

For applications filed on or after September 16, 2012, if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under 37 CFR 1.63 . See 37 CFR 3.31(h) .

If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a "joint research agreement" (in the space provided for the description of the interest conveyed if using Form PTO-1595). The date the joint research agreement was executed must also be identified. The cover sheet must also identify the name(s) of the owner(s) of the application or patent (in the space provided for the name and address of the party receiving the interest if using Form PTO-1595). The name(s) of every other party(ies) to the joint research agreement must also be identified (in the space provided for the name of the party conveying the interest if using Form PTO-1595).

Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.

Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:

• (A) assignment;
• (B) security agreement;
• (C) merger;
• (D) change of name;
• (E) license;
• (F) foreclosure;
• (H) contract; and
• (I) joint research agreement.

Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.

A patent cover sheet may not refer to trademark applications or registrations.

Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

302.08 Mailing Address for Submitting Assignment Documents [R-08.2012]

37 cfr 3.27  mailing address for submitting documents to be recorded..

Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.

37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications. Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

302.09 Facsimile Submission of Assignment Documents [R-11.2013]

Assignments and other documents affecting title may be submitted to the Office via facsimile (fax). See the USPTO website or MPEP § 1730 for the facsimile number. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine. The customer’s fax machine should be connected to a dedicated line because recordation notices will be returned automatically to the sending fax number through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”

Any assignment-related document for patent matters submitted by facsimile must include:

• (A) an identified application or patent number;
• (B) one cover sheet to record a single transaction; and
• (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509 ), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.

The following documents cannot be submitted via facsimile:

• (A) Assignments submitted concurrently with newly filed patent applications;
• (B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same property); and
• (C) Requests for “at cost” recordation services.

The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office. See MPEP § 502.01 . The benefits of a certificate of transmission under 37 CFR 1.8 are available.

If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office “Notice of Non-Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.

302.10 Electronic Submission of Assignment Documents [R-10.2019]

• (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’ Malley III/) in the signature block on the electronic submission; or

37 CFR 1.4  Nature of correspondence and signature requirements.

• (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
• (ii) A patent practitioner (§ 1.32(a)(1) ), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) , must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
• (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
• (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
• (3) Electronically submitted correspondence . Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
• (i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
• (ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
• (5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms ( e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.

Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://epas.uspto.gov for additional information regarding EPAS.

Any assignment related document submitted by EPAS must include:

• (A) an identified application or patent number; and
• (B) one cover sheet to record a single transaction which cover sheet is to be completed on-line.

The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation. If a recordation fee is required, see MPEP § 509 for detailed information pertaining to the payment of fees.

For an assignment document filed electronically, the signature of the person who signs the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2) .

The date of receipt accorded to an assignment document sent to the Office by EPAS is the date the complete transmission is received in the Office.

If a document submitted by EPAS is determined not to be recordable, the entire document, with its associated cover sheet, and the Office "Notice of Non-Recordation" will be transmitted via fax back to the sender if possible. Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

• 301.01-Accessibility of Assignment Records
• 302.01-Assignment Document Must Be Copy for Recording
• 302.02-Translation of Assignment Document
• 302.03-Identifying Patent or Application
• 302.04-Foreign Assignee May Designate Domestic Representative
• 302.05-Address of Assignee
• 302.06-Fee for Recording
• 302.07-Assignment Document Must Be Accompanied by a Cover Sheet 
• 302.08-Mailing Address for Submitting Assignment Documents
• 302.09-Facsimile Submission of Assignment Documents
• 302.10-Electronic Submission of Assignment Documents
• 303-Assignment Documents Not Endorsed on Pending Applications
• 304‑305-[Reserved]
• 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
• 307-Issue to Non-Applicant Assignee
• 308-Issue to Applicant
• 309-Restrictions Upon Employees of U.S. Patent and Trademark Office
• 310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
• 311-Filing of Notice of Arbitration Awards
• 312-[Reserved]
• 313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
• 314-Certificates of Change of Name or of Merger
• 315-Indexing Against a Recorded Certificate
• 316-[Reserved]
• 317.01-Recording Date
• 317.02-Correction of Unrecorded Returned Documents and Cover Sheets
• 317.03-Effect of Recording
• 318-Documents Not to be Placed in Files
• 319-[Reserved]
• 320-Title Reports
• 321‑322-[Reserved]
• 323.01(a)-Typographical Errors in Cover Sheet
• 323.01(b)-Typographical Errors in Recorded Assignment Document
• 323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
• 323.01(d)-Expungement of Assignment Records
• 324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
• 325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

