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How to Manage Patent Assignment

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MARK TRADEMAN, TMIN NEWS ANCHOR: Did your business change its name? Change its entity type? Has the ownership of your trademark changed hands? If so, and you have a live federal trademark application or registration, you must tell the USPTO about these ownership changes. If youre not sure how to go about that, stay tuned. Well let you know what three of the most common types of changes are, how to record these changes with the USPTO, and why its so important to keep your ownership information up-to-date. So, what exactly is an ownership change. Simply put, it involves any modification of the legal entity that owns the trademark application or registration. It might be a simple change, such as a change in the owners name or entity type, or it might be a little more complex, like an assignment through the sale of an entire business. Lets take a look at three of the most common types of changes. Change in name. Here, the owner of the trademark stays th

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Got questions?

Below are some common questions from our customers that may provide you with the answer you're looking for. If you can't find an answer to your question, please don't hesitate to reach out to us.

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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.

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.

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.

What does patent assignment mean?

In 37 CFR 3.1, assignment of patent rights is defined as a transfer by a party of all or part of its right, title and interest in a patent [or] patent application. An assignment of a patent, or patent application, is the transfer to another of a partys entire ownership interest or a percentage of that partys

How do I correct an assignment on USPTO?

The corrective document must include the following: (A) A copy of the original assignment document with the corrections made therein. The corrections must be initialed and dated by the party conveying the interest; and. (B) A new Recordation Form Cover Sheet (form PTO-1595) (See MPEP 302.07).

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.

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.

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.

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