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.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Source: Smartup Legal