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.

uspto assignment example

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!

uspto assignment example

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.

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Ant-Like Persistence

Unauthorized Practice of Law by the USPTO – sample assignments

uspto assignment example

Ownership of property is a matter of state law, not federal law.  Indeed for countries that are not the US, ownership of property is a matter of the law of the country involved. In the face of this, the USPTO has no business giving out legal advice about language to use in a patent assignment or trademark assignment.

Here is USPTO’s sample of a patent assignment (archived here ).

Here is USPTO’s sample of a trademark assignment (archived here ).

It is no easy trick listing all of the things that might be wrong with either of these recommended assignments, depending on the geographical location involved and the facts of the situation.  But here are a few:

  • There are places in Europe where an assignment is defective unless it is signed by the assignee.
  • The patent assignment recites that the assignee is “desirous of acquiring”, a representation that only the assignee could make.  But this representation is being placed in the mouth of the assignor.
  • There may be jurisdictions where it is necessary to set forth not only the name of the assignee but also the place where it was incorporated or established.
  • For a patent, there are many situations where the things that need to get assigned include not only the patent itself, but the right to sue for and collect damages for past infringements.
  • For a patent application or trademark application, there are many situations where the things that need to get assigned include the right of priority appertaining to the application.
  • The sample trademark assignment utterly fails to address an ITU (intent-to-use) filing basis, where the assignment will fail unless it is an assignment except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing.  See 15 USC § 1060.
  • As for the patent assignment, depending upon the jurisdiction, it might be necessary to recite the consideration for the assignment.
  • The sample patent assignment fails to address notarization, see 35 USC § 261.
  • The sample trademark assignment fails to address notarization, see 15 USC § 1060.

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2 replies to “unauthorized practice of law by the uspto – sample assignments”.

I recorded an assignment for patent applications and it took two times for the patent application numbers to appear in the list of properties because it was giving me a “not found” message each time, and I am sure I didn’t type the numbers wrong.

Also, the entity type only appears for trademark assignments, not patents, as does the docket number. I suppose docket number option is only available for trademarks because we have to pay a fee for recording trademark assignments and not for patents.

It’s quite obvious that the USPTO rushed the implementation of its IPAS system without first working out all the kinks.

The USPTO demands compliance with their nonsensical rules and inconsistent procedures. Have you ever tried to file a trademark application onTEAS? It’s confusing and contradictory.

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IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and Copyright Law

March 22, 2023 By John DiGiacomo

Like any valuable business asset, patents, trademarks and copyrights can be sold, assigned and licensed. Indeed, assignment and licensing is common with respect to intellectual property. In legal terms, an “assignment” is a transfer of ownership, either full ownership or partial. In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning “now for then.”A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date.

For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc assignment provision might look like this:

Now, therefore, for good and valuable consideration, ASSIGNOR agrees that ASSIGNOR hereby assigned unto ASSIGNEE nunc pro tunc effective as of October 1, 2020, all right, title and interest in and to the May 1, 2017 trademark described herein … In testimony whereof, ASSIGNOR, has signed this instrument this 1st day of October 2020.”

In this example, the assignment is deemed to have been granted on May 1, 2017, but has an effective date of October 1, 2020.

In business terms, nunc pro tunc assignments are often used where past IP assignments are made verbally or via conduct. In the rush to get IP “to market,” it is not uncommon for assignments to be granted, but not reduced to writing. Nunc pro tunc assignments are also commonly used to bridge gaps in the “chain of title” for IP. This can happen when corporations and/or assets are sold, but proper paperwork is missing. Purchasers believe that they have ownership to certain patents, trademarks, or copyrights, but the missing documents cause “gaps” in the chain of title. These “gaps” can be cured by obtaining a nunc pro tunc assignment from the original owner of the IP. In the same manner, nunc pro tunc assignments are often used as part of settlements for litigation involving claims of patent, trademark and/or copyright infringement or disputes over ownership

For litigation purposes, nunc pro tunc assignments are often used to give a party legal standing to initiate litigation. To have “standing” to initiate litigation, a party must have some ownership interest in the patent, trademark or copyright. However, for courts, “standing” is based on the effective date of the assignment, not the earlier date listed in the nunc pro tunc assignment.

However, for other purposes, the earlier assignment date listed in the nunc pro tunc assignment is the credited date. For example, an assignment of a registered trademark must be recorded with the US Patent & Trademark Office (“USPTO”). This is done electronically. The assignment must be uploaded along with the proper recordation form and applicable fee. For the USPTO, the trademark assignment is based on the date designated for the assignment rather than the date of execution of the nunc pro tunc assignment.

