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How to Transfer a Patent

Rich Goldstein

Two people shaking hands

Obtaining a patent can be challenging enough. However, transferring legal complexities and ownership intricacies can make patent transfers even more difficult. Having facilitated numerous successful transfers, I understand the nuances involved in the transfer process.

Today, I will guide you on how to transfer a patent and help you smoothly transition ownership.

When a patent application is drafted and submitted, at least one inventor must always be identified. Whoever the inventor is or inventors are, they take ownership of that patent. The patent owner has the right to prohibit anyone else from doing the following concerning the invention:

  • Manufacturing

Three people sitting down while discussing a deal

The patent owner can typically claim damages if an individual or company infringes these patent rules .

If patent ownership is to be transferred to another entity or company, the owner (inventor) must sign a USPTO patent assignment. A patent assignment is the smoothest, most reliable method of transferring a patent. This is an agreement where the assignor transfers a percentage or all of their patent rights to another entity, even if the patent application is still pending .

Transferring a Patent Application and Granted Patent

According to the USPTO , “During examination of a pending patent application or after the patent is granted, the owner of the patent may change.” Therefore, if a patent application has been submitted and has not yet been approved, the owner can decide to transfer ownership to another party.

The initial owner of the patent may also “retain ownership [and] change its name.” To record the patent assignment or name change, the original owner must do so by completing a Recordation Cover Sheet via the USPTO’s Assignment Recordation Branch . They must also submit a copy of the assignment, legal documentation (consult with a patent attorney for further help), and proof of the name change, if necessary.

Patent Assignment Explained

To transfer ownership of a patent application, a document known as a patent assignment must be completed. These documents typically identify those transferring their patent rights to another entity and the one receiving the patent rights. Even after the initial assignment, another can be recorded to transfer a patent to another assignee.

The entity or individual transferring the rights must sign a patent assignment. The recipient is not usually required to sign the document; however, certain countries require both assignor and assignee signatures. This is important to know if you need to transfer a patent internationally.

Once completed, the assignment is recorded with the USPTO. I recommend inventors only sign the document once the patent application has been submitted. This gives a better chance of speeding up the process of transferal by the USPTO.

Executing a Patent Assignment

Every patent assignment should be completed in writing. Currently, it is not possible to enforce an assignment through oral agreements. When filling in the assignment, the assigned patent must be identified (include the title, inventors, filing date, and application number).

A man doing a presentation in front of a white board

In addition, ensure all parties are included in the form, along with their names and addresses. The assignor should sign the assignment [s] with witnesses to prove the signatures are genuine.

When to File a Patent Assignment

In most circumstances, patent assignments should be filed as soon as possible after the invention was created or acquired. This can help establish clear ownership and avoid potential complications.

  • Early inventor signatures are advisable: Obtaining inventor signatures early is highly recommended. This is because it can be challenging to locate them at a later date, especially ex-employees.
  • Concurrent assignment filing: Preferably, the executed assignment should be filed alongside the patent application. If this is unavailable, it should be submitted within three months as per 35 USC 261.
  • Strategic assignment recording: The recording of completed assignments is sometimes delayed. Recording the assignment before publication can help display the assignee’s name in the application. This means those interested can search for the application more efficiently.

Effective Search Methods for Patent Assignments

If you wish to search for patent assignments , you can do so via the USPTO website. You must choose “Patent Assignment” and input the relevant information, such as patent numbers or assignee names. You can then locate records of transferred patent ownership.

Transfer (Assignment) of Patent and License Differences

It is easy to confuse the two when dealing with royalties patent licenses and assignment agreements. Let’s clear up what each means:

  • A patent assignment involves transferring ownership rights from the original owner to an assignee. One party (the assignor) permanently transfers their rights to another party (the assignee). Therefore, the assignee becomes the new owner of the patent.
  • A license agreement grants permission to a third party (the licensee) to use the patent while the original owner (the licensor) retains ownership. The licensee tends to receive certain rights, which can be broad or restricted and pays royalties or fees to the licensor for using the patented technology.

Why Transfer a Patent?

There could be various reasons to transfer a patent. Some of the most common include:

Two people shaking hands

  • Strategic alignment with another entity’s goals – Many inventors transfer or assign their patents to a company in order to align their business entity with complementary objectives. In turn, this can maximize the product’s potential impact.
  • Monetization through selling or licensing – The patent transfer can allow the original owner to generate revenue by selling it outright or licensing its use to others for an agreed fee.
  • Focus on core business areas – It is possible to shift the attention and resources towards the owner’s primary business activities, improving overall efficiency.
  • Risk mitigation by offloading maintenance costs – Transferring a patent may relieve the owner of various financial and administrative burdens associated with maintaining and protecting the patent.
  • Streamlined portfolio management – By consolidating or optimizing a patent portfolio, assignors can make managing and exploiting valuable intellectual property assets easier via transfers.

The sale of patent results in a one-off payment, and all rights are given up (in most cases). It is essential to consult with a patent attorney to ensure a fair fee and that all legal requirements are followed.

Additional Questions

How much does it cost to transfer a patent.

The cost to transfer a patent in the United States is currently estimated at $235, though this is subject to change. This entails the change of ownership of a single patent. Fees can vary depending on individual factors and patent specifics.

Can One Transfer or Sell the Rights in a Patent?

One can transfer or sell the rights in a patent to another owner. As discussed, this is achieved through patent assignments or licensing agreements. This transfer of ownership grants the new owner permission to use the patent.

Is a Patent a Transferable Property?

A patent is a transferable property. This is because patents can be bought, sold, licensed, or assigned, thus allowing the owner to transfer their rights to another entity through legal processes.

Transferring a patent typically involves a structured legal patent process with strict patent laws that require a qualified patent attorney or expert. Assignors can effectively change ownership or grant usage rights to another party through assignments, licenses, or agreements.

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29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

Patent Assignment: How to Transfer Ownership of a Patent

  • Intellectual Property
  • Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”). 

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent. 

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But  under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP,  implement strong hiring policies  that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an  employment agreement  that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

  • Advance assignment of any IP created while employed by your company, or using your company’s resources
  • An obligation to disclose any IP created while employed by your company, or using your company’s resources
  • An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
  • An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing  invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include  incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

  • Independent contractors:  Some inventors may be self-employed, or they may be employed by one of your service providers.
  • Joint collaborators:  Some inventors may be employed by, say, a subsidiary or service company instead of your company.
  • Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

transfer of patent application right

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should  also  get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

  • The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
  • Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you  can  execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

  • Be in writing:  Oral agreements to assign patent rights are typically not enforceable in the United States
  • Clearly identify all parties:  Include the names, addresses, and relationship of the assignor(s) and assignee
  • Clearly identify the patent being assigned:  State the patent or patent application number, title, inventors, and filing date
  • Be signed by the assignors
  • Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases. 

So the patent owner (the Assignee) should should record the assignment through the  USPTO’s 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.

They should submit this paperwork  within three months  of the assignment’s date. If it’s recorded electronically, the USPTO  won’t charge a recordation fee .

Need to check who owns a patent?  The USPTO website  publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a  continuation-in-part , or in a non-provisional application that adds new matter to a  provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an   employee agreement ,  company policy ,  invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation. 

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An  experienced patent professional  can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments —  contact us now  to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

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Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

Don't miss a new article. Henry Patent Law's Patent Law News + Insights blog is designed to help people like you build smart, scalable patent strategies that protect your intellectual property as your business grows. Subscribe to receive email updates every time we publish a new article — don't miss out on key tips to help your business be more successful.

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How to transfer patent ownership.

Patent ownership starts with the inventors. It is fairly straightforward, however, to transfer ownership to a company. Every patent application must identify at least one inventor, and ownership presumptively starts with that person. To transfer patent ownership to a company or another entity, each inventor must sign a document called a patent assignment which should then be recorded with the USPTO.

First-time patent clients sometimes hesitate to identify inventors, especially when the principals of the company are not the inventors. Those concerns are typically allayed when they understand that a patent assignment can easily transfer ownership of the patent rights to another entity.

