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How to Protect Patent Assignment

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In the United States, every inventor listed on a patent holds an undivided interest in that patent unless they have assigned their rights to another entity, like their employer. If this assignment is not completed, it can lead to significant issues. For instance, if both you and an employee are listed on a patent application and the employee doesn't sign over their rights, they retain the ability to practice and license the invention. This scenario can result in complications for anyone looking to commercialize the patent, including making products or collecting royalties. Hence, it is crucial to file the proper assignments during the patent application process to ensure that the entity that financed the invention retains all associated rights.

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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

Should I assign my patent to my company?

Assigning your patent rights to your company helps to build the asset valuation of your company, which will be important to any investors or lenders you may seek. Investors and lenders will often require you to assign patent rights to your company before they will complete a transaction with your company.

How do I transfer a patent to a company?

A patent transfer is usually accomplished through a contract, like the written agreement form that follows. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO).

What does it mean if a patent was assigned?

Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.

What happens when you assign a patent to a company?

Patent assignment transfers your ownership rights in your patent from yourself to your company. This means that once you assign the patent, you transfer all ownership and control of that patent and its intellectual property rights as the patent inventor to another entity/company, known as an assignee.

What happens when you assign a patent?

Defining Patent Assignment Heres a high-level overview of how patent assignments work: when a patents 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.

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.

Does a patent assignment need to be docHubd?

Though the agreement is a legal document, it does not need to be docHubd. However, obtaining notarization for the signatures provides added protection, limiting the risk of a party later claiming a signature was not valid.

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