So, when should you use a nunc pro tunc assignment for a trademark? The most common situations include:

  • When a trademark was previously assigned but not recorded – Sometimes, an assignment of trademark ownership may occur but the paperwork is not properly filed or recorded with the United States Patent and Trademark Office (USPTO). In this case, a nunc pro tunc assignment can be used to correct the oversight and retroactively assign the trademark to the new owner.
  • When the original assignment was not effective – A nunc pro tunc assignment can also be used to correct a defective assignment. For example, if the original assignment was not properly executed or lacked essential terms, the nunc pro tunc assignment can be used to correct those issues and make the assignment retroactively effective.
  • When there is a change in business structure – A nunc pro tunc assignment may be necessary when there is a change in the business structure of the trademark owner, such as a merger or acquisition. In this case, the new owner may need to retroactively assign the trademark to themselves to ensure that they have proper ownership and control over the trademark.
  • When there is a dispute over ownership – If there is a dispute over the ownership of a trademark, a nunc pro tunc assignment may be used to resolve the issue. This can occur when multiple parties claim ownership of a trademark, or when there is confusion over who actually owns the trademark.
  • When the trademark was abandoned – In some cases, a trademark may have been abandoned by the previous owner. If this occurs, a nunc pro tunc assignment may be used to assign ownership to the new owner retroactively. However, it is important to note that there are strict time limits for filing a nunc pro tunc assignment in these cases.

It is important to note that a nunc pro tunc assignment should only be used when there is a genuine need to correct an error or oversight in the assignment of a trademark ownership. It is not a tool to be used to cover up illegal or unethical behavior.

In addition, a nunc pro tunc assignment can be a complex legal process that requires the assistance of an experienced trademark attorney. The attorney can help ensure that the assignment is executed properly and in compliance with all legal requirements.

Contact Revision Legal

For more information, contact the IP and  business lawyers at Revision Legal at 231-714-0100.

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Corrective Assignment: Everything You Need to Know

A corrective assignment is a way to rectify an error in a recorded document. 3 min read updated on February 01, 2023

A corrective assignment is a way to rectify an error in a recorded document. The Assignment Division will make the changes if an acceptable corrective document is turned in. Policies related to the recording of assignment documents are designed to maintain the history of any claimed interests in property.

For that reason, recorded assignment documents are not expunged, even if they are later determined to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm'r Pat. 1992) for more information. Once a document is recorded, the Assignment Services Division will not remove information from the record. See MPEP § 323.01(d) for specifics.

What Are the Components of a Corrective Assignment?

  • The corrective document needs to include a copy of the original assignment paperwork with the requested changes noted.
  • The party who wishes to convey the interest needs to initial the corrections and date them.
  • A Recordation Form Cover Sheet (form PTO-1595) must accompany the corrective document. Refer to MPEP § 302.07 for more information. The new cover sheet should be clearly marked as a corrective document submission and refer to the reel and frame number of the recorded document that needs correcting.
  • When the corrective document is recorded, it gets a new reel and frame number along with the date of recording.
  • The original cover sheet should be included in the packet.
  • The fee for this service is listed in 37 CFR 1.21(h). This recording fee must be paid for each application and each patent being corrected. Refer to MPEP § 302.06 for more information.
  • You can make corrections to the original by marking out an application or patent number if you are completing a name change or merger. See MPEP § 314 for more information.

Correcting Assignment Cover Sheets at the United States Patent and Trademark Office

Sometimes the United States Patent and Trademark Office (USPTO) makes mistakes. Practitioners also make errors occasionally. While both sides strive for perfection, in reality, mistakes will happen. The USPTO recognizes this and provides processes and policies to fix issues like typographical errors and other clerical errors at different points in the process.

For some examples, refer to 37 CFR 1.76(c) Correction of ADS, PCT Rule 91.1 Rectification of Obvious Mistakes, 37 CFR 1.121(b) Amendments to Specification, 37 CFR 1.323 Certificate of Correction of Applicant's Mistake, and 37 CFR 3.34 Correction of Cover Sheet Errors.

Usually, these processes are sufficient. However, if a correction needs to be made on an assignment cover page, the MPEP instructions on how the USPTO should handle them appear to conflict with the way the Assignment Branch processes them. The MPEP 323.01(a); 37 CFR 3.34 lists the requirements to correct a cover sheet as:

  • A copy of the original recorded document.
  • A cover sheet that reflects the corrections.
  • Payment for the fees.

