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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.

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  • 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.

equitable assignment patent

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!

equitable assignment patent

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

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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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Patent Assignment in India

January 17, 2023 | Corporate & Commercial Law Patents are intellectual properties that provide exclusive rights to the owner for a specific invention, but which can be transferred to someone else through the process of patent assignment that must be duly executed as per legal norms.

equitable assignment patent

What is a Patent?

Need for patents, what is patent assignment, types of patent assignments.

  • Legal Assignment: A legal assignment is where the assignee may enter their name as the patent owner in the government records. A patent created through a deed can only be assigned through a deed. Once the assignor has completed the process, the assignee gains all the rights of the patent.
  • Equitable Assignment: Any form or agreement including a letter in which the proprietor agrees to share a certain share of the patent with another individual is referred to as the equitable assignment of the patent. While the assignee cannot get their name entered in the register as one of the owners, they can notify the register of their interest in the patent.
  • Mortgages: Mortgages are assignments where the owner provides partial or complete right to an assignee in exchange for a certain amount of money. Once the amount is repaid, the owner gains back all rights to the mortgaged property. The lender cannot register themselves as the proprietor in the records, but get their name entered in the register as mortgagee.

Requirements for Patent Assignment

  • As mentioned before, patent assignment can only be considered a valid assignment if it has been drafted in writing and duly executed through the legal process.
  • The written draft must define all the rights and obligations of both the parties with respect to the patent.
  • The assignee shall apply in writing to the Controller of Patents to enter their name into the register of patents. Once the Controller of Patents is satisfied that the assignee has a genuine interest in the patent, they shall enter the details of assignment into their register.
  • Form-16 must be duly filled and filed before the Controller General of Patents, Designs and Trademarks. It records the necessary details that must be mentioned for assignment, such as name of the applicant, details of all parties involved, description of the draft through which assignment is being sought.
  • Two copies of the deed must be attached to the application as well.
  • Fees for the process varies for different individuals and entities and is different when applied physically and through the Internet. A detailed breakdown of the official fees for the process is mentioned in the First Schedule of the Patent Act.

Contents of Patent Assignment Agreement

  • Details of the parties to the agreement, i.e., the assignor and the assignee.
  • Description of the patent – registration number, date of registration, type of patent, etc.
  • Consideration in lieu of assignment.
  • Rights and obligations of all parties involved.
  • An undertaking of the assignor that they have not assigned or otherwise dealt with patent to create a third-party interest in the patent.
  • Termination clause.
  • Dispute resolution clauses.
  • Indemnity clause in favor of the assignee.

Difference between Assignment and Licenses

Amendments and termination.

  • Amending Patent Assignment Agreement
  • Termination of Patent Assignment Agreement

We can assist you with Patent Assignment Agreement concerns. You can get in touch with us by submitting a query below.

  • Definition of Resolution plan will now include provisions for corporate restructuring: The amendment act has inserted an explanation in the definition of resolution plan to clarify that a resolution plan that proposes the insolvency resolution of a corporate debtor may include the provisions for corporate restructuring, including by way of merger, amalgamation and demerger.
  • NCLT will have to record reasons for delay in discarding an application for initiation of CIRP: As per the Code, the NCLT must dispose of an application for initiation of CIRP within a period of 14 days from the receipt of application. However, there have been cases when the NCLT has taken more than 14 days to make a decision on the application. Therefore, to ensure speedy disposal and value maximization of the corporate debtor's assets, a proviso has been added which requires that NCLT to record its reasons in writing in case an application is not disposed within 14 days.
  • Corporate Insolvency Resolution Process to be concluded within 330 days: Earlier, the IBC demanded completion of CIRP within 180 days including a one-time extension of 90 days. However, many a times the Courts have allowed removal of certain periods, for instance, time consumed in litigation, from the compulsory completion period resulting in a lot of unresolved CIRPs well beyond the time duration allowed in the IBC. The Amendment act makes it compulsory for a CIRP to be completed within 330 days including any extension of time granted and time taken under legal proceedings. It further states that any pending CIRPs that have been going on for over 330 days should be completed within 90 days from the date of commencement of the Amendment Act.
  • Voting by authorised representative representing a class of financial creditors: To avoid any confusion and facilitate decision making in the Committee of Creditors, especially in cases where financial creditors are a large group, the Amendment Act provides that an authorized representative representing a class of financial creditors shall vote on behalf of all the financial creditors he/she represents in accordance with the decision approved by more than 50% of such financial creditors. This principle however would not be applicable in case of voting for withdrawal of CIRP.
  • Amount payable to functional creditors and disagreeing financial creditors: The Amendment Act provides that payment of debts of operational creditors shall be the higher of
  • the amount to be paid to these creditors at the time of liquidation of the corporate debtor u/s 53 or
  • the amount that would have been paid to such creditors, if the amount to be distributed under the resolution plan had been distributed in accordance of priority as mentioned u/s 53 (1)
  • NCLT has not approved or rejected a resolution plan
  • an appeal is pending at the Supreme Court or at the NCLAT (National Company Law Appellate Tribunal)
  • a lawsuit has been launched in a court challenging the decision of NCLT in relation to a resolution plan
  • Committee of Creditors (COC) to contemplate way of distribution submitted in the resolution plan: Besides the current need of approval of resolution plan after keeping in mind the practicality and acceptability of the resolution plan, the amendment act requires that the CoC consider the manner of distribution proposed in the resolution plan by taking into account the order of priority amongst creditors, as prescribed u/s 53 (1) relating to liquidation waterfall, including the priority and value of security interest of a secured creditor.
  • NCLT approved resolution plan will be binding on the Central Government, State Government or any local authority to whom corporate debtor owes a statutory debt: As per the Code, the approved resolution plan was only binding on the corporate debtor and its employees, creditors, members, guarantors and other stakeholders included in the resolution plan resulting in instances where the Government used to follow up for the balance dues after the said approval of resolution plan. The Amendment Act has now modified Section 31(1) to illuminate that any NCLT approved resolution plan will be binding on the Central Government, State Government and any local authority to whom a corporate debtor owes a debt in respect of payment of dues arising under any law.
  • Liquidation after setting up the Committee of Creditors (COC): The Amendment Act simplifies by way of an explanation, u/s 33(2) which covers liquidation, that the COC may decide to liquidate the corporate debtor any time after the setting-up of the COC until the confirmation of the resolution plan, including at any time before the development of the information memorandum. This change is pertinent as there have been cases where NCLTs have demanded that a liquidation order may be passed only after failure of the CIRP even though an early liquidation would have resulted in value maximization.

equitable assignment patent

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Assignments overview and pitfalls to beware!

03 December 2012

Ian Starr

Many patents will see a change in ownership at some stage in their lives. Assignments are commonplace and occur for a variety of reasons; for example, in the context of a business sale where a buyer purchases all of the assets (including intellectual property assets) of a business from the vendor. Another is in the context of intra-group reorganisations.