Why can’t we just name the company?

US patent laws require that a patent application identify each individual inventor who contributed to the invention as claimed. The inventors are presumed to be the owners unless other documentation is filed with the USPTO to show that ownership belongs to another entity, such as a corporation.

So you cannot file a patent application that simply names the company as the inventor.

What is a patent assignment?

A patent assignment is a document transferring ownership of the patent application from one person or entity to another. Most patent assignments will identify the inventors as the assignors (i.e., the ones transferring away patent rights) and a company as the assignee (i.e., the one receiving the rights). It is possible to record a subsequent assignment that transfers patent ownership from the first company to a second company.

According to US practice, the assignment needs to be signed by only the assignors since it is a unilateral transfer of rights. In other words, the person or entity giving the rights is the one who signs the assignment. The recipient does not need to sign because a patent assignment is not a bilateral contract requiring signatures of both parties. Certain foreign countries (e.g., Australia) require patent assignments to be executed by both the assignor and assignee.

An executed copy of the patent assignment should then be recorded with the USPTO against each patent filing identified in the assignment. It’s best to get all inventors to sign the patent assignment as early as possible, preferably before the patent application is filed. That way, the executed assignment can be recorded with the USPTO promptly after the application is filed. As time passes, it may become increasingly challenging to obtain inventor signatures given the possibility of job relocation, termination, retirement, etc.

When should a patent assignment be filed?

Obtaining signatures from the inventors early on is advisable since it might be difficult to locate inventors later on. For example, an ex-employee may relocate or leave on bad terms which may make it especially difficult for the employer-assignee to obtain signatures.

Once the patent application is filed, we prefer to file the executed assignment concurrently with the initial filing if the signed copies are available. If not, we strive to obtain the executed assignments promptly and file the patent assignments within three months of the application filing date pursuant to 35 USC 261 .

Some patent owners may get the assignment signed by the inventors, but hold off on recording the executed document. If an assignment is recorded with the USPTO prior to publication, then the published application will show the name of the assignee, thereby making it easier for any interested parties to search for the patent application.

Is a new assignment required for each subsequent patent application?

Generally, a single assignment is sufficient for a particular US patent application and all related counterpart applications (e.g., foreign applications, continuations, etc.). If a continuation-in-part (CIP) application contains new matter introduced by a new inventor, then a new assignment for the CIP should be signed by the new inventor.

How to search patent assignments

The USPTO patent assignment search site allows anyone to search for patent assignments.

What if an inventor is unavailable or unwilling to sign a patent assignment?

It is not uncommon for employees to leave a company. If an inventor is unavailable or unwilling to sign an assignment, the assignee may proceed without an executed assignment by submitting documentary evidence of ownership [see MPEP 409.05 ]. For example, the assignee may consider submitting a copy of an employment agreement showing that the employee/inventor was under an obligation to assign the invention to employer.

If an employment agreement cannot be produced, the employer may seek to demonstrate a proprietary interest with a legal memorandum:

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the  37 CFR 1.46  applicant. The facts in support of any conclusion that a court would award title to the  37 CFR 1.46  applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record. MPEP 409.05

What if there are joint owners of a patent?

35 USC § 262 has this to say about joint patent owners:

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners. 35 US Code Section 262

Joint ownership of a patent is tricky because the default rule is that each owner (assignee) owns 100% of the patent and can do with it what they want without obtaining the consent of other co-owners. The idea of each co-owner owning 100% of a piece of property seems counterintuitive until you realize that a patent is the right to exclude others from using the patented invention. In absence of an agreement to the contrary, therefore, each patent co-owner has the right to exclude others, or to license the patented technology to others, without having to obtain consent from the other co-owners.

If joint owners wish to divide fees from monetizing the patent (e.g., royalties from patent licensing), then such detailed terms should be clearly specified in the written agreement. Otherwise, partial ownership of a patent (e.g., percentage ownership of patent) begs the question of what exactly is being divided.

Need to transfer patent ownership?

Contact  US patent attorney Vic Lin  by email at  [email protected]  or  call (949) 223-9623  to see how we can you properly transfer ownership of a patent to the right company or individual.

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Patent Ownership in the United States - Best Practices to Preserve Your Rights

Written by: andrew berks.

patent rights united states

The issue of who actually owns a patent or pending patent application is obviously very important. This blog post will briefly explain how patent ownership works under US patent law, so inventors, managers, and other non-experts can better understand this important topic when working with a patent attorney.  

Ownership Overview

Patents are a form of intellectual property. All property (including patents) has an owner, which may be an individual (i.e., a person), or a group of people, or a corporate owner. A corporate entity can be a limited liability company (LLC), a corporation (S corp or C corp), a partnership, or any other corporate entity allowed by the law of any state.   Much of patent ownership is analogous to the ownership of real property or ownership of things like cars. Just like with any property, patents can be bought, sold, and licensed (analogous to renting a property). Of course, there are differences – mainly because patents are intangible. You can’t put a patent in your garage. So lets discuss how patent ownership works and best practices.  

Default – Patents are Owned by the Inventors

By default, US patents are owned by the inventors if no other action regarding ownership is taken. All patents and patent applications require at least one inventor, so this requirement is always met from the time of filing.   Leaving patents in the name of the inventors is not necessarily a problem, but a best practice is to transfer the ownership to a corporate entity (see discussion of patent assignments below). Here are some issues with leaving patents in the name of the inventors:

  • For a single inventor, if the inventor dies or becomes disabled, the ownership of the patent becomes questionable. The patent may become subject to a probate proceeding.
  • For a group of inventors, each person owns an undivided equal share of the patent. That means that if there are, say, four inventors, each inventor owns 25% of the patent, and each inventor can do whatever they want with that share. For example, one inventor/owner could start producing a product covered by the patent that the other inventors don’t like. The others may think the price is too low or the quality is poor. With the default ownership, the other inventors have no basis to stop a rogue co-inventor from causing mischief.
  • Another group inventor problem is that if the inventors have a falling out, one inventor can assign their interest, complicating the ownership of the patent.
  • Potential licensees, business partners, or investors typically want to do business with another corporate entity, not an individual or group of individuals. In the case of a group of inventors, each inventor must agree to sell or license the patent. If one inventor/owner objects, a deal that other owner/inventors want could be ruined.

  By transferring the ownership to a corporate entity such as an LLC, S-corporation, or C-corporation, many of these issues go away or become contractual issues between owners of the corporate entity, which are easier to deal with.  

Alternative – Patents Owned by an Applicant

Alternatively, patents can now be filed by a corporate entity (called an “Applicant”). Note however, that naming an Applicant at the time of patent filing is not a substitute for a patent assignment. A patent application naming an applicant should also have an assignment from the inventors, even if a corporate owner is provided at the time of filing.  

Patent Assignments

In patents, selling a patent (or a partial ownership in a patent) is called an assignment . Inventors of patents or any current owner can assign their interest in a patent or patent application to another party, such as a corporate owner or another person, at any time during the life of the patent. With an assignment, ownership and all rights that go with the patent are transferred from an a ssignor (i.e., the seller) to an assignee (i.e., a buyer).   Assigning a patent or patent application is analogous to selling an asset, such as a house or a car. With an assignment, the patent is effectively sold to someone else.   Partial interests can be sold, so for example, one inventor in a group of inventors can assign their individual interest, which could be a serious problem and tie up the ownership and value of the patent. This is a reason why an assignment to a single corporate entity for a group inventorship patent may be important.  

Assignment of Patent Applications

Patent applications not yet granted can also be assigned, and there are good reasons for doing so.

  • For a group of inventors, getting an assignment very early in the process can avoid the problem of a disagreement among inventors. By assigning to a corporate entity promptly after the patent application is filed, the ownership picture is secure from the patent application filing.
  • For both individual and group inventors, an assignment to a corporate entity makes the patent more attractive to investors, potential buyers, or licensees. Investors, potential buyers or licensees typically would much rather deal with a corporate entity rather than an individual investor.