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Patent Assignment in India

January 17, 2023 | Corporate & Commercial Law Patents are intellectual properties that provide exclusive rights to the owner for a specific invention, but which can be transferred to someone else through the process of patent assignment that must be duly executed as per legal norms.

What is a Patent?

Need for patents, what is patent assignment, types of patent assignments.

• Legal Assignment: A legal assignment is where the assignee may enter their name as the patent owner in the government records. A patent created through a deed can only be assigned through a deed. Once the assignor has completed the process, the assignee gains all the rights of the patent.
• Equitable Assignment: Any form or agreement including a letter in which the proprietor agrees to share a certain share of the patent with another individual is referred to as the equitable assignment of the patent. While the assignee cannot get their name entered in the register as one of the owners, they can notify the register of their interest in the patent.
• Mortgages: Mortgages are assignments where the owner provides partial or complete right to an assignee in exchange for a certain amount of money. Once the amount is repaid, the owner gains back all rights to the mortgaged property. The lender cannot register themselves as the proprietor in the records, but get their name entered in the register as mortgagee.

Requirements for Patent Assignment

• As mentioned before, patent assignment can only be considered a valid assignment if it has been drafted in writing and duly executed through the legal process.
• The written draft must define all the rights and obligations of both the parties with respect to the patent.
• The assignee shall apply in writing to the Controller of Patents to enter their name into the register of patents. Once the Controller of Patents is satisfied that the assignee has a genuine interest in the patent, they shall enter the details of assignment into their register.
• Form-16 must be duly filled and filed before the Controller General of Patents, Designs and Trademarks. It records the necessary details that must be mentioned for assignment, such as name of the applicant, details of all parties involved, description of the draft through which assignment is being sought.
• Two copies of the deed must be attached to the application as well.
• Fees for the process varies for different individuals and entities and is different when applied physically and through the Internet. A detailed breakdown of the official fees for the process is mentioned in the First Schedule of the Patent Act.

Contents of Patent Assignment Agreement

• Details of the parties to the agreement, i.e., the assignor and the assignee.
• Description of the patent – registration number, date of registration, type of patent, etc.
• Consideration in lieu of assignment.
• Rights and obligations of all parties involved.
• An undertaking of the assignor that they have not assigned or otherwise dealt with patent to create a third-party interest in the patent.
• Termination clause.
• Dispute resolution clauses.
• Indemnity clause in favor of the assignee.

Difference between Assignment and Licenses

Amendments and termination.

• Amending Patent Assignment Agreement
• Termination of Patent Assignment Agreement

We can assist you with Patent Assignment Agreement concerns. You can get in touch with us by submitting a query below.