Assignments can also occur as part of settlement of a dispute. This article outlines some of the pitfalls of which you should be aware when assigning patents; many of which can be averted by careful drafting of the assignment agreement.

Unless the assignment is intra-group, there will usually be some distance between what the assignee wants (typically, a variety of representations, warranties and indemnities in respect of the assigned rights) and what the assignor is prepared to give. This is a commercial decision and hence no two negotiated patent assignments will be identical.

Consideration

Under English law, to be a valid contract there must be consideration which is either money or money's worth. This is often overlooked but a key point required for the assignment agreement to be legally binding. Whilst the acceptance of mutual obligations may suffice, it is simplest to have a sum of money (even if only for £1). An alternative is to execute the assignment as a deed, though there are specific formalities which must be followed for the agreement to be a deed. Of course, if the parties agree to nominal consideration (eg, £1), it is important that this small amount is actually paid to the assignor.

An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement. Where one or both of the parties is an individual in their personal capacity or a foreign entity, special 'testimonial' provisions are required; for example the signature to the assignment may need to be witnessed.

The assignment

English law distinguishes two types of assignment: legal and equitable. To assign the legal interest in something means that you have assigned simply the title to that property and not the right to exercise the rights inherent in it. This is the equitable (beneficial) interest and if this is not also assigned with the legal title, this can result in a split in ownership. Unless the parties specifically agree otherwise, legal and beneficial ownership should always be assigned together. It is possible to have co-assignees (ie, co-owners) but the terms of the co-ownership will need to be carefully considered.

It is possible to assign the right to bring proceedings for past infringements in the UK, but not in some other jurisdictions. Where non-UK rights are involved, local advice may be required as to whether such an assignment would be enforceable as against a prior infringer. This potential uncertainty makes a robust further assurance clause even more desirable (see below), to ensure the assignor's co-operation after completion of the assignment.

The assignee will also typically argue for (and the assignor will typically resist) a transfer with 'full title guarantee', as this implies as a matter of law certain covenants: that the assignor is entitled to sell the property; that the assignor will do all it reasonably can, at its own expense, to vest title to the property in the assignee; and that the property is free from various third party rights.

In terms of European patents (EP), it is important to remember that ownership of an EP application is determined under by the inventor/applicant's local law, rather than under European patent law. This means that a formal, written assignment agreement should be executed to ensure that the applicant is entitled to ownership of the patent application, for example in cases where the work undertaken was done by a consultant or where local law dictates that the owner is the inventor(s). An assignment should include assignment of the right to claim priority, as well as the right to the invention and any patent applications. This need to obtain an effective assignment of the application (and right to claim priority) is particularly important where a priority application has been made in the name of the inventor. If such an assignment is not executed before applications which claim priority from earlier cases (for example, PCT applications) are filed, the right to ownership and/or the right to claim priority may be lost.

Don't forget tax

Currently, there is no stamp duty payable on the assignment of intellectual property in the UK. However, particularly for assignments which include foreign intellectual property rights, there can be considerable tax implications in transferring ownership of intellectual property rights in some countries and it is always prudent to check that the transfer will not result in excessive tax liabilities for you.

Update the register

Registered rights need to be updated at the patent offices. You will need to decide who pays for this: in the case of one patent, it is a simple process, however in the case of a whole portfolio, the costs can be considerable. Remember, if you ever need to take any action on a patent you own, you need to ensure you are the registered owner of that right at the applicable office.

In the UK, assignments can be registered but there is no statutory requirement to do so. In the case of international assignments, local offices may require recordal of the assignment. In any event, it is desirable for an assignee to ensure that the transaction is recorded. Section 68 of the UK Patents Act provides that an assignee who does not register the assignment within six months runs the risk of not being able to claim costs or expenses in infringement proceedings for an infringement that occurred before registration of the assignment, although recent case-law has reduced this risk somewhat.

Further assurance

The assignee will typically take charge of recordals to the Patents Offices; however they will often need the assignor's help in doing so. A 'further assurance' clause is a key element of the assignment from an assignee's point of view both for this purpose and for assisting in the defence and enforcement of patents or applications for registration. On the other hand, the assignor will typically seek to qualify its further assurance covenant by limiting it to what the assignee may reasonably require, and that anything done should be at the assignee's expense. An assignor should also require that recordals are done promptly to minimise their future correspondence from patent offices.

International transactions

In transactions which involve the transfer of patents in various countries, the parties can execute a global assignment which covers all the patents being transferred, or there can be separate assignments for each country. The former, global assignment, is usually preferred however this will frequently need to be supplemented by further confirmatory assignments in forms prescribed by the relevant international patent registries. As noted above, the preparation and execution of such assignments can be time-consuming and costly, hence the need to decide in advance who bears the cost of such recordals, and the assignee should insist on a further assurance provision.

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Equitable Assignment: Everything You Need to Know

An equitable assignment is one that does not fulfill the statutory criteria for a legal assignment, but is binding and upheld by the courts in the interest of equability, justice, and fairness. 3 min read updated on February 01, 2023

An equitable assignment is one that does not fulfill the statutory criteria for a legal assignment, but is binding and upheld by the courts in the interest of equability, justice, and fairness.

Equitable Assignment

An equitable assignment may not appear to be self-evident by the law's standard, but it presents the assignee with a title that is protected and recognized in equity. It's based on the essence of a declaration of trust; specifically, essential fairness and natural justice. As long as there is valuable consideration involved, it does not matter if a formal agreement is signed. There needs to be some sort of intent displayed from one party to assign and the other party to receive.

The evaluation of a righteous equitable assignment is completed by determining if a debtor would rationally pay the debt to another party alleging to be the assignee. Equitable assignments can be created by:

  • The assignor informing the assignee that they transferred a right to them
  • The assignor instructing the other party to release their obligation from the assignee and place it instead on the assignor

The only part of an agreement that can be assigned is the benefit. Generally speaking, there is no prerequisite for the written notice to be received or given. The significant characteristic that separates an equitable assignment from a legal assignment is that most of the time, an equitable assignee may not take action against a third party. Instead, it must rely on the guidelines governing equitable assignments. In other words, the equitable assignee must team up with the assignor to take action.

The Doctrine of Equitable Assignment in Wisconsin

In Dow Family LLC v. PHH Mortgage Corp ., the Wisconsin Supreme Court issued in favor of the doctrine of equitable assignment. The case was similar to many other foreclosure cases, except this one came with a twist. Essentially, Dow Family LLC purchased a property and the property owner insisted the mortgage on the property had been paid off. However, in actuality, it wasn't. 