Obligations to assign

Many inventions are made by employees, such as scientists or engineers working for a company. This discussion also applies to consultants. A best practice is for employers to insist on an obligation to assign any invention made by an employee or consultant inventor to the employer. There is case law that an invention made by an employee or consultant using company time and resources, without an express obligation to assign, belongs to the employer. However, these rights are weak and can lead to costly litigation, delays, and loss of rights. By including an obligation of any employee-inventor to assign their patent to a corporate entity, this problem is avoided. This provision should be added to employment or consulting agreements if patentable subject matter is a likely to be developed. Even if an employee and employer have a disagreement or falling out, the employer can still assert ownership over a patent if there is an obligation to assign on file. Special language is required under the case law to perfect an obligation to assign future rights, so this should be discussed with a patent attorney.   Any compensation due to an employee-inventor is a separate question. That issue should be negotiated in advance of any work assignment.  

Patent Licenses

Many inventors and companies are not interested in commercializing a patented invention and may desire instead to license the invention to another party that has the capability of manufacturing or marketing a patented product. A patent license is analogous to renting a house. The owner gives another party the right to use the property in exchange for payments (rent). So a license is a transfer of some, but not all, rights in a patent or patent application.   Patent licensing is a big discussion beyond the scope of this blog post. The main point for this discussion is that patent licenses can be classified as exclusive or non-exclusive . In an exclusive license , the licensor (the party that owns the patent) does not license the patent to any other licensees. In a non-exclusive license , the licensor makes licenses to multiple licensees.   An exclusive licensee has special rights in terms of enforcement. An exclusive licensee may bring a patent infringement suit without involving the patent assignee.  

Enforcement

A key feature in patent law is that only a patent assignee or exclusive licensee has standing to bring a lawsuit for patent infringement. A non-exclusive licensee or some other third party, even if they have some kind of interest in the patent, cannot bring a suit for infringement on their own. Ultimately, this may be the most critical factor in this discussion. The ability to bring a suit for patent infringement to protect the patent right is what makes patents valuable assets. Consequently, it is important to understand which parties have this right.  

Ensuring the correct party has rights to a patent or patent application is a critical aspect of managing a patent portfolio. Properly addressing ownership issues at an early stage is a best practice. Contact us for assistance with this important aspect of patent ownership.

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Patent assignment—How-to guide

Find out more about business management

transfer of patent application right

by   LegalZoom staff

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Updated on: February 15, 2024 · 13min read

1. Overview

  • 2. Do's & don’ts checklist

3. Patent assignment instructions

A company’s ability to buy and sell property is essential to its long-term life and vitality. Although it does not take up physical space, too much intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including patents and other inventions) to support their growth must be sure that the seller does, in fact, have title to the desired items. A properly drafted patent assignment can help in both circumstances. 

A patent assignment is the transfer of an owner’s property rights in a given patent or patents, and any applications for such patents. These transfers may occur on their own or as parts of larger asset sales or purchases. Patent assignment agreements provide both records of ownership and transfer and protect the rights of all parties.

If you follow the enclosed sample and guidelines, you will have a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations, and you will be well on your way to establishing a clear record of title for all of your patents. 

2. Do's & don’ts checklist

  • A patent is a set of exclusive rights in an invention given by the government to its inventor for a limited period of time. Essentially, in exchange for the inventor’s agreement to make his or her invention public and allow others to examine and build on that work, the government provides the inventor with a short-term monopoly on his or her creation. In other words, he or she is the only person who can make, use, or sell that invention.
  • A patent assignment can take many forms. It can be the transfer of an individual’s entire interest to another individual or company. It can also be the transfer of a specific part of that interest (e.g., half interest, quarter interest, etc.) or a transfer valid only in a designated area of the country. The exact form of the transfer is specific to the agreement of the parties.
  • Licenses are different than assignments. The individual who receives license rights from the patent holder is not gaining ownership—rather, he or she is getting assurance from the patent holder that he or she will not be sued for making, using, or selling the invention. The terms of the license will vary from agreement to agreement and may address issues of royalties, production, or reversion. If you are looking only to license your invention and not to sell all or part of it, you should not use the enclosed document.
  • 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). The agreement will not be effective if this registration is not made. Moreover, if the transfer is not recorded within three (3) months from the date of the assignment, there can be no later purchasers. In other words, the patent is no longer sellable to a third party by the assignee if it is not recorded quickly and correctly.
  • There is a $40 fee for recording each assignment of a patent or patent application. If you are submitting your transfer papers to the USPTO by mail, you should send them (together with a cover sheet and the fee) to Mail Stop Assignment Recording Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. Note that if you submit your assignment by mail, you should not use the original since the document will not be returned to you. In addition, the copy you submit must be on paper that is “flexible, strong white, non-shiny, and durable.”
  • Although you should feel free to adapt the document to suit your arrangement, you should always identify the patent(s) being assigned by their USPTO number and date and include the name of the inventor and the invention’s title (as stated in the patent itself). This is a requirement of federal law, and failure to follow it could invalidate your assignment.
  • The advantage of selling your invention or patent outright (and not simply licensing or attempting to develop and market it yourself) is that you are guaranteed payment at the price you and the purchaser have negotiated. On the other hand, that one-time payment is all that you will ever receive for your property. You will no longer have the right to control anyone else’s use of your creation. By using it yourself or offering a temporary license, you retain the potential for future income. However, such income is by no means certain, and your opportunities are paralleled by risk. Before selling all of your rights in a patent or patent application, make sure this is the best (and most lucrative) approach for you and your company.
  • Do not enter into an agreement without completing your due diligence. If you are purchasing a patent, conduct searches with the USPTO and online directories to make sure the seller actually has complete and unique rights in the offered property. Has an application already been filed by another person or company? What are the chances that this is a patentable item? Although your findings will not provide guarantees, you may have protection as an “innocent purchaser” if disputes arise. You might also find critical information about the value of the patent. Consider hiring a professional to help in your investigation. Comparing patents and applications often requires a specialized and technical understanding to know how useful and unique each one is. 
  • If you are selling an invention or patent, make sure you own it. Although this may seem obvious, ownership of intellectual property is sometimes not clear-cut. This may be the case if, for example, the invention was created as part of your employment or if it was simply sold or otherwise transferred to somebody else. A thorough search of the USPTO website should be conducted before you attempt to sell your property.
  • Both parties should review the assignment carefully to ensure that all relevant deal points have been included. It is better to be over-inclusive than under-inclusive. Do not assume that certain expectations or terms are agreed to if they are not stated expressly in the document.
  • Sign two copies of the assignment, one for you and one for the other party.
  • It’s a good idea to have your assignment notarized. This will limit later challenges to the validity of a party’s signature or of the transfer itself.
  • If your agreement is complicated, do not use the enclosed form. Contact an attorney to help you draft an assignment that will meet your specific needs. 

The following provision-by-provision instructions will help you understand the terms of your assignment.

The numbers and letters below (e.g., Section 1, Section 2(a), etc.) correspond to the provisions in the agreement. Please review the entire document before starting your step-by-step process. 