• Definition of Resolution plan will now include provisions for corporate restructuring: The amendment act has inserted an explanation in the definition of resolution plan to clarify that a resolution plan that proposes the insolvency resolution of a corporate debtor may include the provisions for corporate restructuring, including by way of merger, amalgamation and demerger.
• NCLT will have to record reasons for delay in discarding an application for initiation of CIRP: As per the Code, the NCLT must dispose of an application for initiation of CIRP within a period of 14 days from the receipt of application. However, there have been cases when the NCLT has taken more than 14 days to make a decision on the application. Therefore, to ensure speedy disposal and value maximization of the corporate debtor's assets, a proviso has been added which requires that NCLT to record its reasons in writing in case an application is not disposed within 14 days.
• Corporate Insolvency Resolution Process to be concluded within 330 days: Earlier, the IBC demanded completion of CIRP within 180 days including a one-time extension of 90 days. However, many a times the Courts have allowed removal of certain periods, for instance, time consumed in litigation, from the compulsory completion period resulting in a lot of unresolved CIRPs well beyond the time duration allowed in the IBC. The Amendment act makes it compulsory for a CIRP to be completed within 330 days including any extension of time granted and time taken under legal proceedings. It further states that any pending CIRPs that have been going on for over 330 days should be completed within 90 days from the date of commencement of the Amendment Act.
• Voting by authorised representative representing a class of financial creditors: To avoid any confusion and facilitate decision making in the Committee of Creditors, especially in cases where financial creditors are a large group, the Amendment Act provides that an authorized representative representing a class of financial creditors shall vote on behalf of all the financial creditors he/she represents in accordance with the decision approved by more than 50% of such financial creditors. This principle however would not be applicable in case of voting for withdrawal of CIRP.
• Amount payable to functional creditors and disagreeing financial creditors: The Amendment Act provides that payment of debts of operational creditors shall be the higher of
• the amount to be paid to these creditors at the time of liquidation of the corporate debtor u/s 53 or
• the amount that would have been paid to such creditors, if the amount to be distributed under the resolution plan had been distributed in accordance of priority as mentioned u/s 53 (1)
• NCLT has not approved or rejected a resolution plan
• an appeal is pending at the Supreme Court or at the NCLAT (National Company Law Appellate Tribunal)
• a lawsuit has been launched in a court challenging the decision of NCLT in relation to a resolution plan
• Committee of Creditors (COC) to contemplate way of distribution submitted in the resolution plan: Besides the current need of approval of resolution plan after keeping in mind the practicality and acceptability of the resolution plan, the amendment act requires that the CoC consider the manner of distribution proposed in the resolution plan by taking into account the order of priority amongst creditors, as prescribed u/s 53 (1) relating to liquidation waterfall, including the priority and value of security interest of a secured creditor.
• NCLT approved resolution plan will be binding on the Central Government, State Government or any local authority to whom corporate debtor owes a statutory debt: As per the Code, the approved resolution plan was only binding on the corporate debtor and its employees, creditors, members, guarantors and other stakeholders included in the resolution plan resulting in instances where the Government used to follow up for the balance dues after the said approval of resolution plan. The Amendment Act has now modified Section 31(1) to illuminate that any NCLT approved resolution plan will be binding on the Central Government, State Government and any local authority to whom a corporate debtor owes a debt in respect of payment of dues arising under any law.
• Liquidation after setting up the Committee of Creditors (COC): The Amendment Act simplifies by way of an explanation, u/s 33(2) which covers liquidation, that the COC may decide to liquidate the corporate debtor any time after the setting-up of the COC until the confirmation of the resolution plan, including at any time before the development of the information memorandum. This change is pertinent as there have been cases where NCLTs have demanded that a liquidation order may be passed only after failure of the CIRP even though an early liquidation would have resulted in value maximization.

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India: Ownership And Forms Of Transfer Of Patents Rights In India- A Primer

Introduction.

Once a patent for an invention is granted, it is important to consider (1) if the patentee/proprietor of the patent is going to manufacture, market, sell and/or distribute the invention, (2) whether the patentee/proprietor of the patent is going to sell all rights in his/her invention to someone else for a sum of money, or (3) if the patentee/proprietor of the patent will license someone else to produce and bring the patented product to market under specified terms by the Patentee that must be met for the licensee. This article discusses how one may effect, use or monetize the patented invention.

A patent is considered as a transferrable property that can be transferred from the original patentee to any other person by assignment or by operation of law. A patent can be licensed or assigned only by the owner of the patent. In case of co-owners or joint-owners, a co-owner can assign or license the patent only upon consent of the other owner(s).

Requirements for creation of any interest in a patent:

Section 68 of the Indian Patents Act 1970 provides for the mortgage of, license or creation of any interest in the patent.

