patent office assignments

29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

• Intellectual Property
• Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”). 

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent. 

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But  under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP,  implement strong hiring policies  that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an  employment agreement  that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

• Advance assignment of any IP created while employed by your company, or using your company’s resources
• An obligation to disclose any IP created while employed by your company, or using your company’s resources
• An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
• An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing  invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include  incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

• Independent contractors:  Some inventors may be self-employed, or they may be employed by one of your service providers.
• Joint collaborators:  Some inventors may be employed by, say, a subsidiary or service company instead of your company.
• Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should  also  get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

• The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
• Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you  can  execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

• Be in writing:  Oral agreements to assign patent rights are typically not enforceable in the United States
• Clearly identify all parties:  Include the names, addresses, and relationship of the assignor(s) and assignee
• Clearly identify the patent being assigned:  State the patent or patent application number, title, inventors, and filing date
• Be signed by the assignors
• Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases. 

So the patent owner (the Assignee) should should record the assignment through the  USPTO’s Assignment Recordation Branch . They can use the  Electronic Patent Assignment System (EPAS)  to file a  Recordation Cover Sheet  along with a copy of the actual patent assignment agreement.

They should submit this paperwork  within three months  of the assignment’s date. If it’s recorded electronically, the USPTO  won’t charge a recordation fee .

Need to check who owns a patent?  The USPTO website  publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a  continuation-in-part , or in a non-provisional application that adds new matter to a  provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an   employee agreement ,  company policy ,  invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation. 

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An  experienced patent professional  can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments —  contact us now  to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

Don't miss a new article. Henry Patent Law's Patent Law News + Insights blog is designed to help people like you build smart, scalable patent strategies that protect your intellectual property as your business grows. Subscribe to receive email updates every time we publish a new article — don't miss out on key tips to help your business be more successful.

A license is a grant (assignment) to the licensee of various licensed rights.  The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another.  Thus, the first recordation of a license may be recorded as a “license,” while the assignment of those same licensed rights to another entity may be recorded as an “assignment.”  The only way to really understand the situation is to review the actual documents, which are all readily available from the recordation branch of the patent office.

Note that the patent office sometimes refers to licenses as a species of assignment.  That is correct, because one is assigning license rights.

Not necessarily.  Assignments are only needed if you are contractually obligated, by employment or otherwise, to make the assignment.

An important corollary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name.  Investors are usually unhappy with that arrangement, but there can be significant advantages.  One major advantage is that the patent holder is a “necessary and indispensable” to any litigation over patent validity.  Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.

Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications.  See the previous FAQ.

Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications.  That is a dangerous strategy.  In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company, or divorce.

It is not technically necessary to re-file assignments for divisional or straight continuation applications.  A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.  Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee.

Absolutely.  Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues.

Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office.

Note that the office charges US$ 40 for each patent or patent application listed on the recorda­tion form.  Thus, if an assignment references a family of 5 patent applications, the recorda­tion fee is US$ 200.  Of course paralegal charges would also apply, and possibly attorney time.

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment.  The statute is similar to recording statutes used for recording real property.  Thus, although there is no requirement to record an assignment, it is foolish not to do so.

Note that absent some unusual circumstance, patent assignments do not have to be notarized for use within the United States.

Preparing assignments is usually a simple matter of filling in the blanks of a form.  Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in  Strategic Patenting .

Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document.  The recording branch does not generally read the documents to verify the content.

The Patent office will proceed as if the signature had been procured from the inventor, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached.  Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights.

In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished.  Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact.

One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form.

In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees).

It depends on the wording of the assignment and the recordation laws of the foreign countries.  Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications.  Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country.

Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments.

Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office.  Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages.

The main disadvantage to recording assignments is that many countries (including most or all of Europe) consider assignment of a patent or application to be a taxable transfer, and charge VAT (Value Added Tax) on the estimated value of the application or patent.  Since the value is often low in the early days, and can rise considerably during the life of the patent, the disadvantage of recordation can be mitigated by registering early.

Assignments records at the USPTO are available for  public inspection , but only for patents and published applications.  One can search by reel/frame number, patent or publication number, and assignor or assignee name.

The underlying documents are not available for download, but can be ordered from the assignment branch.  Paper mail requests can take months, but faxed requests are usually filled within a day or two.

No.  One should never rely upon the designation of “assignee” as set forth on the face of a patent.  First, the patent office obtains the “assignment” information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct.  The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment.  Second, the patent is never altered after it is published.  Information that was correct at one point in time may well be superseded down the road.  Third, even if the “assignee” information is correct, one cannot know from the face of the patent what rights were assigned.  It might well be that only licensed rights were assigned, or that such rights are subject to a reversion.

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

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

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

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

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

How do I research patent assignments?

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

The main task is: 

A) finding patent assignments filed with the Patent Office

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

In order to do that you will need to:

a) look up the patent or patent application  

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

b) view the full patent or patent application file  

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

How do I find a patent assignment?

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

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

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

1. Finding the patents or patent applications:  

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

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

2. Viewing related patents or patent applications

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

3. View the assignments

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

Other Information for Understanding Patent Assignments

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

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

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

The parts of the Cover Sheet are:

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

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

What is a patent assignment?

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

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

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

Other important information about ownership and assignments

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

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

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

Extra Reading

From the Law Office of John B. Hudak:

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

From the Patent Office:

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

From another Law Firm:

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

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E-Signing Patent Documents Might Sometimes Be the Wrong Approach

By Joseph Hetz and Hervey Su

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

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

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

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

Myth: The USPTO Accepts ‘DocuSign Signatures’

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

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

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

Myth: E-Signature Rules Apply to Assignments

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

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

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

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

Myth: Wet Signatures Needed for Foreign Filings

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

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

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

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

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

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

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

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

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

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Author Information

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

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

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Assignment Center is a publicly available USPTO system for recording assignments and other documents relating to interests in patents and trademarks.

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