  • Introduction of parties. Identifies the document as a patent assignment. Write in the date on which the agreement is signed. Identify the parties and, if applicable, what type of organization(s) they are. Note that each party is given a name (e.g., “Assignor”) that will be used throughout the agreement. The Assignor is the party that is giving (“assigning”) its ownership interest and the Assignee is the party receiving it.
  • Recitals. The “whereas” clauses, referred to as recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the patent.  Remember that the Assignor can transfer all or part of its interest in the Patents. If the entire property is being transferred, use the word “all.” If only part of an Invention or Patent is being transferred, specify the amount being assigned (e.g., one-half, one-quarter, etc.).
  • Section 1: Assignment of patents. This constitutes the assignment and acceptance of the assignment of the Patents and Inventions. Note that the property being assigned is not described in the agreement itself. The Assignment references “Schedule 1” and explains that the full description is located on that schedule. Be as complete and clear as possible in your description of the property being transferred.
  • Section 2: Consideration. In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the Assignee is giving money (sometimes called “consideration”) to receive the Assignor’s property. Enter the amount to be paid, and indicate how long the Assignee has to make that payment after the agreement is signed.
  • Section 3: Authorization to a director. The Assignor’s authorization to issue any Patents in the Assignee’s name. In other words, this tells the head of the USPTO that the transfer is valid and that ownership is changing hands by virtue of the Assignment. The bracketed last sentence is only applicable if the assignment is being recorded before a patent application number has been issued by the USPTO. It allows this application number to be written in after the assignment is recorded. If the applications have already been filed, and there have been application numbers issued, delete this bracketed sentence.
  • 4(a): it is the sole owner of the Inventions and the Patents. If there are other owners who are not transferring their interests, use the bracketed phrase. This means that the only part being transferred is the Assignor’s part.
  • 4(b): it has not sold or transferred the Inventions and the Patents to any third party
  • 4(c): has the authority to enter the agreement.
  • 4(d): does not believe that the Inventions and the Patents have been taken from any third party without authorization (e.g., a knowing copy of another company’s invention).
  • 4(e): does not know of any permissions that have to be obtained in order for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
  • 4(f): the Patents weren’t created while the creator was employed by a third party. In many cases, if an individual is employed by a company and comes up with a product, the company will own that product. This section offers assurance to the Assignee that there are no companies that will make that claim about the Patents being sold. If you and the other Party want to include additional representations and warranties, you can do so here. 
  • 5(a): has the authority to enter the agreement.
  • 5(b) has enough funds to pay for the assignment.  If you and the other Party want to include additional representations and warranties, you can do so here. 
  • Section 6: No early assignment. Prevents the Assignee from re-transferring the inventions or patents, or using any of them as collateral for loans, until it has made complete payment of the money due under the agreement. 
  • Section 7: Documentation. The Assignor’s promise to help with any paperwork needed to complete an assignment (e.g., filing information about the assignment with the USPTO and transferring document titles). The bracketed phrases make the additional promise that the Assignor will help with transfer paperwork for filings outside of the country. If this is not relevant to your agreement, delete the bracketed phrases.
  • Section 8: No further use of inventions or patents . Indicates that after the effective date of the agreement, the Assignor will stop using all of the inventions and patents being transferred and will not challenge the Assignee’s use of those inventions or patents.
  • Section 9: Indemnification. A description of each party’s future obligations if the patent or any application is found to infringe on a third party’s rights. There are two options provided, and you should choose the one that best fits with your situation. In the first, the Assignor takes all responsibility for infringement, promising to pay all expenses and costs relating to the claim. In the second, the Assignor makes its responsibilities conditional, greatly limiting its obligations if a claim is brought. Select only one of these options, and delete the other.
  • Section 10: Successors and assigns. States that the Parties’ rights and obligations will be passed on to successor organizations (if any), or organizations to which rights and obligations have been permissibly assigned.
  • Section 11: No implied waiver. Explains that even if one Party allows the other to ignore or break an obligation under the agreement, it does not mean that the Party waives any future rights to require the other to fulfill those (or any other) obligations.
  • Section 12: Notice. Lists the addresses to which all official or legal correspondence should be delivered. Write a mailing address for both the Assignor and the Assignee.
  • Section 13: Governing law. Allows the parties to choose the state laws that will be used to interpret the document. Note that this is not a venue provision. The included language will not impact where a potential claim can be brought. Write the applicable state law in the blank provided.
  • Section 14: Counterparts/electronic signatures. The title of this provision sounds complicated, but it is simple to explain: it says that even if the Parties sign the agreement in different locations, or use electronic devices to transmit signatures (e.g., fax machines or computers), all of the separate pieces will be considered part of the same agreement. In a modern world where signing parties are often not in the same city—much less the same room—this provision ensures that business can be transacted efficiently without sacrificing the validity of the agreement as a whole.
  • Section 15: Severability. Protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it will not undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.
  • Section 16: Entire agreement. The Parties’ agreement that the document they’re signing is “the agreement” about the issues involved. Unfortunately, the inclusion of this provision will not prevent a Party from arguing that other enforceable promises exist, but it will provide you some protection from these claims.
  • Section 17: Headings. Notes that the headings at the beginning of each section are meant to organize the document and should not be considered operational parts of the note.
  • Schedule 1: List of patents. In order for a patent assignment to be effective, the patents being transferred must be clearly identified. Be thorough in your description and attach any registrations or drawings that you may have. If you do include drawings, reference the inclusion of those items in the schedule (e.g., “*See attached drawing.”). Enter the patent registration number, and the name of all of the registered inventors of the patent(s) (even if they are not parties to this Assignment). If the assignment relates to a patent application, identify the application number (consisting of a series code and a serial number, e.g., 07/123,456). If the assignment relates to a provisional patent application or an application that is being filed at the same time as (or after) the assignment, you must also provide the name of each inventor and the title of the invention.

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APPLICATION FILING

Ownership transfer of intellectual property rights in general, what are assignments of intellectual property rights.

An assignment is the act of transferring ownership of the Intellectual Property Right from the assignor to the assignee. Often, the assignment document is simply referred to as the “assignment”. The two parties can be individuals or legal entities. Intellectual Property Rights typically need to be assigned on a country by country basis complying with the various national assignment requirements. However, international or regional Intellectual Property Right applications often can be assigned centrally before the respective international or regional authorities such as the respective international or regional patent or trademark offices. Examples for such authorities are the International Bureau handling International Patent Applications under the Patent Cooperation Treaty (PCT), the European Patent Office (EPO) handling European Patents and the European Union Intellectual Property Office (EUIPO, formerly named OHIM) handling European Union Trademarks (EUTM) and Registered Community Designs (RCD).

What IP rights can be assigned?

Most Intellectual Property Rights can be freely assigned in part or in its entirety between any assignor and assignee. Certain partial rights may be assignable separately and independently from the underlying IP right, for instance the priority right determining the time rank of an IP right.

What is required for valid assignments of Intellectual Property Rights?

National laws, rules and formalities apply for recordation of country by country assignments by a variety of national, regional or international recording authorities. When looking at a bigger Intellectual Property Rights family, a one fits all assignment fulfilling this wide variety of requirements is virtually impossible. Typically, national representatives should be retained for complying with this variety of requirements. If possible, some international or regional Intellectual Property Rights should be assigned centrally while still pending for avoiding the hassle of dealing with such wide variety of national requirements that may be required after the issue date of the international or regional Intellectual Property Right.

What are typical form requirements for assignments?

Assignments typically need to be made in writing and typically require the signatures of both the assignor and the assignee. In case of a legal entity, the signatory needs to be entitled to sign on behalf of that legal entity, typically an officer of the legal entity, or needs to have received the signatory authorization from such officer. Although in some countries the signature of the assignor only may suffice, more commonly, the signatures of both parties are required. It is good practice to assume that both signatures are required everywhere. The signatures are typically required in ink. As an alternative to filing the original with the signatures in ink, an increasing number of authorities have waived the requirement to file the original but accept copies, or when filed electronically, scans of the assignment document signed in ink. If not filed, the original should be kept in a safe place. Some countries may require notarization and maybe even require some form of legalization, e.g. “Apostille”, for effectively recording an assignment.

What assignment document content is typically required for assignments?

In most countries, the assignment document just identifies the right that is assigned and the parties, but some countries require a specific text using specific language. From a practical standpoint, a good way of looking at assignments from a formal point of view is to treat these like a contract, although the assignment may have comparatively little content in comparison to other types of contracts. A few authorities may require the use of a specific form.

Why are assignments important?

If the assignee likes to exercise certain rights, the assignment must be recorded. A proper assignment and recordation thereof may for instance be required for the assignee = applicant to act in the proceedings before the various authorities. The failure to properly assign and record may also result in enforceability delays of the assigned IP right by the assignee until recordation has been finalized. In some countries, this may cause significant enforceability delays. Also, a proper assignment is required for claiming priority rights. Further, it is helpful for the assignee to become an assignor for yet another assignment after the first assignment is recorded.