Prior to the sale, the mortgage on the property was with PHH Mortgage Corp. When PHH went to foreclose on the mortgage, Dow Family LLC contested it. There was one specific rebuttal that caught the attention of the Wisconsin Supreme Court. The official mortgage on record was with MERS, an appointee for the original lender, U.S. Bank.

Dow argued that PHH couldn't foreclose on the property because the true owner was MERS. Essentially, Dow was stating that the mortgage was never assigned to PHH. Based on this argument, PHH utilized the doctrine of equitable assignment.

Based on a case from 1859, Croft v. Bunster, the court determined that the security for a note is equitably assigned when the note is assigned without a need for an independent, written assignment. Additionally, Dow contended that the statute of frauds prohibits the utilization of the doctrine, mainly because it claimed every assignment on a property must be formally recorded.

During the case, Dow argued that the MERS system, which stored the data regarding the mortgage, was fundamentally flawed. According to the court, the statute of frauds was satisfied because the equitable assignment was in accordance with the operation of law. Most importantly, the court avoided all consideration regarding the MERS system, concluding it was not significant in their decision. 

The outcome was a major win for lenders, as they were relying on the doctrine specifically for these types of circumstances.

Most experts agree that this outcome makes sense in the current mortgage-lending environment. This is due to the fact that it is still quite common for mortgages to be bundled up into mortgage-backed securities and sold on the secondary market.

Many economists claim that by not requiring mortgages to be recorded each time a transfer is completed, the loans are more easily marketed to investors. Additionally, debtors know who their current mortgage company is because the new lender must always notify the current borrower in order to receive payment. It was determined that recording and documenting the mortgage merely provides a signal to the rest of the world that the property owner secures a debt.

If you need help with an equitable assignment, you can  post your job  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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India: Ownership And Forms Of Transfer Of Patents Rights In India- A Primer

Introduction.

Once a patent for an invention is granted, it is important to consider (1) if the patentee/proprietor of the patent is going to manufacture, market, sell and/or distribute the invention, (2) whether the patentee/proprietor of the patent is going to sell all rights in his/her invention to someone else for a sum of money, or (3) if the patentee/proprietor of the patent will license someone else to produce and bring the patented product to market under specified terms by the Patentee that must be met for the licensee. This article discusses how one may effect, use or monetize the patented invention.

A patent is considered as a transferrable property that can be transferred from the original patentee to any other person by assignment or by operation of law. A patent can be licensed or assigned only by the owner of the patent. In case of co-owners or joint-owners, a co-owner can assign or license the patent only upon consent of the other owner(s).

Requirements for creation of any interest in a patent:

Section 68 of the Indian Patents Act 1970 provides for the mortgage of, license or creation of any interest in the patent.

" Assignments, etc., not to be valid unless in writing and duly executed. 1 —An assignment of a patent or of a share in a patent, a mortgage, license or the creation of any other interest in a patent shall not be valid unless the same were in writing and the agreement between the parties concerned is reduced to the form of a document embodying all the terms and conditions governing their rights and obligations and duly executed "

Requirements 2 :

  • The assignment, mortgage or license should be reduced to writing in a document embodying all the terms and conditions governing the rights and obligations between the parties;
  • An application for registration of such document should be filed in the prescribed manner in Form-16 within the time prescribed under section 68. The document when registered will have effect from the date of execution.

Forms/Nature of Transfer of Patent Rights:

Grant of a Patent confers to a patentee the right to prevent others from making, using, exercising or selling the invention without his permission. The following are the ways in which a patentee can deal with the patent:

  • Transmission of patent by operation of law

1. Assignment

The term 'assignment' is not defined in the Indian Patents Act. Assignment is an act by which the patentee assigns whole or part of his patent rights to the assignee who acquires the right to prevent others from making, using, exercising or vending the invention. There are three kinds of assignments

  • Legal Assignment
  • Equitable Assignment

Legal Assignment : An assignment (or an agreement to assign) of an existing patent is a legal assignment, where the assignee may enter his name as the patent owner. A patent which is created by deed can only be assigned by a deed. A legal assignee entitled as the proprietor of the patent acquires all rights thereof.

Equitable Assignments : Any agreement including a letter in which the patentee agrees to give a certain defined share of the patent to another person is an equitable assignment of the patent. However an assignee in such a case cannot have his name entered in the register as the proprietor of patent. But the assignee may have notice of his interest in the patent entered in the register.

Mortgages: A mortgage is an agreement in which the patent rights are wholly or partly transferred to assignee in return for a sum of money. Once the assignor repays the sum to the assignee, the patent rights are restored to assignor/patentee. The person in whose favor a mortgage is made is not entitled to have his name entered in the register as the proprietor, but he can get his name entered in the register as mortgagee.

2. Licenses:

The Patents Act allows a patentee to grant a License by the way of agreement under section 70 of the Act. A patentee by the way of granting a license may permit a licensee to make, use, or exercise the invention. A license granted is not valid unless it is in writing. The license is contract signed by the licensor and the licensee in writing and the terms agreed upon by them including the payment of royalties at a rate mentioned for all articles made under the patent. Licenses are of the following types,

  • Voluntary License
  • Statutory License(such as compulsory License)
  • Exclusive/Limited License
  • Express/Implied License

Voluntary licenses:

It is the license given to any other person to make, use and sell the patented article as agreed upon the terms of license in writing. Since it is a voluntary license, the Controller and the Central government do not have any role to play. 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 licenses:

Statutory licenses are granted by central government by empowering a third party to make/use the patented article without the consent of the patent holder in view of public interest. Classic example of such statutory licenses is compulsory licenses. Compulsory licenses are generally defined as "authorizations permitting a third party to make, use, or sell a patented invention without the patent owner's consent 3 .

Compulsory Licenses(CLs)

Though CLs works against the interest of the patent holder, it is granted under certain provided conditions under the Patents Act. Under section 84 of the Indian Patents Act 1970, any person can make an application for grant of a compulsory license for a patent after three years, from the date of grant of that patent, on any of the following grounds:

(a) The reasonable requirements of the public with respect to the patented invention have not been satisfied; (b) The patented invention is not available to the public at a reasonably affordable price. (c) The patented invention has not worked in the territory of India.

Under Section 92 A of the Act, CLs can also be granted for exporting pharmaceutical product(s) to any country incapable of manufacturing pharmaceutical products for the benefit of the people in that country, further when working of the patent required another related patent under Section 88 of the Act or on notification by the Central Government, the controller can grant a license to an interested person. The Central or State Government can use the invention or its process for its own purpose either with or without royalty.

Exclusive Licenses and Limited Licenses:

Depending upon the degree and extent of rights conferred on the licensee, a license may be Exclusive or Limited License. An exclusive license excludes all other persons including the patentee from the right to use the invention. Any one or more rights of the patented invention can be conferred from the bundle of rights owned by the patentee. The rights may be divided and assigned, restrained entirely or in part. In a limited license, the limitation may arise as to persons, time, place, manufacture, use or sale.