" Assignments, etc., not to be valid unless in writing and duly executed. 1 —An assignment of a patent or of a share in a patent, a mortgage, license or the creation of any other interest in a patent shall not be valid unless the same were in writing and the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and duly executed "

Requirements 2 :

• The assignment, mortgage or license should be reduced to writing in a document embodying all the terms and conditions governing the rights and obligations between the parties;
• An application for registration of such document should be filed in the prescribed manner in Form-16 within the time prescribed under section 68. The document when registered will have effect from the date of execution.

Forms/Nature of Transfer of Patent Rights:

Grant of a Patent confers to a patentee the right to prevent others from making, using, exercising or selling the invention without his permission. The following are the ways in which a patentee can deal with the patent:

• Transmission of patent by operation of law

1. Assignment

The term 'assignment' is not defined in the Indian Patents Act. Assignment is an act by which the patentee assigns whole or part of his patent rights to the assignee who acquires the right to prevent others from making, using, exercising or vending the invention. There are three kinds of assignments

• Legal Assignment
• Equitable Assignment

Legal Assignment : An assignment (or an agreement to assign) of an existing patent is a legal assignment, where the assignee may enter his name as the patent owner. A patent which is created by deed can only be assigned by a deed. A legal assignee entitled as the proprietor of the patent acquires all rights thereof.

Equitable Assignments : Any agreement including a letter in which the patentee agrees to give a certain defined share of the patent to another person is an equitable assignment of the patent. However an assignee in such a case cannot have his name entered in the register as the proprietor of patent. But the assignee may have notice of his interest in the patent entered in the register.

Mortgages: A mortgage is an agreement in which the patent rights are wholly or partly transferred to assignee in return for a sum of money. Once the assignor repays the sum to the assignee, the patent rights are restored to assignor/patentee. The person in whose favor a mortgage is made is not entitled to have his name entered in the register as the proprietor, but he can get his name entered in the register as mortgagee.

2. Licenses:

The Patents Act allows a patentee to grant a License by the way of agreement under section 70 of the Act. A patentee by the way of granting a license may permit a licensee to make, use, or exercise the invention. A license granted is not valid unless it is in writing. The license is contract signed by the licensor and the licensee in writing and the terms agreed upon by them including the payment of royalties at a rate mentioned for all articles made under the patent. Licenses are of the following types,

• Voluntary License
• Statutory License(such as compulsory License)
• Exclusive/Limited License
• Express/Implied License

Voluntary licenses:

It is the license given to any other person to make, use and sell the patented article as agreed upon the terms of license in writing. Since it is a voluntary license, the Controller and the Central government do not have any role to play. The terms and conditions of such agreement are mutually agreed upon by the licensor and licensee. In case of any disagreement, the licensor can cancel the licensing agreement.

Statutory licenses:

Statutory licenses are granted by central government by empowering a third party to make/use the patented article without the consent of the patent holder in view of public interest. Classic example of such statutory licenses is compulsory licenses. Compulsory licenses are generally defined as "authorizations permitting a third party to make, use, or sell a patented invention without the patent owner's consent 3 .

Compulsory Licenses(CLs)

Though CLs works against the interest of the patent holder, it is granted under certain provided conditions under the Patents Act. Under section 84 of the Indian Patents Act 1970, any person can make an application for grant of a compulsory license for a patent after three years, from the date of grant of that patent, on any of the following grounds:

(a) The reasonable requirements of the public with respect to the patented invention have not been satisfied; (b) The patented invention is not available to the public at a reasonably affordable price. (c) The patented invention has not worked in the territory of India.

Under Section 92 A of the Act, CLs can also be granted for exporting pharmaceutical product(s) to any country incapable of manufacturing pharmaceutical products for the benefit of the people in that country, further when working of the patent required another related patent under Section 88 of the Act or on notification by the Central Government, the controller can grant a license to an interested person. The Central or State Government can use the invention or its process for its own purpose either with or without royalty.

Exclusive Licenses and Limited Licenses:

Depending upon the degree and extent of rights conferred on the licensee, a license may be Exclusive or Limited License. An exclusive license excludes all other persons including the patentee from the right to use the invention. Any one or more rights of the patented invention can be conferred from the bundle of rights owned by the patentee. The rights may be divided and assigned, restrained entirely or in part. In a limited license, the limitation may arise as to persons, time, place, manufacture, use or sale.

