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How to Export Patent Assignment

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JD Hoop, Managing Partner at Bold IP law firm, introduces a discussion on patent assignments, focusing on the transfer of ownership of intellectual property (IP) and patent assets. He explains the implications for inventors, assignees, and assignors involved in such transactions. The conversation includes a relevant example inspired by the 4th of July. Bold IP specializes in patents, trademarks, copyrights, and trade secret law, emphasizing a business-oriented approach. They advise inventors and creators to prioritize the business aspects of their IP rights to effectively protect and monetize their innovations.

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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.

Does a patent assignment need to be signed by the assignee?

Filing patent assignment applications Unlike in a copyright contract, only the assignor-inventor of a patent has to sign the form, while the assignee does not. If there are multiple inventors, all must sign the assignment form.

What is a patent assignment agreement?

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).

How do patent assignments work?

A patent or patent application is asdocHub by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable (transferable) ownership interest in the patent or application.

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.

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.

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.

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.

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 a patent assignment need to be recorded?

The original owner should record the assignment or name change with the USPTOs Assignment Recordation Branch by filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

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