What is a “nunc pro tunc” assignment?

A nunc pro tunc assignment is an assignment executed at a later date but taking effect at an earlier date specified in the nunc pro tunc assignment. In some countries, such nunc pro tunc assignments are recorded, in others no such retroactive effect assignments are recorded.

What are the most common assignment deficiencies?

Although the assignment document has only limited content a variety of deficiencies may occur. Just to mention a few: The assignor may not be the owner of the assigned IP right at the date of assignment; the incorrect IP right is assigned; at least one of the signatories lacks signatory authorization; a required language or form is not used; certain assignment document form requirements are missed, formalities such as signatures in ink, notarization or legalization are missed; some recordation form requirements such as request and recordation fee payment are missed; the signature by one party such as the assignee is missed; the parties are not properly defined to be clearly identifiable, for instance due to incorrect name and/or address; or the date of the assignment is too late for taking certain legal effects.

What are the legal consequences of a deficient assignment?

Although it may be possible to overcome some consequences by correcting deficiencies without losing the initial assignment date, or time permitting simply by executing and recording a new assignment, in some cases these remedial measures may come too late. For example, for validly claiming priority rights, the priority right needs to be actually owned by the applicant of the later application within the priority time period. Unless recognizing nunc pro tunc assignments, an assignment after the priority period may come too late. The risk with assignments is that some deficiencies may not be noticed until it is too late to fix the problem. For this reason, assignment formalities should be observed scrupulously.

About author Alexander Schlee

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Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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3 Types of Patent Rights to be transferred

3 Types of Patent Rights to be transferred

This article discusses the transfer rights under the Patent Law, know here whether the ‘Patent Rights’ can be transferred. There are three main ways in which a patent can be transferred from one person (the patentee) to another:

  • Granting a license
  • Transmission.

License- A patent license is permission granted by the patentee to another person or company to make, use, or sell the patented invention. A license can be exclusive (granted to only one licensee) or non-exclusive (granted to multiple licensees).

Assignment- An assignment is a transfer of the entire ownership of the patent from the patentee to another person or company. This requires a written document, called an assignment deed, which must be signed by both the assignor (the patentee) and the assignee (the person or company receiving the assignment).

Transmission- Transmission refers to the transfer of ownership of a patent due to the death of the patentee. The patent will be transferred to the patentee’s heirs or estate, as specified in their will or according to the laws of inheritance in the relevant jurisdiction.

It’s important to note that a patent can also be abandoned by the patentee, in which case it will no longer be in effect.

Table of Contents

The patentee is entitled to give a licence of right for making use of the patent to any person in accordance with the procedure prescribed in the Patent Act and Rules . Patent licenses can be of two types-

  • Compulsory License
  • Licences of rights

COMPULSORY LICENSE (SEC 84 OF PATENT ACT, 1970)

At any time after the expiration of three years from the date of the grant of a patent, any person interested may make an application to the Controller for the grant of compulsory licence on patent on any of the following grounds-

  (a).  that the patented invention has not satisfied the reasonable requirements of the public,

  (b). that the availability of such patent invented is not on reasonable price,

  (c). that in India the patent invented is not working.

‘LICENCES OF RIGHT’

Before the amendment in 2002 to the Patent act 1970, if the comptroller determines that the patented invention has not been satisfied (made available to the public) or is not available to the public at a reasonable price, he or she has the authority to issue an order for the patent to be endorsed with the words “licences of right.” This endorsement is intended to serve the public interest by ensuring that the patented invention is made available to the public at a reasonable price.

If a patent has been endorsed with the words “licences of right,” then any person interested in working (using or exploiting) the patented invention in India may require the patentee to grant them a license for that purpose after the expiration of 3 years from the date of endorsement. The terms of the license must be mutually agreed upon by the patentee and the licensee. This provision allows the public to gain access to patented inventions that are not being made available or are not being made available at a reasonable price, helping to ensure that the patented inventions are used for the benefit of the public.

PUBLIC USE OF AN INVENTION

Public use and exercise of an invention refer to the use and exploitation of the invention in public, rather than by the public. In other words, the invention is being used or exercised in a way that is visible or accessible to the general public. For a patent to be considered void (invalid), the invention and the manner in which it can be used must be made known to the public through a description in a work that has been publicly circulated, or through a specification that has been enrolled. It is not necessary for the invention to be actually used by the public or for it to be widely known to the public for a patent to be considered void. This provision is intended to ensure that patented inventions are used for the benefit of the public, rather than being kept secret or restricted from use.

A license is a legal agreement that allows a person or entity (the licensee) to use a patented invention in a specific manner. A license can be express (explicitly granted in writing), implied (arising through the actions or conduct of the parties), or statutory (provided for by law). A license can also be exclusive, non-exclusive, or limited. An exclusive license grants the licensee the exclusive right to use the patented invention, meaning that no one else, including the patentee, can use the invention without the permission of the licensee. A non-exclusive license, on the other hand, allows the patentee and others to use the patented invention. A limited license places certain restrictions on the use of the patented invention, such as limiting the licensee to using the invention in a specific place, for a specific time period, or for a specific purpose. A sole license is similar to an exclusive license, but it only prevents others (besides the patentee) from using the patented invention, rather than preventing the patentee from using the invention as well.

ASSIGNMENTS

A patentee has the right to assign their patent rights to another person or entity, either in whole or in part. The assignee becomes the owner of the assigned patent rights and has the same rights and responsibilities as the original patentee. When there are two or more assignees, they become co-owners of the patent, which means that they all have equal rights and responsibilities in relation to the patent. It is important to note that the assignment of a patent must be in writing and must be registered with the relevant patent office in order to be effective.

Assignments of the patent can be done in 2 different ways as follows-

  • Legal Assignment- An assignment is a legal transfer of ownership of a patent from the original patentee (also known as the “assignor”) to the assignee. An agreement to assign is a document that sets out the terms and conditions under which a patent will be assigned in the future. Once the assignment is complete and the necessary documentation has been filed with the relevant patent office, the assignee becomes the legal owner of the patent and has the same rights and responsibilities as the original patentee. The assignee’s name can then be entered in the register of patents as the proprietor of the patent, and they can exercise all the rights of the proprietor of a patent.
  • Equitable Assignment- An equitable assignment is a transfer of ownership of a patent that is based on an agreement between the assignor (the original patentee) and the assignee. An equitable assignment can be made by any document, such as a letter or undertaking that clearly sets out the terms of the assignment. An equitable assignment is effective immediately and can be made even while a patent application is still pending. In equity, the assignee is entitled to their share of the patent, but legally, the patentee is still treated as the proprietor of the patent until a legal assignment is made. An equitable assignee cannot have their name entered in the register of patents as the proprietor of the patent until they obtain a legal assignment. However, they can take legal action against the assignor/patentee to compel them to execute a legal assignment.

TRANSMISSION

When the patentee dies, their interest in the patent passes to their legal representative as part of their estate, just like any other property. The legal representative is responsible for managing the patent and can transfer it to another party if they choose to do so. Similarly, if the patentee becomes insolvent or bankrupt, the patent may be transferred to a creditor as part of the bankruptcy or insolvency proceedings. In the case of a company, if the company is dissolved, the patent may be transferred to one of the shareholders or to a third party. The specific process for transferring a patent in these cases will depend on the laws of the country in which the patent was granted

A patent is a legal protection granted to an inventor for a certain period of time, in exchange for disclosing their invention to the public. A patent gives the patent owner the right to exclude others from making, using, selling, and importing the patented invention without the owner’s permission. There are three main ways in which a patent can be transferred from one person (the patentee) to another: by granting a license, by assignment, or by transmission.

A patent license is permission granted by the patentee to another person or company to make, use, or sell the patented invention. A license can be exclusive (granted to only one licensee) or non-exclusive (granted to multiple licensees).

An assignment is a transfer of the entire ownership of the patent from the patentee to another person or company. This requires a written document, called an assignment deed, which must be signed by both the assignor (the patentee) and the assignee (the person or company receiving the assignment).