You can file such a request by mail as described in MPEP 302.08 or by fax as described in MPEP 302.09. To use EPAS to file electronically, the MPEP instructions say to mark the box labeled "Other" under "Nature of Conveyance" and then fill in the reel and frame information and describe the correction.

Though this seems simple enough, what actually happens in practice is quite different. The USPTO Assignment Branch sometime rejects requests to correct Notices of Recordation of Assignment (NORA) without explanation. This happens whether the request was submitted via mail, fax, or electronically.

One possible explanation is an EPAS-centered process that makes the MPEP process impractical. The only way to fix a NORA cover page is by filing an application for a corrective assignment. This is different than choosing "Other."

This happens even though the EPAS is made just for requests such as this. Despite that, it cannot process a task so routine that it has a dedicated section in the MPEP. A simple solution would be a separate selection under "Nature of Conveyance" labeled "Correction to Cover Sheet." A text box could hold the necessary information.

This could help users see the option immediately and remove any vagueness in the rules or the processing of the requests. Also, the Assignment Branch should allow requests via mail and fax since these are specifically offered in the MPEP.

If you need help with a corrective assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Ucc assignment and federal uspto assignment: one word, two meanings.

UCC Assignment and USPTO Assignment - Intellectual Property Due Diligence

Fairly frequently, I am asked the following question:

“Do assignment filings made with the USPTO have the same effect as assignment filings made under Article 9 of the Uniform Commercial Code?”

While in certain situations the answer is yes, the more helpful and short answer is no . UCC assignments are typically filed centrally or locally in each state, IP filings are made at the federal level. Moreover, the word ‘assignment’ may have a different meaning. 

I’ll explore some of the similarities and differences between Article 9 assignments and assignments made with the U.S. Patent and Trademark Office (USPTO) to explain why.

What is an Assignment?

Let's start with setting the scope of what we mean by the term ‘assignment’. When used with respect to property, particularly in the legal world, assignment is defined as “the act of transferring an interest in property or some right (such as contract benefits) to another”.

UCC Assignment

Article 9 of the  Uniform Commercial Code (UCC)  allows a secured party (SP) to file assignments via UCC3 amendments. In the UCC Article 9 world, an assignment (UCC3) is linked to the initial financing statement (UCC1) in the public record so that the relationship between the two filings is clear. Both filings, the UCC1 and UCC3, are indexed together so that a search of the public record by a debtor name will reveal both the financing statement and the amendment in one search.

There are several types of UCC assignment filings a secured party may make with the appropriate central filing office and/or local filing office: 

  • The secured party (assignor) may assign all of its rights to another party (assignee). (This is considered a full assignment.)
  • The secured party may assign the rights to some portion or percentage of all the collateral covered by the initial UCC financing statement to another party. (A partial assignment.)
  • The secured party may assign the rights of the 100% interest in a  portion  of the collateral to another party. (Also a partial assignment.)

USPTO Assignment

Like the rights to security interests that may be fully or partially assigned under the UCC,  intellectual property (IP) , such as patents and trademarks, may also have ownership rights transferred in full or in part on the public record at the USPTO. In both cases, when an IP or UCC assignment filing is made, the filings end up in the public record so that searchers can find them.

At the USPTO, however, assignments and other changes are not directly linked on one index when searching by name, which is ordinarily how due diligence searching is conducted. A name search of the USPTO index will not yield one set of complete results containing both trademark applications and registrations and all trademark assignment filings. Separate searches are needed in different sections of the USPTO website. Once those searches are completed, a searcher may need to manually review the results in order to determine if there is a parent-child relationship between the records.

This is also important to note because an IP assignment can be filed before a patent is granted or a trademark application and registration appears on the USPTO records, because it might still be going through the review process at the USPTO.

On top of that, some filings categorized as ‘assignments’ at the USPTO, because they are indexed in the assignments database, are not assignments by definition. In other words,  a filing on the USPTO assignment database may NOT be transferring rights in full or in part . This means that search results will include actual assignments and other records that are not assignments in the true sense of the rights of transfer. 

USPTO Assignment Recordation Examples

So, what other filings are included as ‘assignments’ at the USPTO that are not really assignments? As an example, let’s say that the owner of IP changes their name while retaining ownership in their IP. Searching either of the assignment indexes at the USPTO may include name change results. Technically, this is not an assignment by definition – there was no transfer of rights – but the name change is filed on the assignment index. A security interest in IP is another example of a type of lien filing found on the USPTO assignments database but is not, by definition, an assignment.