Express and Implied Licenses:

An express license is one in which the permission to use the patent is given in express terms. Such a license is not valid unless it is in writing in a document embodying the terms and conditions. In case of implied license though the permission is not given in express terms, it is implied from the circumstances. For example: where a person buys a patented article, either within jurisdiction or abroad either directly from the patentee or his licensees, there is an implied license in any way and to resell it.

3. Transmission of Patent by Operation of law

When a patentee dies, his interest in the patent passes to his legal representative; in case of dissolution or winding up of a company or bankruptcy transmission of patent by operation of law occurs.

Conclusion:

An assignment is the transfer of all the proprietary rights by the patentee to the assignee while the license is the right granted to work the invention by withholding the proprietary rights with the patentee 4 . An assignee can in turn reassign his rights to third parties while the licensee cannot change the title or cannot reassign his rights to the third person. An assignee is assigned with all the rights that the patent owner can enjoy while the licensee cannot enjoy such rights. Also an assignee has the right to sue the infringer while the licensee is not empowered with the rights to sue any party for the infringement of the patent in his name. Having known the difference between assignment and license from the aforesaid, the patentee can decide the best possible way of commercializing his/her invention.

1. https://indiankanoon.org/doc/1027357/

2. Patent Law, Fourth edition , P.Narayanan, Eastern Law House, Pg: No:268

3. F.M. SCHERER & JAYASHREE WATAL, POST-TRIPS OPTIONS FOR ACCESS TO PATENTED MEDICINES IN DEVELOPING COUNTRIES 13 (Comm'n on Macroeconomics & Health, Working Paper No. WG4:1, 2001), available at http://www.cmhealth.org/docs/-wg4_paper1.pdf (last visited Dec. 16, 2013 ).

4. IPR, Biosafety and Bioethics, Deepa Goel, Shomini Parashar, Pg Nos 88-89

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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equitable assignment patent

America's leading patent law source

Divided Patent Ownership, Equitable Title, and Failed Assignments

by Dennis Crouch

Gellman v. Telular Corp . (Fed. Cir. 2011)

Issues of standing continue to arise in patent infringement litigation. Well established precedent requires that plaintiffs suing for infringement collectively hold "all substantial rights" in the patent being asserted.  Crown Die & Tool Co. v. Nye Tool & Mach. Works , 261 U.S. 24 (1923). Thus, if two entities jointly own a patent, standing would only be proper if both entities jointly filed the infringement action. A lesser explored area of the law relevant to this case involves the requirements to prove ownership and the potential burden-shifting effect of assignment recordation.

Gellman's lawsuit involves U.S. Patent No. 6,075,451 which lists Mayer Lebowitz and Jim Seivert as co-inventors. (Seivert's name is misspelled as Sievert on the patent document). Both inventors are now dead. Lebowitz's rights to the patent are being held in trust and the trustee has argued that Seivert's rights to the patent were previously assigned to Lebowitz as well. Supporting that assertion is an assignment from Seivert to Lebowitz that was recorded in the USPTO assignment database in 1998. Unfortunately for the Lebowitz Trust, the assignment document filed with the PTO had a blank signature line and the Trust has been unable to produce any evidence that the assignment document was ever signed.

Three important consequences flow from a conclusion that Seivert never transferred his interest to Lebowitz. First, Seivert's heirs,  beneficiaries, or their assigns now share ownership in the patent. In this case, it appears that Seivert did not designate a beneficiary and therefore ownership is split amongst his heirs according to state intestate law. Second, the Lebowitz trust has no standing to sue because it does not hold substantially all interests in the patent. Third, absent prior agreement, each co-owner of a patent has the full right to offer a license to the defendants to practice the invention, normally without any accounting or compensation to the other patent owners. Here, in a filing with the district court the defendants have asserted that they have each obtained a patent license and release from the Seivert estate.

The Lebowitz Trust (Gellman) made two additional arguments in an attempt to prove that rights had been transferred: (1) the consulting contract and (2) the hired-to-invent doctrine.

The consulting agreement between Seivert and Lebowitz included a clause that any “ideas, discoveries, [or] inventions” by Seivert “shall be and remain the exclusive property” of Lebowitz. And, in addition, Seivert agreed “to execute any and all assignments” necessary.  The agreement had a major problem in that the only record available was unsigned.  In examining the contract, the Federal Circuit additionally found that the agreement was inadequate to prove that a transfer occurred even if it had been properly executed. In particular, the court indicated that the future promise to execute an assignment suggested that no transfer had previously occurred.  The court wrote (I would argue incorrectly) that “[o]therwise, the 'execute any and all assignments' language in the contract is surplusage without relevant meaning.”

In reading the promise to assign, the court agreed that it may create an equitable claim to title in favor of Lebowitz.  However, the law is clear that equitable title is insufficient to confer standing.

Of note, the court's interpretation of the contract appears to be based entirely upon Federal Circuit law rather than state law.

Hired to Invent : Normally patent rights are held by the inventors until those rights are assigned in a written agreement.  This is true even when the inventor is an employee and the invention was created within the scope of the employment. There are a few limited exceptions to this practice that transfer patent rights through operation of law rather than through written assignment. One historic exception is the “hired-to-invent” doctrine that some courts have used to transfer ownership of patent rights to an employer when the employee is hired to make a particular invention. See, e.g., Solomons v. United States , 137 U.S. 342, 346 (1890). This hired to invent doctrine cannot help the Lebowitz Trust here because the doctrine has been interpreted to create “creates only an obligation for the employee to assign to his employer.”

Affirmed. Case Dismissed for Lack of Standing.

Next Steps : If the Lebowitz Trust wants to pursue the lawsuit, it will need to first force transfer of rights from the Seivert estate and then refile the suit against the accused infringers.

19 thoughts on “ Divided Patent Ownership, Equitable Title, and Failed Assignments ”

Paul, Film Tec was a panel decision. Given the heavy criticism of the case from three Supreme Court justices, I think the Federal Circuit should go en banc to review that decision from two points of view:

1) whether an agreement to presently assign a future invention is a legal assignment of the future invention or whether it creates only an equitable obligation to assign; and

2) to what extent is the interpretation of assignment agreements governed by Federal Law as opposed to State Law.

Obviously, given the criticism of Film Tec by the Supreme Court, that case is in doubt. As all of us must deal in assignments on a very frequent basis, it seems the Federal Circuit needs to promptly consider Film Tec en banc. Undoubtedly, that decision, whatever it is, has the constitutional issues aplenty. The Supreme Court would normally be interested.

“ consistent with the law described ”

Minority views do not describe “law.”

