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How to Email Patent Assignment

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Welcome to the second half of day one of Invention-Con 2020. Programming is available both Friday and Saturday; check the agenda at uspto.gov by searching for Invention-Con. If you have questions during the program, please email the provided address, and I will monitor it to ask our presenter post-presentation. Feel free to send questions throughout the session, and we will ensure they reach the presenter for answers, even if not addressed live. Rest assured, we will address your inquiries by the end of the program.

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What is the effect of not recording patent assignment?

While no law requires patent assignments to be recorded, failure to record an assignment may have various adverse consequences. These consequences include loss of ownership; loss of entitlement to priority under the Paris convention; and inability to take action in the USPTO.

Can patent assignment be signed electronically?

Although electronically signed patent assignments are acceptable for U.S.-filed patent applications, it is recommended to obtain wet signatures from all parties for patent assignments if there is a chance of filing the patent application internationally.

Who can record a patent assignment?

RECORDING A PATENT ASSIGNMENT WITH THE USPTO So the patent owner should record the assignment through the USPTOs 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.

How do I file an assignment for a patent?

Steps to File a Patent Assignment Fill Out a Recordation Form Cover Sheet. The Recordation Form Cover Sheet is an official USPTO document. Complete a Patent Assignment Agreement. Sign the Patent Assignment Agreement. Submit the Patent Assignment.

Why should one record a patent assignment with the USPTO?

Recording an assignment may be necessary to permit the assignee to take action in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1.46; MPEP 301, 302, 605. In other words, assignees may face obstacles prosecuting a patent without an executed assignment.

Does patent assignment need to be docHubd?

Most patents are transferred as-is, but some patent assignment agreements have warranties and indemnities to protect the parties involved. Notarization. For a patent assignment agreement to be valid in the U.S., it must be docHubdor at least signed in front of two witnesses.

Does a patent assignment need to be signed by both parties?

All parties must sign the agreement, with limited exceptions in situations where the assignor cannot be docHubed 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.

Does a patent assignment need to be recorded?

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.

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Email Patent Assignment