Adding to the confusion, IP filers can choose to file using the option of ‘Other’ and can enter a conveyance type not already provided as a standard selection, which means that almost anything can be included on the ‘assignment’ records at the USPTO. 

A Rule of Thumb for UCC and IP Assignments

The main point to take away from this discussion is that while assignments of UCCs are always assignments, assignments of IP are not as clear. Assignments of UCCs are always linked to the initial financing statements and are usually reflected in a single search, but assignments of IP filings are found on a different USPTO database from the trademark application and registration database, and patent grant and published pending patent databases, which all require separate searches (and thus, yield separate search results) on the USPTO website. It is necessary for the searcher to match up IP assignments to the parent record, if there is a parent record available.

The terminology may appear the same, but the meaning – and the search processes – for USPTO assignments and UCC assignments are completely different.

For insight on how intellectual property due diligence dovetails with more traditional types of searches, access our free webinar below:

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This content is provided for informational purposes only and should not be considered, or relied upon, as legal advice.

Topics: Article 9 Filing, Searching and Due Diligence , UCC , Intellectual Property Due Diligence

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Which Significant USPTO Fee Increases Might We See in 2025?

If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April 2023, publishing its initial proposed fee schedule and supporting information for consideration by the Patent Public Advisory Committee (PPAC). The PPAC’s feedback on the proposed fee changes may provide insight as to which new fees are likely to be implemented and which may be shelved.

The USPTO Fee-Setting Process

The USPTO fee-setting process is a multi-step process that requires input from the PPAC, a public hearing, and a public notice and comment period. The fee changes that took effect in October 2020 began their journey in August 2018, with a Notice of Proposed Rulemaking (NPRM) issued in July 2019 and the final fees published in August 2020. If the USPTO is going to implement fee adjustments in January 2025, it is leaving much less time for consideration of public comments on any NPRM issued in the coming months.

PPAC Comments On Proposed Fee Adjustments

I summarized the most significant proposed fee adjustments in this article — the full proposed fee schedule and justifications are available on the USPTO’s  Fee-Setting web page . Here, I review the PPAC’s comments on the proposed adjustments as stated in the PPAC Fee Setting Report — which increases did PPAC support and which did it disagree with?

(Any fees noted below are at the Large Entity rate)

Mixed Support for Across the Board Fee Increases

The PPAC supported the proposed 5% across-the-board fee increase justified as an inflation adjustment, but opposed the second 5% across-the-board fee increase “designed to front load fees in order to reduce the reliance on maintenance fee renewals.” The PPAC found that would place “an undue burden on individual inventors and small businesses.” 

The PPAC also did not support the significantly increased fees for design patent applications and suggested the USPTO instead consider seeking legislative changes that would impose maintenance fees for design patents.

Opposed New Assignment Recordation Fees

The PPAC opposed the proposed new fees (US$40/US$60) for assignment recordation, which the USPTO had justified to discourage “frivolous” submissions. The PPAC noted that “ensuring transparency of ownership is key to patent data integrity,” and so does not recommend “a fee that would provide an impediment to keeping assignment data up to date.”

Support for Increased Excess Claim Fees

The PPAC supported the proposed increases in excess claim fees (doubling to US$200 for each claim over 20 and increasing 25% to US$600 for each independent claim over 3), but agreed with public comments that the increased fees should be “spent on examination and/or giving the Examiners additional time to evaluate such cases.”

It would be interesting if the USPTO adopted a fee structure that would provide at least a partial refund of excess claim fees if claims are canceled in response to a restriction requirement. That would permit applicants to benefit from the divisional application protections of 35 USC § 121 without having to pay inordinate excess claim fees for claims that are not examined on the merits.

Support for New Escalating IDS Fees

The PPAC supported the proposed new escalating Information Disclosure Statement (IDS) fees, which would be based on the cumulative number of references cited (>50 items: US$200; >100 items: US$300; >200 items: US$300), but suggested “the additional money should go towards allowing Examiner’s [sic] more time to consider the additional references.”

With regard to the IDS burden, the PPAC also stated:

[I]f Congress would reform inequitable conduct rules, this by itself may largely affect applicant behavior. With current inequitable conduct case law, there is undue pressure on practitioners to cite every possible reference or risk the practitioners right to practice or the enforceability of the case. The PPAC recommends a legislative proposal to change this pressure.

I find this comment interesting because it is the USPTO that has not revised the contours of “materiality” set forth in 37 CFR § 1.56 since the Federal Circuit adopted a “but for” standard for inequitable conduct in 2011 . The USPTO’s own rule and guidance require disclosure of more information than current inequitable conduct case law .