Paul, I presume that California law discussed in the LANDSLIDE article is consistent with the law described by the three justices, Breyer, Ginsburg and Sotomayor in their criticism of the federal circuits Film Tec series of cases which holds that a present assignment of a future invention is a legal assignment.

You might want to consider that filing an unsigned assignment may have some effect on whether a subsequent purchaser is a BFP. At least this should put them on notice of a claim by the “assignee” to an equitable right the title.

Also consider that filing an unsigned assignment may have some effect on whether a subsequent purchaser is a BFP. At least this should put them on notice of a claim by the assignee to an equitable right the title.

for what the LAWYER charged to file the assignment, he had a duty to check for a signature before filing the document. Too late for a malpractice suit, maybe

I’m not 100% familiar with all the facts here. But I believe that it can sometimes be difficult to sue your lawyer for doing what you demanded that they do.

Three Justices have opined that Film Tec got it wrong: See the opinions of Breyer, Ginsburg and Sotomayor. link to law.cornell.edu

In order for there to be a “legal” assignment of a future patent application, there must be an existing invention:

CF, Nicolson Pavement Company v. Jenkins, 81 U.S. 14 Wall. 452 (1871)(assignment of a patent and the invention secured by the patent legally assigns later applications directed to the same invention)

As discussed in the Breyer dissent, the well accepted law prior to Film Tec was that a present assignment of a future invention created only an equitable obligation to assign once the invention is made.

Let me be more clear, Paul: perhaps Stanford’s attorneys believed that the state employee contract law wasn’t favorable to Stanford.

And we all know that ABA LANDSLIDE articles are never wrong…

“,i>Most recently the Fed. Cir. did so with far more serious consequences in Board of Trustees of the Leland Stanford Jr. University v. Roche Molecular Systems, Inc., 583 F.3d 832, 841 (Fed. Cir. 2009).”

You really think that a patent question was not at the heart of that matter Paul? It was at least equal part federal question. Maybe it was not raised by the Stanfod attorneys because they looked into it and saw it was a loser argument.

That ABA LANDSLIDE article seemed to suggest Stanford could have won on CA state contract law.

inexplicably it had not raised by Stanford’s attorneys

Well, there is certainly one obvious explanation (whether it’s true or not, I couldn’t say): the state employee contract law wasn’t favorable to Stanford.

This continued ignoring of state contract law by the Fed. Cir. is ripe for a Sup. Ct. attack by someone. See for example the Jan./Feb. 2011 ABA IPL “LANDSLIDE” magazine article on p. 24 with extensive legal research on inconsistencies and conflicts in Fed. Cir. cases with basic Sup. Ct. principles on the [normal, unless federally essential] utilization of state law versus “federal common law”. Most recently the Fed. Cir. did so with far more serious consequences in Board of Trustees of the Leland Stanford Jr. University v. Roche Molecular Systems, Inc., 583 F.3d 832, 841 (Fed. Cir. 2009). I think Stanford’s attorneys, the Fed. Cir., and/or the Sup. Ct. should have had that case sent back for consideration of the applicable state employee contract law [instead of the Fed. Cir. making up its own contract law], as seemingly required by the fundamental Sup. Ct. Erie v. Tomkins decision, and subsequent Sup. Ct decisions. One Sup. Ct. Justice did note that it should have been considered below, in their June 6, 2011 U.S. Supreme Court decision in that Stanford case, but inexplicably it had not raised by Stanford’s attorneys.

He was a Feynman, and if you Bohr us with your puns again it’ll be Dirac for you.

McCracken, Nothing makes a man so cross as success.

“the assignment document filed with the PTO had a blank signature line”

Don’tcha love how the USPTO will take money for ANYTHING, even when the USPTO does NOTHING? (Think crappy 3-page provisional filed an hour before two guys seeking funding for their start-up meet with potential investors.) For 40 bucks or whatever it cost back then to record an assignment, you’da thunk the USPTO could have checked for a signature. And for what the LAWYER charged to file the assignment, he had a duty to check for a signature before filing the document. Too late for a malpractice suit, maybe, but it’s never too late for the long arm of the OED!

Lebowitz Trust, ? are they mad?

Affidavit form

I’m curieious, are Sievert’s heirs part of his nuclear family?

will probably be decisive here, Lebowitz would have to sue the Seivert estate and all it heirs and obtain an assignment nunc pro tunc to the date of equitable obligation to assign first arose. The defendants in this case should have not equitable rights as a BFP, IMHO, due to the recording of the unsigned assignment in the PTO. That recording put the defendants on notice of the Lebowitz claim of ownership.

Comments are closed.

Supreme Court Limits Patent Assignor Estoppel

In Minerva Surgical, Inc. V. Hologic, Inc. , the Supreme Court limited the equitable doctrine of assignor estoppel that prevents an assignor from subsequently challenging the validity of the patent he or she assigned. The Court outlined three scenarios where assignor estoppel might not apply, and has employers wondering if and how they can better shield their patents from subsequent inventor challenges.

The Backstory

For inventor-assignor estoppel to come into play, an inventor has to assign his or her rights in a patent application or patent and then be in a situation where he or she wants to challenge the validity of the assigned patent. Minerva illustrates one scenario where that may occur: an inventor (Mr. Truckai), having assigned patent rights to his employer, subsequently leaves that position and starts a competing company (Minerva) that eventually is charged with infringement of his assigned patents (U.S. Patent Nos. 6,872,183 and 9,095,348).

Critical to the Court’s decision in Minerva , the patents at issue were granted after the inventor had assigned his rights. It is also interesting that one of the patents stems from a continuation application that was filed and granted after he had left and started the competing company.

  • In August 1998, Truckai and his co-inventors assigned the invention described in U.S. Patent Application No. 09/103,072, the application, and all continuation applications thereof (etc.).
  • After a series of divisional and continuation applications, the application that was granted as U.S. Patent No. 9,095,348 was filed in 2013, and the patent granted in 2015.
  • In February 2001, Truckai and his co-inventors assigned the invention described in U.S. Patent Application No. 09/710,102, the application, and all continuation applications thereof (etc.).
  • After a series of continuation applications, the application that was granted as U.S. Patent No. 6,872,183 was filed in 2004, and the patent granted in 2005.

Assignor Estoppel

The Supreme Court explains that the doctrine of assignor estoppel was developed “to deal with inconsistent representations about a patent’s validity.”:

The classic case (different in certain respects from the one here) begins with an inventor who both applies for and obtains a patent, then assigns it to a company for value. Later, the inventor/assignor joins a competitor business, where he develops a similar—and possibly infringing—product. When the assignee company sues for infringement, the assignor tries to argue—contrary to the (explicit or implicit) assurance given in assigning the patent—that the invention was never patentable, so the patent was never valid. That kind of about-face is what assignor estoppel operates to prevent—or, in legalese, estop.