Transmission refers to the transfer of ownership of a patent due to the death of the patentee. The patent will be transferred to the patentee’s heirs or estate, as specified in their will or according to the laws of inheritance in the relevant jurisdiction.

It’s also important to note that a patent can be abandoned by the patentee, in which case it will no longer be in effect.

Disclaimer:  The opinions and views in the articles and research papers published on this website; are personal and independent opinions of the author. The website is not responsible for them.

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United States Patent and Trademark Office - An Agency of the Department of Commerce

Forms for patent applications

Filed on or after september 16, 2012.

All of the forms on this page are for use in patent applications filed on or after September 16, 2012 . Forms for use in patent applications filed before September 16, 2012 , may be accessed here .

  • All forms are provided in Adobe's PDF format. You must have  Adobe Acrobat reader installed on your computer (at minimum, Acrobat 5.0 is required). For best results, right-click on the link to the form and select “Save link as” or equivalent. Then use Adobe Reader to open the form.
  • Examples of proper signatures can be found here .
  • The expiration date at the top right-hand corner of each page of certain forms is a requirement of the OMB approval process under the Paperwork Reduction Act (PRA) of 1995, and does not indicate a date beyond which the forms are invalid. The date shown in the middle column above indicates when each form was last revised.
  • For  general assistance  in completing the patent forms below or to request paper copies of the forms, contact the USPTO Contact Center Division at 1-800-786-9199 (1-800-PTO-9199) or 571-272-1000, and select option 2.
  • To report a problem with a fillable patent form, please email  [email protected] .

CARES Act Relief

Application data sheet, certificate of mailing/transmission, customer number, express abandonment, information disclosure statement, inventor's oath or declaration ( quick reference guide ), nonpublication request, patent cooperation treaty (pct), patent electronic system verification form, pilot programs, power of attorney and change of correspondence address, prioritized examination, priority document exchange, provisional patent application, reexamination, reissue application ( reissue application filing guide ), request for continued examination (rce), requests related to inventorship and applicant, statement under 37 cfr 3.73(c), statutory disclaimer, supplemental examination, terminal disclaimer (note: in pending applications, a terminal disclaimer may alternatively be filed as a  web-based eterminal disclaimer over the uspto patent electronic filing system.), third-party submissions, transmittals and cover sheets, miscellaneous forms.

PATENT PROSECUTION HIGHWAY - Forms to request participation in the Patent Prosecution Highway (regardless of application filing date) may be accessed here .

IMPORTANT NOTICES AND REMINDERS REGARDING USE OF PATENT FORMS

The Office provides forms to the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited.

No changes to certification statements on the Office forms (e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request form) may be made.

The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed.

The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under 37 CFR 11.18(b) that the existing text and any certification statements on the form have not been altered other than permitted by USPTO patent electronic filing system customization.

See 37 CFR 1.4(d)(3).

To apply for a patent under 35 U.S.C. 111, transfer the ownership of a patent, or request other actions related to patents, certain information specified in the Patent Laws (Title 35, United States Code) and Rules (Title 37, Code of Federal Regulations) must be submitted to the U.S. Patent and Trademark Office (USPTO). The USPTO provides patent forms to the public to use in certain situations, but, in almost all situations the USPTO does not require use of a form, or even provide a form, to submit the information required. The patent forms provided below were designed as a guide to assist patent applicants and patentees in making certain limited submissions to the USPTO. Use of the patent forms for purposes they were not designed for is not advised. The Patent Laws and Rules should be your primary guide to what information must be submitted and how it must be submitted. Any submission that meets all requirements of the Patent Laws, Rules, and Orders and Notices of the Director of the US Patent and Trademark Office, will be accepted, whether or not it is similar to any of the patent forms provided below. A submission may not be accepted, even if it is identical to a patent form provided below, if in a specified case, it does not meet all the requirements of Patent Laws, Rules, and Orders and Notices. See current fee amounts . A surcharge will be due if the basic filing fee is not paid on filing. Other consequences may occur if the proper fees are not paid or if the required action is not taken.

To open a particular form for immediate use, click on the link. The forms are capable of being completed on your computer. To save a form for later use, use your browser's right mouse button to click on the form hyperlink, save the form file on your machine's hard disk, and open it locally in the Acrobat reader.

Additional information about this page

transfer of patent application right

January 21, 2023

Transfer of patent rights.

This article has been written by Ms. Samriddhi Vishen, a 2 nd year LL.B. student of Shri Jai Narain Misra PG College (KKC), Lucknow .

In India, an applicant is granted a patent for his/her invention by the Government of India. They are given in order to safeguard inventions and to promote more of them in the future. They help to ensure certain rights with regard to the invention to its owner, including, the right to forbid others from utilizing, creating, producing, and marketing the same product or service in the market, and being a form of property, it is transferable and the rights entrusted to the patent owner can be transferred to another. Thus, this article attempts to examine the provisions related to such a transfer and related laws. 

Reasons for transfer

Patent Rights may be transferred for a number of reasons: the patent holder may no longer be involved in a particular field of technology, wish to recoup some of its R&D expenditure through patent sales, exchange patents or patent portfolios with other entities, be insolvent or facing bankruptcy, which would require it to sell assets, or there can be other purposes. Buyers may purchase patents for a variety of reasons, such as financial gain from owning patents, defensive purposes or the need to ensure access to the patented technology, among others. 

Mode of Transfer of Patent Rights  

The following are the ways in which a patent is transferable: 

  • By Act of Parties: Assignment and License
  • By operation of law 

It is to be noted that only the patent’s owner is authorized to grant Licenses or assign patents. When there are jointowners or co-owners, one of the owners cannot assign or License the patent without permission of the other(s). 

1. By Act of Parties: 

  • Assignment- The Indian Patents Act does not define the word “assignment.” A patent owner may transfer all or a portion of his patent rights to an assignee, who then receives the exclusive right to bar anyone from creating, utilizing, exercising, or commercializing the invention. 

Registration of assignments- A person may submit an application in writing in Form 16 to the Controller General of Patents, Designs, and Trademarks (CGPDTM) for the registration of his title if they acquire a patent, a stake in a patent, or an entitlement as a mortgagee through an assignment. The CGPDTM must record the details of the trademark assignment in the register upon receipt of proof of title or to his satisfaction when such an application is submitted.

The following documents are needed in India for registration of a patent assignment:

  • Application for recording of patent assignment in Form-16 
  • Two copies of Assignment Deed along with the application
  • Documents evidencing assignment of a patent or affecting the proprietorship 

Types of Patent Assignment- Assignments can be classified as either legal, equitable, or mortgage-related. 

Legal Assignment: Where the assignee may enter his name as the patent owner, an agreement to assign or an assignment of an existing patent is a legal assignment. Only through a deed can a patent be assigned if it was established by deed. All rights to a patent are acquired by a legal assignee who is qualified to act as its proprietor thereof. 

Equitable Assignment: An equitable assignment of the patent is any agreement, including a letter, in which the patentee consents to transfer a specific, identified portion of the patent to another party. However, in this situation, an assignee cannot have his name included as the patent owner. However, the assignee may request his interest in the patent to be entered in the register. 

Mortgage: A mortgage is an agreement that transfers all or a portion of the patent rights to the assignee in exchange for cash. The patent rights are returned to the assignor/patentee after the assignor pays the assigned amount. The person in whose favour a mortgage is granted does not have the right to be listed in the register as the proprietor; however, he may have his name listed there as the mortgagee.

  • License: A patentee may grant a License by virtue of an agreement in accordance with section 70 of the Patents Act. Patent licencing must adhere to the clauses mentioned in Section 84-92 of the Act. A licensee (license holder) may be allowed to create, use, or exercise an invention by a patentee through the issuance of a License. A License is a written contract between the licensee and the licensor (owner of patent granting license) that details the terms agreed upon, including the payment of royalties at a specified rate for all products made under the patent. Some of the clauses under a patent licensing agreement include Identification of the Parties, recital clause, license clause, definition clause, payment clause, termination clause etc. 