Express and Implied Licenses:

An express license is one in which the permission to use the patent is given in express terms. Such a license is not valid unless it is in writing in a document embodying the terms and conditions. In case of implied license though the permission is not given in express terms, it is implied from the circumstances. For example: where a person buys a patented article, either within jurisdiction or abroad either directly from the patentee or his licensees, there is an implied license in any way and to resell it.

3. Transmission of Patent by Operation of law

When a patentee dies, his interest in the patent passes to his legal representative; in case of dissolution or winding up of a company or bankruptcy transmission of patent by operation of law occurs.

Conclusion:

An assignment is the transfer of all the proprietary rights by the patentee to the assignee while the license is the right granted to work the invention by withholding the proprietary rights with the patentee 4 . An assignee can in turn reassign his rights to third parties while the licensee cannot change the title or cannot reassign his rights to the third person. An assignee is assigned with all the rights that the patent owner can enjoy while the licensee cannot enjoy such rights. Also an assignee has the right to sue the infringer while the licensee is not empowered with the rights to sue any party for the infringement of the patent in his name. Having known the difference between assignment and license from the aforesaid, the patentee can decide the best possible way of commercializing his/her invention.

1. https://indiankanoon.org/doc/1027357/

2. Patent Law, Fourth edition , P.Narayanan, Eastern Law House, Pg: No:268

3. F.M. SCHERER & JAYASHREE WATAL, POST-TRIPS OPTIONS FOR ACCESS TO PATENTED MEDICINES IN DEVELOPING COUNTRIES 13 (Comm'n on Macroeconomics & Health, Working Paper No. WG4:1, 2001), available at http://www.cmhealth.org/docs/-wg4_paper1.pdf (last visited Dec. 16, 2013 ).

4. IPR, Biosafety and Bioethics, Deepa Goel, Shomini Parashar, Pg Nos 88-89

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.

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• Intellectual Property News

Federal Circuit denies Cellect’s en banc petition, maintaining impact of obviousness-type double-patenting on patent term adjustment

The Federal Circuit has closed the door on possible reconsideration of its precedential decision in In re: Cellect, LLC 2022-1293, 2022-1294, 2022-1295, 2022-1296 (Fed. Cir. Aug. 28, 2023).

In August 2023, the circuit had ruled that a terminal disclaimer can function to cut off any extension of patent term granted through an award of patent term adjustment (PTA). Its denial in January 2024 of Cellect’s en banc petition seeking a rehearing thus ends the matter, unless the Supreme Court decides to take up the case.

The In re: Cellect case has garnered much attention because the Federal Circuit has ruled differently on the impact of terminal disclaimers on patents with terms that are extended by PTA or patent term extension (PTE), both of which are a statutory right, and its broad impact on the validity and term of numerous patents. Twelve amicus curiae briefs were filed, several of which supported Cellect’s petition. The United States Patent and Trademark Office (USPTO) also filed a brief asserting that, unlike PTE, the statutory framework of PTA contains an express limitation on PTA for patents that have been terminally disclaimed, providing that “[n]o patent the term of which has been disclaimed beyond a specified date may be adjusted under this section beyond the expiration date specified in the disclaimer.” [1]   The Federal Circuit has previously ruled that PTE, which is awarded to restore patent term lost while the patent owner goes through the FDA approval process, can extend patent term beyond the disclaimed term resulting from a terminal disclaimer. [2]

Obviousness-type double-patenting (ODP) is a judicially created doctrine intended to prevent an improper time-wise extension of a patent right by preventing the issuance to an inventor of claims in a second patent which is not “patentably distinct” ( eg , small modifications or obvious variations of the same invention) from the claims of a first patent. [3]    ODP can arise during prosecution of a patent application where a rejection of the pending claims can be made in view of the claims of patents or patent applications that have at least one common inventor, that are commonly owned or if not commonly owned, subject to a joint research agreement under 35 U.S.C. § 103(c)(2)(3). [4]    It can also arise during patent infringement litigation where ODP is used as a ground for invalidating one or more claims of a patent that otherwise meet the same common inventorship or ownership requirements. [5]

Terminal disclaimers can be used to overcome ODP rejections if there is common ownership or if a joint research agreement is in place and has the effect of affirmatively disclaiming any term of a second patent beyond the term of the first patent. [6]   When both patents have the same expiration ( eg , both patents come from the same patent family and share a common priority date), the use of terminal disclaimers is an efficient method for dispensing with ODP rejections.