The Supreme Court’s New Limitations on Assignor Estoppel

The Supreme Court declined Minerva’s invitation to eliminate the doctrine of assignor estoppel altogether, but agreed “Assignor estoppel should apply only when its underlying principle of fair dealing comes into play.” Thus, the Court delineated three scenarios where assignor estoppel might not apply:

  • A change in the law. The Court explained:A second example is when a later legal development renders irrelevant the warranty given at the time of assignment. Suppose an inventor conveys a patent for value, with the warranty of validity that act implies. But the governing law then changes, so that previously valid patents become invalid. The inventor may claim that the patent is invalid in light of that change in law without contradicting his earlier representation. What was valid before is invalid today, and no principle of consistency prevents the assignor from saying so.
  • When the claims at issue are materially broader than the claims assigned . The Court explained:Most relevant here, another post-assignment development—a change in patent claims—can remove the rationale for applying assignor estoppel. …. [T]he assignee, once he is the owner of the application, may return to the PTO to “enlarge[]” the patent’s claims. …. And the new claims resulting from that process may go beyond what “the assignor intended” to claim as patentable. …. Assuming that the new claims are materially broader than the old claims, the assignor did not warrant to the new claims’ validity. And if he made no such representation, then he can challenge the new claims in litigation: Because there is no inconsistency in his positions, there is no estoppel.

Question: Does this reasoning cast doubt on the USPTO’s practice of accepting a copy of an inventor’s oath or declaration from a parent application to satisfy the statutory requirement for an inventor’s oath or declaration in a continuation application?

Each of these “exceptions” rests on the same principle: “The limits of the assignor’s estoppel go only so far as, and not beyond, what he represented in assigning the patent application.” In other words, assignor estoppel only bars invalidity challenges that are inconsistent with representations inherent in making the assignment.

Having outlined these exceptions, the Supreme Court remanded to the Federal Circuit to assess whether the claims at issue were indeed “materially broader than the ones Truckai assigned.”

This phrasing bothers me, because there was no dispute that the inventor had effectively assigned the patents at issue. I believe the question on remand is whether the claims at issue are “materially broader” than the ones in existence when the assignments were executed.

The Dissenting Opinions

Justice Alito wrote a dissenting opinion explaining his views that the Court should address whether “ Westinghouse Elec. & Mfg. Co. v. Formica Insulation Co. , 266 U. S. 342 (1924), which recognized assignor estoppel, should be overruled.” He criticizes both the majority and the principal dissent for “evading stare decisis .”

Justice Barrett wrote a dissenting opinion explaining her views that the 1952 Patent Act abrogated the doctrine of assignor estoppel altogether. Justices Thomas and Gorsuch joined her dissent.

Practical Limits of Assignor Estoppel

While employers may find it disconcerting that an inventor may be permitted to challenge his or her own patent, the Federal Circuit already decided that assignor estoppel does not apply to Inter Partes Review proceedings (or presumably Post Grant Review proceedings), because the governing statutes permit challenge by “a person who is not the owner of a patent.” Indeed, Minerva already had successfully invalidated some claims of the asserted patents in an IPR. Moreover, inventor-assignor estoppel will not necessarily prevent an inventor’s subsequent employer from challenging the assigned patent(s). Here, Minerva was found to be “in privity” with the inventor because he was the founder, President, and CEO. (This issue is discussed more in the underlying Federal Circuit decision .)

Maneuvering Around Minerva

Companies who want to prevent their employee-inventors from being able to subsequently challenge their patents may be considering several maneuvers around Minerva ’s holding. In view of the Court’s statement that assignor estoppel does not apply at all to employment agreement-type assignments which assign rights in future inventions not tied to any specific patent applications, it may be risky to rely on a “no challenge” clause in an employment agreement. Because the Court did not question the effectiveness of the original assignments, it may not be helpful to obtain second or “quitclaim”-type assignments for each patent granted in a given family. The most promising maneuvers could include giving monetary “patent awards” to inventors when a patent is granted, but that approach could be difficult to implement when the inventor(s) have left the company, and still would rely on equitable principles at least three Supreme Court justices are skeptical of, or contractual terms that may be viewed as contrary to public policy.

equitable assignment patent

Courtenay C. Brinckerhoff

Related insights, “let’s talk compliance”: hot topics in compliance, california appellate court empowers privacy agency to immediately enforce cpra regulations., uspto warns against blind reliance on artificial intelligence.

Patent Rights Unveiled: The Distinction Between Patent Assignment and Licensing in India

Patent Rights Unveiled: The Distinction Between Patent Assignment and Licensing in India

To safeguard our original invention of any form be it a piece of music, a work of art, a creatively written draft, a complex set of codes, or any such masterpiece that hatched from an intellectual mind, our Indian government has provided us with a particular set of rights called “ Intellectual Property Rights ” which are often taken lightly or ignored due to confusion like the patent assignment and patent licensing; about which we will be understanding in the article today. So, are you ready to know what they are, how they differ, and why and when you need them?

Patent? A Quick Intro

To safeguard any idea or invention from being used, reproduced, or sold without any consent of the inventor, the Indian government under The Patents Act of 1970 , allows any inventor to apply for a patent which is a Patent Right - an intellectual property right that provides exclusive rights to the owner for a specific invention to manufacture, use, exploit the patented product or process for a limited period and take action against those who misuse it.

A patent is like a safety token that is awarded to the original inventor of the invention for the innovation but can be transferred as well by the inventor itself to a third party, providing permission to use, make, or sell the invention and gain monetary benefits. Now there’s a procedure to pass on the rights to someone and that’s where patent assignment and patent licensing come into the picture which we will discuss in detail below.

Understanding Patent Assignment

Although the term ‘assignment of patent’ is not defined in the Indian Patents Act of 1970, patent assignment is like a permanent deal of IP between two parties. An assignment agreement is a legally binding contract that transfers all or part of the ownership rights of a patent from the assignor (the current patent holder) to the assignee (the new rights holder). The assignee then has the exclusive right to prevent others from making, using, selling, or offering to sell the invention, including the right to sue anyone who infringes on the patent.

To be valid, a patent assignment must be properly documented by an IP lawyer , signed by the parties involved, and registered according to Section 19 of the Patent Act.

Patent assignments are of three kinds (i) legal; (ii) equitable; and (iii) mortgages.

(i) Legal Assignment -

A legal assignment is the formal transfer of patent rights from the assignor (the original patent owner) to the assignee (the new patent owner). The assignee then enters their name as the patent owner in government records. Such an assignment is typically executed through a deed, and once the process is completed, the assignee gains full ownership rights to the patent.

(ii) Equitable Assignment -

Any form or agreement that includes a letter stating that the assignor has agreed to share a certain portion of the patent rights with the assignee is termed an equitable assignment of the patent. Unlike in legal assignment, the assignee cannot enter his/her name into the official government records as a patent owner but can notify the patent office of their interest in the patent. Equitable assignments may involve sharing specific benefits or profits from the patent, but the assignee does not gain complete ownership rights as in a legal assignment.