Steps to File a Patent License:

1. Locate Manufacturers- To find out possible licensees.

2. Sign a Confidentiality Agreement- To safeguard your rights to your intellectual property, request that potential licensees sign a confidentiality agreement.

3. Negotiation- Negotiate the terms and conditions of the patent License with the licensee. This step involves discussion on a number of terms and conditions like- 

  • the scope of the License, such as the nation or region to which the License extends; 
  • the royalties, which can be paid as a percentage or fee, fixed or variable; 
  • the duration of the License, including any terms for renewal or early termination; 
  • and any restrictions, such as a minimum annual royalty or a minimum number of products sold.
  • standards for product or quality control, compliance with legislation, any charges in addition to royalties (for instance, signing fees), the ability of the licensee to sublicense the rights, etc. are some other factors that may be taken into account.

4. Complete a Patent License Agreement- An official contract known as a patent license agreement gives the licensee certain rights to make use of or sell your patented invention. The license’s terms and conditions are described there. This document needs to be signed by both the licensor(s) and the licensee(s).

Types of Patent License: The following are the types of Licenses: 

Voluntary License: It is the license granted to anyone else to create, use, and market the patented product in accordance with the agreed terms in writing. The Controller and the Central government have no role to play because it is voluntary. The terms and conditions of such agreement are mutually agreed upon by the licensor and licensee. In case of any disagreement, the licensor can cancel the licensing agreement.

Statutory License: In the public interest, the central government may grant statutory licenses to allow a third party to produce or use a patented good without the patent holder’s consent. Compulsory licenses are a well-known example of such statutory licenses. The general definition of a compulsory license is “authorizations permitting a third party to make, use, or sell a patented invention without the patent owner’s consent.”

Exclusive License and Limited License: 

A license can be either an Exclusive License or a Limited License, depending on the extent and degree of the rights granted to the licensee. All other parties, including the patent holder, are prohibited from using the invention under an exclusive license. From the collection of rights held by the patentee, any one or more rights pertaining to the patented invention may be granted. The rights may be shared and transferred, completely or partially restricted. In a limited license, the restrictions may arise as to the people, the time, the place, the manufacture, the usage, or the sale.

Express License and Implied License: A License that expressly grants rights to use the patent is known as an express License. Such a License cannot be deemed valid unless the terms and conditions are set down in writing. In the event of an implicit License, even though the consent is not given explicitly, it is clear from the context. For instance, there is an implicit License to use and resale a patented article when a person purchases it directly from the patentee or his licensees, whether they are located domestically or abroad.

2. By Operation of law: When a patentee’s interest in the patent transfers to his or her legal representative upon death; in the event of a company’s dissolution, winding up, or bankruptcy, transfer of patent rights by operation of law occurs. 

Essentials of a Valid Assignment and License 

  • The Patent Assignment and License must be reduced to writing in a document that outlines all the criteria that govern the parties’ rights and obligations.
  • The written agreement must be duly registered with the Controller General of Patents, Designs, and Trademarks 

(CGPDTM) in accordance with the provisions of the Indian Patent Act, 1970.

Case Laws  

  • PVR Pictures Ltd. v. Studio 18- The Delhi High Court ruled in the case of PVR Pictures Ltd. v. Studio 18 [2009 SCC OnLine Del 1878: (2009) 41 PTC 70] that a term sheet agreement does not constitute a license agreement.
  • National Research Development Corpn. Vs ABS Plastics Limited- In the aforementioned case, the Honorable Delhi High Court ruled that granting a License or assigning a patent right to a third party is only valid if it is done in writing between the parties involved and is documented and submitted in the appropriate manner with the Controller of Patents. The court here held that the license was invalid and hence unenforceable because it was not registered at the patent office.
  • Bayer Corporation vs Union Of India- The key issue in this case was whether Bayer should have granted Natco a voluntary and compulsory License together with the implementation of the bolar provisions in regard to the patent linkages in the Indian context. According to the court, Natco had met every condition outlined in Section 84(1) clauses (a), (b), and (c) of the Act, and as a result, the Controller General of Patents had every authority to give Natco a compulsory License.

The Court found out that the application filed by Natco outlining the areas in which the petitioner fell short was accurate. The court found that Bayer, the patent holder, had failed to demonstrate that the medicine in question is not worked in the territory of India and it failed to satisfy the reasonable requirement test for public use of the drug. The court further stated that Section 83(f) of the Act was intended to prevent patent holders from abusing their rights in connection with foreign trade.

Conclusion 

Thus, it is crucial to make sure that all conditions are satisfied when preparing, executing and recording the transfer of Patent Rights in India. When failing to do so, it could result in the loss of rights and potential exposure to liability.

References: 

Transfer of the Patent Rights

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Robot inventors dismayed —

Uspto says ai models can’t hold patents, inventors must be human, but there's still a condition where ai can officially help..

Benj Edwards - Feb 14, 2024 8:41 pm UTC

An illustrated concept of a digital brain, crossed out.

On Tuesday, the United States Patent and Trademark Office (USPTO) published guidance on inventorship for AI-assisted inventions, clarifying that while AI systems can play a role in the creative process, only natural persons (human beings) who make significant contributions to the conception of an invention can be named as inventors. It also rules out using AI models to churn out patent ideas without significant human input.

The USPTO says this position is supported by "the statutes, court decisions, and numerous policy considerations," including the Executive Order on AI issued by President Biden. We've previously covered attempts, which have been repeatedly rejected by US courts , by Dr. Stephen Thaler to have an AI program called "DABUS" named as the inventor on a US patent (a process begun in 2019).

Further Reading

This guidance follows themes previously set by the US Copyright Office (and agreed upon by a judge ) that an AI model cannot own a copyright for a piece of media and that substantial human contributions are required for copyright protection.

Even though an AI model itself cannot be named an inventor or joint inventor on a patent, using AI assistance to create an invention does not necessarily disqualify a human from holding a patent, as the USPTO explains:

"While AI systems and other non-natural persons cannot be listed as inventors on patent applications or patents, the use of an AI system by a natural person(s) does not preclude a natural person(s) from qualifying as an inventor (or joint inventors) if the natural person(s) significantly contributed to the claimed invention."

However, the USPTO says that significant human input is required for an invention to be patentable: "Maintaining 'intellectual domination' over an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system." So a person simply overseeing an AI system isn't suddenly an inventor. The person must make a significant contribution to the conception of the invention.

If someone does use an AI model to help create patents, the guidance describes how the application process would work. First, patent applications for AI-assisted inventions must name "the natural person(s) who significantly contributed to the invention as the inventor," and additionally, applications must not list "any entity that is not a natural person as an inventor or joint inventor, even if an AI system may have been instrumental in the creation of the claimed invention."

Reading between the lines, it seems the contributions made by AI systems are akin to contributions made by other tools that assist in the invention process. The document does not explicitly say that the use of AI is required to be disclosed during the application process.

Even with the published guidance , the USPTO is seeking public comment on the newly released guidelines and issues related to AI inventorship on its website .

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  • Artificial Intelligence /

US patent office confirms AI can’t hold patents

But ‘the use of an ai system by a natural person does not preclude a natural person from qualifying as an inventor.’.

By Emilia David , a reporter who covers AI. Prior to joining The Verge, she covered the intersection between technology, finance, and the economy.

Share this story

An illustration of a cartoon brain with a computer chip imposed on top.

The US Patent and Trademark Office (USPTO) maintains that artificial intelligence systems cannot be named inventors, but humans can use AI tools in the process of creating patented inventions and must disclose if they do.

The agency published its latest guidance following a series of “listening” tours to gather public feedback. It states that while AI systems and other “non-natural persons” can’t be listed as inventors in patent applications, “the use of an AI system by a natural person does not preclude a natural person from qualifying as an inventor.” People seeking patents must disclose if they used AI in the invention process, just as the USPTO asks all applicants to list all material information necessary to make a decision.