The use of terminal disclaimers can have a significant impact on patent term when the patent or patent application rejected under ODP does not have the same expiration date as the patent which forms the basis of the ODP rejection. This occurs when the patents come from different families and do not share a common priority date or when they belong to the same family but one of the patents has been awarded PTA. The use of terminal disclaimers when one patent has been awarded PTA is now problematic in view of the In re: Cellect, LLC decision and will result in a loss of the PTA awarded to the patent.

In another recent case, the Federal Circuit affirmed a Patent Trials and Appeal Board (PTAB) decision that would appear to provide clarity on a mechanism for overcoming ODP rejections. In re: Institut Pasteur , No. 2022-1896 (Fed. Cir. Dec. 13, 2023). In its decision, the Federal Circuit affirmed the PTAB’s strict application of ODP, reiterating that when unexpected results or long-felt need are used to rebut a prima facie case of obviousness, those results must be shown to be unexpected compared to the applicant’s own earlier patent claims and not the closest prior art, and the court supported the use of inherency to fill in a missing claim limitation as part of the obviousness analysis.

ODP will continue to be a challenge for patent owners, especially those in the pharmaceutical industry. There may, however, be a glimpse of hope, in that the impact of ODP on PTA might be limited to specific scenarios. A recent decision coming out the District Court for the District of Delaware suggest that the In re: Cellect LLC decision may not be as far-reaching as it seems and perhaps would only apply to later-filed obvious variations of earlier-filed commonly owned claims. [7]    That decision states that if a later-filed patent is used as an ODP reference, “the logic and purpose of ODP is flipped on its head: rather than preventing a patent owner from unjustifiably extending the term of a patent, ODP would operate to cut off a patent term that would have been valid but for a later-filed patent.”

It has been suggested that the Supreme Court may take up the issue of ODP and its impact on PTA, ultimately providing a definitive ruling, but, for the time being, a terminal disclaimer cuts off any extension of patent term granted through an award of PTA .

For now, patent owners should work with their patent counsel and consider strategies to avoid ODP rejections during patent prosecution, including the use of divisional applications which, if used correctly, are protected from ODP rejections. A careful review of patent portfolios would also help patent owners identify patents that are at risk of being challenged on the basis of ODP.

Learn more about the implications of this development by contacting any of the authors or your usual DLA Piper relationship attorney.

[1] In re Cellect , 81 F.4th at 1227; 35 U.S.C. §154(b)(2)(B) [2] Merck & Co. v. Hi-Tech Pharmacal Co., Inc. , 482 F.3d 1317 (Fed. Cir. 2007); see also Novartis AG v. Ezra Ventures LLC , 909 F.3d 1367, 1373 (Fed. Cir. 2018). [3] In re Lonardo , 119 F.3d 960, 965 (Fed. Cir. 1997). [4] See MPEP § 804 and In re Hubbell , 709 F.3d 1140 (Fed Cir. 2013). [5] See eg , Symbol Techs., Inc. v. Opticon, Inc. , 935 F.2d 1569, 1580 (Fed. Cir. 1991); G eneva Pharms. Inc. v. GlaxoSmithKline PLC , 349 F.3d 1373, 1377-78 (Fed. Cir. 2003). [6] 35 U.S.C. § 253 and 37 C.F.R. § 1.321; In re Longi , 759 F.2d at 894; Ortho Pharm. Corp. v. Smith , 959 F.2d 936, 980 (Fed. Cir. 1992). [7] ACADIA Pharms. Inc. v. Aurobindo Pharma Ltd. , No. 20-985-GBW, 2023 U.S. Dist. LEXIS 221663, at *21 (D. Del. Dec. 13, 2023).

