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Easy guide on how to Send Patent Assignment

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How to Send Patent Assignment

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In the United States, every inventor listed on a patent has an undivided interest in that patent unless they assign their rights to another entity, such as 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 does not sign over their rights to you or your company, they retain the right to use or license the invention independently. This situation can result in conflicts, especially if you attempt to commercialize the patent or collect royalties. Therefore, it is crucial to ensure that proper assignments are filed with the patent application to ensure that the entity funding the invention keeps all rights to it.

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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

Do U.S. patent assignments need to be docHubd?

Generally, no. Assignments are transfers of the entire interest in a patent from one entity to another. They are distinguished from licenses, which give another person a limited right to the patent. In the US, there is no requirement that an assignment be docHubd.

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.

Where do you send a patent application?

Using EFS-Web you can submit documents in PDF format directly to the USPTO within minutes. For the small list of documents that cannot be submitted via EFS-Web, see Legal Framework for EFS-Web. Mail via U.S. Postal Service (USPS) to: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

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.

What are types of patent assignments?

There are four types of patent assignments: Assignment of Rights - Patent Issued: This is for patents that have already been issued. Assignment of Rights - Patent Application: This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.

How much does it cost to assign a patent?

While the costs of an application vary depending on the representation, the total costs run from $5000 to $8000. These costs incorporate attorneys fees associated with drafting and filing the patent, as well as USPTO filing fees. These fees typically cost between $360 and $720, with examination fees totaling $170.

What is the purpose of an assignee on a patent?

The assignee is the entity that has the property right to the patent. Patents are property. The inventor and the assignee may be one in the same but an employee will more than likely assign a patent to a company. The assignment of a patent is independent from the inventorship.

Where can I find patent assignments?

The USPTO maintains a patent assignment database that includes all the assignments recorded since August 1980. Using the database, you can search with the assignors or assignees name, the patent number, application number, publication number, or other identifying information.

What is the difference between patent assignment and license?

The key difference between a license and an assignment is that an assignment transfers rights away from the original copyright or patent holder. Whereas the licensor retains ownership of the intellectual property rights, the assignor gives up the rights entirely.

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