However, to be able to register a patent, the person using the AI must’ve contributed significantly to the invention’s conception. A person simply asking an AI system to create something and overseeing it, the report says, does not make them an inventor. The office says that a person who simply presents the problem to an AI system or “recognizes and appreciates” its output as a good invention can’t claim credit for that patent.

“However, a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system,” the USPTO says. 

The office also says that “maintaining ‘intellectual domination’ over an AI system does not, on its own, make a person an inventor” — so simply overseeing or owning an AI that creates things doesn’t mean you can file a patent for them.

In 2020, the USPTO ruled that only “natural humans” can apply for patents after it denied a petition from researcher Stephen Thaler. Thaler added the AI system he created, DABUS, as an inventor in a patent application. A US court upheld the patent office’s decision . A different federal court ruled that AI systems cannot be granted copyright , following a separate application by Thaler involving an AI-generated image.

The USPTO and the US Copyright Office undertook a series of public consultations to develop new guidelines on handling AI in patent and copyright petitions.

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IMAGES

  1. 4 Steps in the patent process

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  3. Patent Assignment Template: Transfer a Patent / Patent Application

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  4. HOW TO FILE AN INTERNATIONAL PATENT APPLICATION

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  5. The Hidden Costs of Filing a Patent

  6. Should you rely on an NDA or file a Patent? #ipprotection #patents #nda

COMMENTS

  1. Managing a patent

    To carefully distinguish the exact nature of the patent right conferred, the key phrase above is "right to exclude." The patent does not grant you the right to make, use, offer for sale, or sell or import the invention, but only the right to exclude others from doing so.

  2. 301-Ownership/Assignability of Patents and Applications

    I. OWNERSHIP Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1).Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal ...

  3. How to Transfer a Patent

    To transfer ownership of a patent application, a document known as a patent assignment must be completed. These documents typically identify those transferring their patent rights to another entity and the one receiving the patent rights. Even after the initial assignment, another can be recorded to transfer a patent to another assignee.

  4. Patent Assignment: How to Transfer Ownership of a Patent

    Like a property sale, a patent assignment is a permanent transfer of legal rights. U sing Employment Agreements to Transfer Patent Ownership Before your employees begin developing IP, implement strong hiring policies that ensure your IP rights will be legally enforceable in future.

  5. How to Transfer Patent Ownership

    To transfer patent ownership to a company or another entity, each inventor must sign a document called a patent assignment which should then be recorded with the USPTO. First-time patent clients sometimes hesitate to identify inventors, especially when the principals of the company are not the inventors.

  6. Patents Assignments: Change & search ownership

    Maintain Patents Assignments: Change & search ownership Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration.

  7. Transfer of rights

    Transfer of rights Transfer of rights A revised version of this publication entered into force. 5.11.001 A European patent application or patent may be assigned as a whole or in part for one or more of the designated contracting states. Art. 71 - 72, 74 R. 22, 85

  8. Patent Ownership in the United States

    A patent license is analogous to renting a house. The owner gives another party the right to use the property in exchange for payments (rent). So a license is a transfer of some, but not all, rights in a patent or patent application. Patent licensing is a big discussion beyond the scope of this blog post.

  9. Patent assignment—How-to guide

    A patent assignment is the transfer of an owner's property rights in a given patent or patents, and any applications for such patents. These transfers may occur on their own or as parts of larger asset sales or purchases. Patent assignment agreements provide both records of ownership and transfer and protect the rights of all parties.

  10. Transfer (patent)

    A transfer of patent or patent application can be the result of a financial transaction, such as an assignment, a merger, a takeover or a demerger, or the result of an operation of law, such as in an inheritance process, or in a bankruptcy . Rationale

  11. Transferring a patent

    By transferring the patent application or the patent you assign all of the rights, title and interests coming with the IP right to the assignee in return for a lump sum payment. When transferring a European patent application or patent, you do not have to transfer it in all the Contracting States.

  12. Patent Application Right Transfer Agreement

    This Patent Application Right Transfer Agreement (hereinafter referred to as the ) is entered into on August 1, 2005 between the following two parties: Transferee: Acorn Information Technology (Shanghai) Co., Ltd. ( Domicile: 888 Yishan Road, Room 1206 Xinyin Plaza, Shanghai Legal Representative: Yang Dongjie Tel: 021-54644600

  13. Free Patent Assignment Template & FAQs

    WHEREAS, the Assignor is the sole and rightful owner of certain ideas, inventions, patent applications therefor and patents thereon (collectively referred to as the "Patents") set forth in Exhibit A attached hereto; and . WHEREAS, the Assignee desires to purchase or acquire the Assignor's right, title, and interest in and to the Patents; and

  14. Ownership Transfer of Intellectual Property Rights in General

    An assignment is the act of transferring ownership of the Intellectual Property Right from the assignor to the assignee. Often, the assignment document is simply referred to as the "assignment". The two parties can be individuals or legal entities. Intellectual Property Rights typically need to be assigned on a country by country basis ...

  15. 3 Types of Patent Rights to be transferred

    There are three main ways in which a patent can be transferred from one person (the patentee) to another: Granting a license Assignment Transmission. License- A patent license is permission granted by the patentee to another person or company to make, use, or sell the patented invention.

  16. PDF This guidance applies to all applications, and to all patents resulting

    each named inventor in a patent application or patent, including an application or a patent an exclusive right to an invention was the creation of society—at odds with the inherent free nature of ... then, barring any restrictions to the contrary, transfer that right to another, and so forth."). 90 See MPEP 301.

  17. Guidelines for Transferring Priority Rights

    The questionnaire also examined whether there are differences in the requirements for the transfer of priority rights for national phase applications made under the Patent Co-operation Treaty (a PCT application). SUMMARY. While the full Report of the study is available <here>, the results can be summarized as follows.

  18. Transfer of IP rights in China| CMS Expert Guides

    Transfer of IP rights in China Table of contents China Add jurisdiction Patents: Assignment 1. How may a patent be assigned (by law and/or transaction) and is it required to record the assignment in the national patent register to become effective? A patent can be assigned by law or transaction.

  19. Transferring ownership/ Assignments FAQs

    Go Assignment Center coming On February 5, Assignment Center will replace the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration.

  20. Transfer of Patent Applications at the EPO

    A European patent application may be transferred for one or more of the designated contracting states. The European Patent Office registers a transfer of rights in respect of a pending European patent application in the European Patent Register on request, upon fulfilment of the prerequisites of Rule 22.The request is not deemed to have been filed until an administrative fee has been paid.

  21. Forms for patent applications

    The date shown in the middle column above indicates when each form was last revised. For general assistance in completing the patent forms below or to request paper copies of the forms, contact the USPTO Contact Center Division at 1-800-786-9199 (1-800-PTO-9199) or 571-272-1000, and select option 2. To report a problem with a fillable patent ...

  22. Transfer of Patent Rights

    January 21, 2023 Transfer of Patent Rights This article has been written by Ms. Samriddhi Vishen, a 2nd year LL.B. student of Shri Jai Narain Misra PG College (KKC), Lucknow. In India, an applicant is granted a patent for his/her invention by the Government of India.

  23. 3. Transfer of the European patent application

    The EPO registers a transfer of rights in respect of a pending European patent application (see A‑IV, 1.1.1 and J 10/93) in the European Patent Register on request, upon fulfilment of the prerequisites of Rule 22. The request is not deemed to have been filed until an administrative fee has been paid.

  24. USPTO says AI models can't hold patents

    If someone does use an AI model to help create patents, the guidance describes how the application process would work. First, patent applications for AI-assisted inventions must name "the natural ...

  25. I would like to register a transfer of rights (change of ownership) for

    The newly registered applicant/proprietor is entitled to exercise the right to the European patent application/patent before the EPO as of this date. Note During the international phase for a PCT application, the recordal of transfers must be requested with the International Bureau of the World International Property Organisation (WIPO).

  26. US patent office confirms AI can't hold patents

    The US Patent and Trademark Office (USPTO) maintains that artificial intelligence systems cannot be named inventors, but humans can use AI tools in the process of creating patented inventions and ...