(iii) Mortgages -

An agreement where the patent owner transfers the patent rights either wholly or partly to the assignee in return for a lump-sum payment of royalty. Once the assignor repays the sum to an assignee, the patent owner gains back the patent rights to the mortgaged property. Even in this assignment, the assignee's name is not entered as a patent owner in government records but is mentioned as a mortgagee, reflecting their interest in the patent.

Decoding Patent Licensing

Licensing is a permission-based arrangement wherein the patent owner (licensor) grants rights to another party (licensee) to use the patented technology under predefined terms. Unlike assignment, ownership remains with the licensor.

Patent Act section 70 allows a patentee to grant a license through a contractual agreement to allow the licensee to make, use, or exercise the invention. The licensor and licensee sign the contract which certifies the shared use of IP rights (in part or whole) for mutually agreed payments (i.e., royalties).

A patent licensing agreement can be classified as exclusive, non-exclusive, voluntary, statutory, co-exclusive, sole-licensing, express and implied, limited, and compulsory. However, the two agreements that are commonly agreed upon are:

1. Exclusive License Agreement:

An agreement that gives a grant of exclusive rights to the licensee (the person or entity receiving the license) by the licensor (the patent holder), to use the patented invention; excluding all others (including the patentee) to exploit, use, or license the invention to anyone else during the term of the agreement. The rights can be divided and assigned, restrained entirely, or in part. The patent holder retains ownership of the patent, but only the licensee holds exclusive rights for the agreed-upon scope. The simplest instances of exclusive licensing agreements are copyright, trademarks , and patent licenses.

2. Non-exclusive License Agreement:

A license agreement in which the licensee can exploit the patented invention, but not exclusively. Under this arrangement, the patent holder may exploit the invention himself and can grant licenses to multiple parties, including the licensee, for the same invention for the length of the agreement entered into.

The Distinction Between Patent Assignment and Licensing in India

Now that you understand that patent licensing and patent assignment are two different things, here are some other factors that distinguish them further.

Key Points about Patent Assignment:

Parties involved -.

Assignor (Patent Holder) and Assignee (Third Party).

Type of Transaction -

Permanent transfer of ownership of the patent from the assignor to the assignee for consideration.

Rights Transferred -

The patent holder assigns all or a part of their rights to the assignee. The assignee becomes the owner of the transferred rights.

Nature of Interest -

Generally irrevocable, but rights may be revoked in specific circumstances.

Rights Available -

The assignee can sue for patent infringement and exercise all other rights available to a patent holder.

Consideration -

Lump-sum fees are paid to the assignor upon executing the assignment agreement.

Notice Requirement -

Formal, written documentation, such as an assignment agreement, to be recorded with the relevant patent office.

Key Points about Patent Licensing:

Licensor (Patent Holder) and Licensee (Third Party).

Temporary permission granted by the licensor to the licensee to use the patented invention on the terms outlined in the licensing agreement.

Rights Granted -

The licensee is authorized to use the patented invention within the scope defined in the license agreement. The patent holder retains ownership.

Revocable, subject to the terms of the license agreement.

The licensee does not usually have the right to sue for infringement or sub-license the rights further unless otherwise agreed.

Royalties or compensation based on sales, usage, or other agreed-upon terms are paid to the licensor by the licensee.

Flexibility -

Licensing agreements can be tailored to specific needs, allowing licensors to grant different rights to different licensees for various uses.

In both cases, the Indian Patent Act of 1970, governs the provisions for licensing and assigning patents. It's important to note that the specific terms and conditions of both assignment and licensing agreements can vary and should be carefully negotiated and documented based on the parties' intentions and requirements, and registered to be considered valid.

In Conclusion,

Grasping the distinctions between patent assignment and licensing is pivotal for making informed decisions in the realm of intellectual property. Patent assignment involves a change in ownership, while licensing offers a strategic partnership without relinquishing ownership. Understanding the legal requirements and implications in India is essential to navigate these paths successfully.

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Related Practices & Jurisdictions

  • Intellectual Property
  • Federal Circuit / U.S. Court of Spec. Jurisdiction

equitable assignment patent

In a patent infringement case brought by the widow of one of two named co-inventors, the U.S. Court of Appeals for the Federal Circuit affirmed the district court’s dismissal for lack of standing after concluding that an unsigned agreement created no more than an equitable claim to title in the patent.    G ellman v. Telular Corp., et al. , Case No. 11-1196 (Fed. Cir., Nov. 30, 2011) (Clevenger, J.).  

Ms. Tobi Gellman, a trustee of the Mayer Michael Lebowitz Trust (the trust), and widow of one of the co-inventors of the patent in question, M. M. Lebowitz, claimed that the trust was the sole legal owner of the    patent.   She offered an unsigned “Agreement for Consulting Services” along with other circumstantial evidence in an attempt to demonstrate that James Seivert, the second named co-inventor of the patent, was a consultant of a company Mayer Lebowitz operated called Cellular Alarm Systems.  

The relevant portion of the unsigned agreement between Seivert and Cellular Alarm stated as follows:  

[A]ny and all ideas, discoveries, inventions, [etc.] . . . developed, prepared, conceived, made, discovered or suggested by [Mr. Seivert] when performing services pursuant to this Agreement . . . shall be and remain  the exclusive property of Cellular Alarm.   [Seivert] agrees to execute any and all assignments or other transfer documents which are necessary, in the sole opinion of Cellular Alarm, to vest in Cellular Alarm all right, title, and interest in such Work Products.   (emphasis added).  

According to Ms. Gellman, the terms of the unsigned agreement effectuated a full transfer of Seivert’s rights to any inventions, including any legal claims to the patent in suit.   After the district court rejected Gellman’s arguments as lacking evidentiary support and misapplying the law Gellman appealed.

At the Federal Circuit, Gellman argued that in order for the invention to “remain” the property of Cellular Alarm, it necessarily had to have been previously conveyed.    The Federal Circuit disagreed, however, stating that read in context the word “remain” “indicates that Mr. Seivert’s contributions to inventions ‘remained’ in equitable status until such a time as Mr. Seivert ‘executed[d] any and all assignments or other transfer documents which are necessary … to vest in Cellular Alarm all right, title and interest’ in such inventions.”   Reading the clause any other way would render meaningless the language “execute any and all assignments.”  

The Federal Circuit thus concluded that “[t]he most the Unsigned Agreement could do is create an obligation for Mr. Seivert to assign to Cellular Alarm.”    The Court rejected Gellman’s argument based on the “hired to invent” doctrine on the same basis.   According to the Court, to the extent the unsigned agreement created an equitable claim in the patent, it could be converted to legal title either when Seivert actually assigned ownership or by legal action.  