Related insights

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Orange Book alert: Improper patent listings could be investigated as potential violations...

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• Using Global Human Resources

Examples of Multiple Managers for an Assignment

You must define at least one line manager for an assignment. Optionally, you can add other manager types. Line managers see the line-manager version of a person's spotlight and other restricted worker information.

Other manager types can also see restricted worker information if their roles have the required security access.

Let's see some examples of assignments that need multiple managers.

Matrix Management in an Engineering Company

An engineering company uses a matrix management structure. An engineer reports to the lead engineer for everyday functional guidance and to the operational manager for project assignment and tracking.

In this example, you define the lead engineer as the line manager and the operational manager as the project manager. This is because the lead engineer interacts with the team members every day and evaluates their progress. The project manager's role is restricted to assigning projects and tracking project completion.

Temporary Project Managers in a Service Company

A service company assigns workers to third parties to deliver contracted services. Each worker has a manager whose primary task is to help the worker find their next assignment. The manager is common for all of the worker's assignments. You define this manager as a line manager.

The worker also has a temporary project manager who manages a particular assignment but may not manage all of the worker's assignments. You define the project manager as an additional manager (for example, as a project manager) in relevant assignments.

Managers in a Global Company

A global company is organized functionally and workers report to a functional manager who may be in a different time zone. You define the functional manager as the line manager for the assignment.

For day-to-day administrative purposes, such as approving leave or absence, each worker also has an administrative manager. You define this administrative manager as an additional manager for the assignment.

Man or bear? Hypothetical question sparks conversation about women's safety

Women explain why they would feel safer encountering a bear in the forest than a man they didn't know. the hypothetical has sparked a broader discussion about why women fear men..

If you were alone in the woods, would you rather encounter a bear or a man? Answers to that hypothetical question have sparked a debate about why the vast majority say they would feel more comfortable choosing a bear.

The topic has been hotly discussed for weeks as men and women chimed in with their thoughts all over social media.

Screenshot HQ , a TikTok account, started the conversation, asking a group of women whether they would rather run into a man they didn't know or a bear in the forest. Out of the seven women interviewed for the piece, only one picked a man.

"Bear. Man is scary," one of the women responds.

A number of women echoed the responses given in the original video, writing in the comments that they, too, would pick a bear over a man. The hypothetical has people split, with some expressing their sadness over the state of the world and others cracking jokes. Some men were flabbergasted.

Here's what we know.

A bear is the safer choice, no doubt about it, many say

There were a lot of responses, more than 65,000, under the original post. Many wrote that they understood why the women would choose a bear.

"No one’s gonna ask me if I led the bear on or give me a pamphlet on bear attack prevention tips," @celestiallystunning wrote.

@Brennduhh wrote: "When I die leave my body in the woods, the wolves will be gentler than any man."

"I know a bear's intentions," another woman wrote. "I don't know a man's intentions. no matter how nice they are."

Other TikTok users took it one step further, posing the hypothetical question to loved ones. Meredith Steele, who goes by @babiesofsteele , asked her husband last week whether he would rather have their daughter encounter a bear or a man in the woods. Her husband said he "didn't like either option" but said he was leaning toward the bear.

"Maybe it's a friendly bear," he says.

Diana, another TikTok user , asked her sister-in-law what she would choose and was left speechless.

"I asked her the question, you know, just for giggles. She was like, 'You know, I would rather it be a bear because if the bear attacks me, and I make it out of the woods, everybody’s gonna believe me and have sympathy for me," she said. "But if a man attacks me and I make it out, I’m gonna spend my whole life trying to get people to believe me and have sympathy for me.'"

Bear vs. man debate stirs the pot, woman and some men at odds

The hypothetical has caused some tension, with some women arguing that men will never truly understand what it's like to be a woman or the inherent dangers at play.

Social media users answered this question for themselves, producing memes, spoken word poetry and skits in the days and weeks since.

So, what would you choose?