What Is a Patent Assignment?

Owning a patent is much like owning property. Just as you can sell or lease your property, you could do the same with your patent with assignment or license, respectively. Patent assignment is an inventor’s granting of all of his patent rights (or future patent rights) to another person or entity. In contrast, a license only grants another person or entity a portion of the patent rights for a limited period of time. The portion and duration of those rights is something the licensor and licensee can negotiate.

When the inventor assigns his patent rights to a third party, he gives up his patent rights in their entirety to the third party. The transfer of the patent rights is embodied in an assignment of the patent to the purchaser. An assignee appears on the cover page of a patent and provides notice of who owns the patent rights. If an assignee is not listed, it is assumed that the inventors own the patent rights. For this reason, each assignment should be reported to the USPTO.

Often times the assignee may not be listed on the patent or the listed assignee may no longer own the rights to the patent. This is usually because an assignment is made after a patent has been granted. To determine the most recent owner of the patent rights, a search through the USPTO database may be required.

When multiple inventors are members of the same entity (such as a business organization), it is advised that all inventors assign their patent rights to that entity. In this way, there is only one entity that can control the licensing and assignment of the patent without conflict. How that entity decides to control the patent is not a matter of how the entity is structured and what roles the inventors play within that entity.

Often times, inventors are obligated under their Employment Agreement to assign their patent rights to their employer. It is advised that each inventor have a Patent Attorney review his employment contract prior to filing for patent. In this way, the inventor can avoid future disputes as to patent ownership after having already invested resources into procuring the patent.

If you are interested in more detail related to your situation it is best to speak with an attorney. Discuss Your Patent Needs with a Professional.

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Yuri L. Eliezer

Intellectual Property Attorney and Managing Partner at Founders Legal

Yuri heads the Intellectual Property practice group at Founders Legal in Atlanta, Georgia.A practice he co-founded at the Atlanta Tech Village – the nation’s fourth largest incubator.He specializes in preparing, developing, and executing strategies for securing patents nationally and internationally. He focuses his work on developing IP portfolio of high value, and helps clients to licensing and acquisition deals to monetize on their IP rights.He has secured patents, negotiated and executed domestic and international IP deals in the Software, Internet/Telecom, Computer, Electrical, and Medical Device fields. His team also prosecutes patents in the Mechanical, Aerospace, Biotech, and Pharmaceutical industries.

His degree in Electrical and Computer Engineering has helped him serve technology companies of all sizes including Microsoft, Cisco, Cox, AT&T, General Electric, Georgia Institute of Technology, and Coca Cola.

Eliezer’s technological knowledge, entrepreneurial expertise, and nuanced perspective on technological innovation, has attracted national media coverage, of the likes of NPR, CNN, and The International Business Times. Eliezer also applies his wide-ranging experiences as an Advisor to the Atlanta Tech Village, where he provides guidance to a community of 120 startup companies.

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