Opposed New Escalating Terminal Disclaimer Fees

The PPAC opposed the proposed new escalating Terminal Disclaimer fees, which would increase from US$200 to as much as US$1,400 depending on when the Terminal Disclaimer is filed. The PPAC noted that the proposal would “place an unfair burden to filers with limited resources” who would face “pressure…to give up patent term in exchange for a less expensive more compact prosecution while those with more resources can wait to see if they need to file a terminal disclaimer.”

Conditional Support for New After-Final Consideration Program Fee

The PPAC opposed the proposed US$500 fee for the after-final consideration program unless applicants are guaranteed an examiner interview, or unless the fee is only collected if an interview is granted.

If the USPTO adopts this approach, it should implement safeguards requiring a meaningful interview. In my experience, some examiners conduct two-minute AFCP “interviews” that only advise the applicant that the proposed amendments are being denied entry under the program because they require a new search or more than the allotted time to consider. 

Support for Revised RCE Fee Structure

The PPAC supported the revised fee structure for Requests for Continued Examination (RCEs), with a new higher tier for third and subsequent RCEs (1st RCE: US$1,500; 2nd RCE: US$2,500; 3rd RCE: US$3,600).

Before the USPTO adopts this new structure, it should consider the impact of its IDS rules on RCE filings. For example, the rule that permits filing of an IDS after a final Office Action or Notice of Allowance only applies to IDSs filed to submit items cited by a “ foreign patent office in a counterpart foreign application” or items not previously known to any individual encompassed by the duty of disclosure. It does not apply to IDSs filed to submit items recently cited in a co-pending U.S. application, even if the co-pending U.S. application is a parent or child of the application at issue. To obtain consideration of such an IDS after a final Office Action or Notice of Allowance requires an RCE.

Mixed Support for New Continuing Application Fees

The PPAC opposed the proposed new fee for filing a continuing application between three and seven years after the initial application but supported the proposed new US$3,000 fee for filing a continuing application after seven years or more.

If the USPTO adopts this surcharge, divisional applications should be excluded. Imposing an additional fee for filing a divisional application could be inconsistent with 35 USC § 121, which offers protection to divisional applications filed any time before issuance of the application in which a Restriction Requirement was made.

Conditional Support for Increased Patent Term Adjustment Reconsideration Fee

The PPAC supported the proposed increase in the fee for requesting reconsideration of a patent term adjustment (PTA) award from US$210 to US$300, but only if the USPTO did not make an error in its PTA calculation. I agree with the PPAC’s comment that “[i]f the USPTO made the adjustment mistake, then the applicant shouldn’t have to pay.”

Qualified Support for Increased Patent Term Extension Application Fee

The PPAC supported increasing the fee for an application for FDA review-based patent term extension (PTE), but suggested the USPTO reconsider the magnitude of the increase (from US$1,180 to US$6,700) given its potential impact on “start-up companies [who] may be resource constrained.”

Mixed Support for PTAB Trial Fees

The PPAC supported the increased petition fees for PTAB trials, but opposed proposed fixed fees for exceeding prescribed page limits because they would favor “well-resourced petitioners.”  The PPAC also opposed the proposed new US$440 fee for requesting Director review of a PTAB decision, noting that “[ d]irector review should be encouraged to ensure that all PTAB decisions are consistent,” and that imposing a fee “may adversely affect individual inventors and small company applicants.”

Will These Fees Change Applicant Behavior?

Many of the new fees and significantly higher fees are intended to change applicant behavior, but will they do so in a manner that promotes the grant of reliable patent rights and supports innovation and investment in new technologies?

uspto assignment example

Courtenay C. Brinckerhoff

Related insights, uspto releases guidance on rule 132 declarations, time has run out for china’s 15-day mailing rule, testifying on the patent eligibility restoration act.

Which Significant USPTO Fee Increases Might We See in 2025?

Foley & Lardner LLP

If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April 2023, publishing its initial proposed fee schedule and supporting information for consideration by the Patent Public Advisory Committee (PPAC). The PPAC’s feedback on the proposed fee changes may provide insight as to which new fees are likely to be implemented and which may be shelved.

The USPTO Fee-Setting Process

The USPTO fee-setting process is a multi-step process that requires input from the PPAC, a public hearing, and a public notice and comment period. The fee changes that took effect in October 2020 began their journey in August 2018, with a Notice of Proposed Rulemaking (NPRM) issued in July 2019 and the final fees published in August 2020. If the USPTO is going to implement fee adjustments in January 2025, it is leaving much less time for consideration of public comments on any NPRM issued in the coming months.

PPAC Comments On Proposed Fee Adjustments

I summarized the most significant proposed fee adjustments in this article — the full proposed fee schedule and justifications are available on the USPTO’s  Fee-Setting web page . Here, I review the PPAC’s comments on the proposed adjustments as stated in the PPAC Fee Setting Report — which increases did PPAC support and which did it disagree with?

(Any fees noted below are at the Large Entity rate)

Mixed Support for Across the Board Fee Increases

The PPAC supported the proposed 5% across-the-board fee increase justified as an inflation adjustment, but opposed the second 5% across-the-board fee increase “designed to front load fees in order to reduce the reliance on maintenance fee renewals.” The PPAC found that would place “an undue burden on individual inventors and small businesses.” 

The PPAC also did not support the significantly increased fees for design patent applications and suggested the USPTO instead consider seeking legislative changes that would impose maintenance fees for design patents.

Opposed New Assignment Recordation Fees

The PPAC opposed the proposed new fees (US$40/US$60) for assignment recordation, which the USPTO had justified to discourage “frivolous” submissions. The PPAC noted that “ensuring transparency of ownership is key to patent data integrity,” and so does not recommend “a fee that would provide an impediment to keeping assignment data up to date.”

Support for Increased Excess Claim Fees

The PPAC supported the proposed increases in excess claim fees (doubling to US$200 for each claim over 20 and increasing 25% to US$600 for each independent claim over 3), but agreed with public comments that the increased fees should be “spent on examination and/or giving the Examiners additional time to evaluate such cases.”

It would be interesting if the USPTO adopted a fee structure that would provide at least a partial refund of excess claim fees if claims are canceled in response to a restriction requirement. That would permit applicants to benefit from the divisional application protections of 35 USC § 121 without having to pay inordinate excess claim fees for claims that are not examined on the merits.

Support for New Escalating IDS Fees

The PPAC supported the proposed new escalating Information Disclosure Statement (IDS) fees, which would be based on the cumulative number of references cited (>50 items: US$200; >100 items: US$300; >200 items: US$300), but suggested “the additional money should go towards allowing Examiner’s [sic] more time to consider the additional references.”

With regard to the IDS burden, the PPAC also stated:

[I]f Congress would reform inequitable conduct rules, this by itself may largely affect applicant behavior. With current inequitable conduct case law, there is undue pressure on practitioners to cite every possible reference or risk the practitioners right to practice or the enforceability of the case. The PPAC recommends a legislative proposal to change this pressure.

I find this comment interesting because it is the USPTO that has not revised the contours of “materiality” set forth in 37 CFR § 1.56 since the Federal Circuit adopted a “but for” standard for inequitable conduct in 2011 . The USPTO’s own rule and guidance require disclosure of more information than current inequitable conduct case law .

Opposed New Escalating Terminal Disclaimer Fees

The PPAC opposed the proposed new escalating Terminal Disclaimer fees, which would increase from US$200 to as much as US$1,400 depending on when the Terminal Disclaimer is filed. The PPAC noted that the proposal would “place an unfair burden to filers with limited resources” who would face “pressure…to give up patent term in exchange for a less expensive more compact prosecution while those with more resources can wait to see if they need to file a terminal disclaimer.”

Conditional Support for New After-Final Consideration Program Fee

The PPAC opposed the proposed US$500 fee for the after-final consideration program unless applicants are guaranteed an examiner interview, or unless the fee is only collected if an interview is granted.

If the USPTO adopts this approach, it should implement safeguards requiring a meaningful interview. In my experience, some examiners conduct two-minute AFCP “interviews” that only advise the applicant that the proposed amendments are being denied entry under the program because they require a new search or more than the allotted time to consider. 

Support for Revised RCE Fee Structure

The PPAC supported the revised fee structure for Requests for Continued Examination (RCEs), with a new higher tier for third and subsequent RCEs (1st RCE: US$1,500; 2nd RCE: US$2,500; 3rd RCE: US$3,600).

Before the USPTO adopts this new structure, it should consider the impact of its IDS rules on RCE filings. For example, the rule that permits filing of an IDS after a final Office Action or Notice of Allowance only applies to IDSs filed to submit items cited by a “ foreign patent office in a counterpart foreign application” or items not previously known to any individual encompassed by the duty of disclosure. It does not apply to IDSs filed to submit items recently cited in a co-pending U.S. application, even if the co-pending U.S. application is a parent or child of the application at issue. To obtain consideration of such an IDS after a final Office Action or Notice of Allowance requires an RCE.

Mixed Support for New Continuing Application Fees

The PPAC opposed the proposed new fee for filing a continuing application between three and seven years after the initial application but supported the proposed new US$3,000 fee for filing a continuing application after seven years or more.

If the USPTO adopts this surcharge, divisional applications should be excluded. Imposing an additional fee for filing a divisional application could be inconsistent with 35 USC § 121, which offers protection to divisional applications filed any time before issuance of the application in which a Restriction Requirement was made.

Conditional Support for Increased Patent Term Adjustment Reconsideration Fee

The PPAC supported the proposed increase in the fee for requesting reconsideration of a patent term adjustment (PTA) award from US$210 to US$300, but only if the USPTO did not make an error in its PTA calculation. I agree with the PPAC’s comment that “[i]f the USPTO made the adjustment mistake, then the applicant shouldn’t have to pay.”

Qualified Support for Increased Patent Term Extension Application Fee

The PPAC supported increasing the fee for an application for FDA review-based patent term extension (PTE), but suggested the USPTO reconsider the magnitude of the increase (from US$1,180 to US$6,700) given its potential impact on “start-up companies [who] may be resource constrained.”

Mixed Support for PTAB Trial Fees

The PPAC supported the increased petition fees for PTAB trials, but opposed proposed fixed fees for exceeding prescribed page limits because they would favor “well-resourced petitioners.”  The PPAC also opposed the proposed new US$440 fee for requesting Director review of a PTAB decision, noting that “[ d]irector review should be encouraged to ensure that all PTAB decisions are consistent,” and that imposing a fee “may adversely affect individual inventors and small company applicants.”

Will These Fees Change Applicant Behavior?

Many of the new fees and significantly higher fees are intended to change applicant behavior, but will they do so in a manner that promotes the grant of reliable patent rights and supports innovation and investment in new technologies?

[ View source .]

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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  1. USPTO Community College Fall 2023 Patent eligibility duration of protection

  2. USPTO Community College Fall 2023 PATENT SYSTEM OVERVIEW

  3. USPTO Community College Fall 2023 UNDERSTANDING THE BASICS OF IP

  4. USPTO Community College Fall 2023 TRADEMARK BASICS FUNDAMENTALS

  5. USPTO Community College Fall 2023 TRADEMARK BASICS FILING REGISTERING

  6. USPTO Community College Fall 2023 BENEFITS OF FEDERAL REGISTRATION Trademarks

COMMENTS

  1. Sample Patent Assignments

    6210 Stoneridge Mall Road, Ste 240. Pleasanton, CA 94588 ASSIGNMENT OF RIGHTS OF PATENT: An assignment is intended for use for a patent that has been issued by the U.S. Patent and Trademark Office (USPTO). ASSIGNMENT OF RIGHTS TO APPLICATION: This type of assignment is for the rights to an invention for which a patent application has been filed.

  2. Patents Assignments: Change & search ownership

    Home Patents 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.

  3. PDF ASSIGNMENT OF PATENT

    Is transferring ownership of U.S. Patent No.: /Application No.: For: (Title of Invention) Whereas, (Name of Assignee) of (Address) Hereafter referred to as said assignee is desirous of acquiring the entire right and interest in said patent/application.

  4. Trademark assignments: Transferring ownership or changing your name

    Here are examples of common reasons: I've sold my business and need to transfer ownership of the trademark. This is a transfer of ownership called an assignment. I got married just after I filed my application and my last name changed. This is a name change of the owner.

  5. PDF Assignment Center Training Guide Patents

    Assignment Center Training Guide Patents January 2024 This document section provides the steps to create a new USPTO.gov account and access the Assignment Center USPTO.gov Account Creation Steps; Account Creation Navigate to URL, https://assignmentcenter.uspto.gov to access the Assignment Center landing page (public facing).

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

    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").

  7. Assignment Center

    Sample of a Patent Assignment (PDF) Sample of a Trademark Assignment (PDF) Resources. Upload a Document (PDF) Trademark Assignment Fees (Fee codes: 8521 and 8522) Manual of Patent Examining Procedure (MPEP) Trademark Manual of Examining Procedures (TMEP) Assignment Search ; Tutorial. Assignment Center Patent Training Guide (PDF)

  8. 302-Recording of Assignment Documents

    Section 302 (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office.

  9. United States Patent and Trademark Office

    Enter name or number This searchable database contains all recorded Patent Assignment information from August 1980 to the present. When the USPTO receives relevant information for its assignment database, the USPTO puts the information in the public record and does not verify the validity of the information.

  10. Forms for patent applications

    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.

  11. USPTO Trademark Assignment: Everything You Need To Know

    USPTO trademark assignment is the process of assigning a trademark you have registered with the U.S. Patent and Trademark Office to a third party. A trademark is a symbol, word, device, phrase, or combined elements that represent your business or brand. When this mark is associated with the quality of your services, it is a valuable form of ...

  12. Unauthorized Practice of Law by the USPTO

    Here is USPTO's sample of a trademark assignment (archived here ). It is no easy trick listing all of the things that might be wrong with either of these recommended assignments, depending on the geographical location involved and the facts of the situation. But here are a few:

  13. IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and

    For example, an assignment of a registered trademark must be recorded with the US Patent & Trademark Office ("USPTO"). This is done electronically. The assignment must be uploaded along with the proper recordation form and applicable fee.

  14. Assignment Center

    EPAS is the Electronic Patent Assignment System that allows users to submit patent reassignment requests online. EPAS is being replaced by the new Assignment Center, which will offer more features and functionality for patent and trademark assignments. Users can access EPAS until February 5, 2021, when the transition to Assignment Center will be completed.

  15. Assignment Center tutorial videos

    Patents Resubmitting a patent request in Assignment Center Published on Jan 29, 2024 Learn how to resubmit a patent request in Assignment Center. Assignment Center is a publicly available USPTO system for recording assignments and other documents relating to interests in patents and trademarks.

  16. Corrective Assignment: Everything You Need to Know

    For some examples, refer to 37 CFR 1.76 (c) Correction of ADS, PCT Rule 91.1 Rectification of Obvious Mistakes, 37 CFR 1.121 (b) Amendments to Specification, 37 CFR 1.323 Certificate of Correction of Applicant's Mistake, and 37 CFR 3.34 Correction of Cover Sheet Errors. Usually, these processes are sufficient.

  17. PDF ASSIGNMENT OF TRADEMARK

    Trademark Assignment, the Assignor hereby sells, transfers and assigns to the Assignee, its successors and assigns, the Assignor's entire right, title and interest in and to the Trademark application and/or registrations, together with (i) the benefit of any use of the Trademark by the Assignor (ii) the goodwill of the business relations to the ...

  18. UCC Assignment and Federal USPTO Assignment: One Word, Two Meanings

    A security interest in IP is another example of a type of lien filing found on the USPTO assignments database but is not, by definition, an assignment. Adding to the confusion, IP filers can choose to file using the option of 'Other' and can enter a conveyance type not already provided as a standard selection, which means that almost ...

  19. USPTO Assignments on the Web

    For pending or abandoned applications please consult USPTO staff. Enter the Data: Online Help Reel / Frame Number : / ... The database contains all recorded Patent Assignment information from August 1980 to February 20, 2024 . If you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350. v.2.6 ...

  20. Provisional Application for Patent

    Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.

  21. PDF Assignment Center Training Guide Patents

    Steps; Account Creation Navigate to URL, https://assignmentcenter.uspto.gov to access the Assignment Center landing page (public facing). On top of page far right, click the link, 'Create an account'. On the, 'Create a USPTO.gov account' required input boxes, as indicated with an "*"; page. Please provide information for all 4.

  22. USPTO issues inventorship guidance and examples for AI-assisted

    The full text of the inventorship guidance for AI-assisted inventions and the corresponding examples are available on our AI-related resources webpage. The USPTO will accept public comments on the inventorship guidance and the examples until May 13, 2024. Please see the Federal Register Notice for instructions on submitting comments.

  23. Assignment Center

    info. System Alert: System Maintenance. On Saturday, February 24, 2024 The fee payment process will not be available for Trademark order processing from 6 p.m. till 10 p.m. EST.

  24. Inventorship Guidance for AI-Assisted Inventions

    In conjunction with issuing this guidance, the USPTO is issuing examples to provide assistance to the public and examiners on the application of this guidance in specific situations. ... The original applicant is presumed to be the owner of the patent application unless there is an assignment.

  25. Which Significant USPTO Fee Increases Might We See in 2025?

    Opposed New Assignment Recordation Fees The PPAC opposed the proposed new fees (US$40/US$60) for assignment recordation, which the USPTO had justified to discourage "frivolous" submissions. The PPAC noted that "ensuring transparency of ownership is key to patent data integrity," and so does not recommend "a fee that would provide an ...

  26. Which Significant USPTO Fee Increases Might We See in 2025?

    If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this ...