Because not all legal owners of the patent were properly joined in the lawsuit, the Federal Circuit affirmed the district court’s dismissal for lack of standing.   In so doing, the Court rejected the appellees’ contention that the dismissal should have been “with prejudice” and denied appellees’ motion for damages and costs. The Court declined to reach the issue of whether the Unsigned Agreement amounted to an enforceable contract that was subject to 35 U.S.C. § 261, which requires assignments of patent interests to be in writing.

Practice Note:    A present assignment of future rights must expressly undertake the actual assigning act at the time of the agreement.

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what is Patent Assignment Deed and its Advantages

equitable assignment patent

It’s an agreement between Assignor and Assignee which explains the rights and conditions related to patent assigned property which means intellectual property of Assignor who is holding monopoly power towards that property. Under Indian law, its mandatory to register Patent Assignment Deed under Section 68 of the Patents Act, 1970 which giving Assignee absolute rights from date of execution of deed.

Kind of assignment deed:

  • Legal assignment – in this Assignee may enter his name as patent owner.  
  • Equitable assignment – in this certain share is given to another person. Equitable Assignee can’t enter his name as owner but can register as having interest in the patent.  
  • Mortgage – in this patent right is partially or wholly transferred to obtain money. On repayment of money, mortgagor becomes entitle to register his name as owner.

Illustration:

A is the Assignor who got grant of patent for his invented product from Government of India willing to assign that to B’s company for loyalty in terms of share of 30% from every year earnings. And further it mentions the rights and duty of Assignor and Assignee under the legal agreement. This helps parties get relief in case of breach of contractual obligations.

Who is Assignor and Assignee?

Assignor is the person who is willing to transfer the title of patent and Assignee is the person who is willing to receive the title, interest and such other rights of patent from the Assignor by giving the required consideration.

What is the advantage of Patent Assignment Deed?

  • It helps parties to understand their rights and duties with respect to the said Patent.  
  • Since all the provisions are written and mutually agreed upon by the parties it minimizes ambiguity. More so in case of any dispute arising between the parties it shall be resolved according to the dispute redressal clauses mentioned in the Deed.  
  • Formation of assignment deed gives legality and enforceability to the transfer of any Intellectual Property.  
  • An Assignment Deed is a prima facie evidence of contractual relationship between Assignor and Assignee.

What are general rights and duties of Assignor and Assignee under this deed?

  • Assignor need an absolute title against the patented goods for transferring such rights to Assignee.  
  • Deed need to comply with all the essentials of contract in order to execute legally. If it violates public policy or does not have a lawful consideration, then such contract is void ab initio.  
  • Assignor can transfer his intellectual rights fully or conditionally to Assignee for the consideration. Consideration could be of monetary value forming a large sum or shared percentage from income or stocks exchange of the concerned parties.  
  • Assignee will get the monopoly right as Assignor assigns the patented goods. Henceforth, the Assignee steps into the shoes of the Assignor and by the virtue of the deed acquires an absolute right to use and enjoy the patented goods.  
  • Assignee has the right to get indemnified against any intervention/inconvenience caused while he is exercising his rights.  
  • Assignee can sue for damages caused to him by Assignor’s action, it maybe mistakes or voluntary negligence/disturbance or fraudulent activity in the deed.  
  • Assignee is obligated to pay the consideration mentioned if he fails to do so within a stipulated period of time. Assignor can bring a legal action for the recovery of consideration but cannot terminate the title already transferred.  
  • Assignee shall pay renewal and such other charges after the assignment. Prior to the assignment the Assignor needs to ensure that the title is free from any encumbrances.

Can the Assignment Deed be Terminated/Amended?

  • This amendment mostly happens in equitable assignment deed. The deed must be registered before the Controller of Patent and in case of infringement or mutual consciousness the parties may mutually agree to amend any provision of the deed.  
  • Termination of the deed is unlikely as it’s irrevocable and permanent in nature. As assignment being transfer of title in a patent which is permanent. It may be terminated in case of mortgage assignment deed.

equitable assignment patent

Akshay is a Language Enthusiast & an HNLU alumnus. He believes in simplicity & takes legal literacy very close to his heart.

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Thinking Globally: Inventor Remuneration Rights

  • December 8, 2017

A granted patent will allow a patent holder exclusive rights to make, use and sell their invention for a specific period of time. However, who owns the invention, the employer or employee? Is an employee entitled to additional remuneration over and above their contracted payment? For those countries that are signatories of the Paris Convention (Article 4ter), inventors have a right to be named in patent applications. Some countries provide further rights for inventors.

As corporations are reaching across the world for innovative ideas, it is important to be aware of local laws and rules relating to inventor rights and remuneration. While some countries allow employee/employer contracts to determine inventor rights and compensation, other countries have provided legislation to ensure fair payment to inventors by employers for inventions made during the course of employment.

In countries such as China and Japan, employment contracts are particularly important. These contracts provide protection and guarantees for both the employer and employee in determining compensation for inventive activites. If there is no contract in China, compensation could be determined by the courts.

In Africa and the Middle East, the trend in countries including South Africa, Nigeria, Tanzania, Ghana, Saudi Arabia, Egypt, and United Arab Emirates, is that inventors must be named in an application, but they do not have the right to be notified of any company action. With the exception of a few countries, there are no rules regarding inventor remuneration and often we see that remuneration is to be governed by the terms and conditions of the employment contract and company policy, without the interjection of country law.

Germany, Thailand, China, Hong Kong, Japan, South Korea, and other countries have remuneration rules for employee-inventors. Thailand is notable in that its compensation rules for inventors are not applied to inventions made only in Thailand or employees/employers based in Thailand. Any inventor of a Thai patent has the right to demand fair remuneration by lodging an action within a year of the grant of the patent.

A recent court case in South Korea highlighted the need for an employer to ensure fair remuneration even for weak or unused inventions.

Additionally, employers in South Korea, Finland, and the Russian Federation have deadlines by which they must notify employee/inventors if they intend to acquire rights to an invention.

We have researched practices in some of the mainstream IP jurisdictions worldwide and have consolidated a breakdown of the similarities and differences between them. We will focus on 1) Inventor rights to be named in an application, 2) Inventor right to be notified of company action regarding the invention, 3) Rules or Practices regarding inventor remuneration, and 4) Employer rights.

See below table outlining employer-employee rights for inventions created at the workplace. We always recommend contacting a local agent with specific questions.

Abe, T. a. (2016, February 24). Japan: New Employee Invention System. Retrieved July 25, 2017, from managingip.com: http://www.managingip.com/Article/3532465/Japan-New-employee-invention-system.html

AIIPI. (n.d.). Report Q183 in the name of the Malaysian Group Employers’ rights to intellectual property. Retrieved July 25, 2017, from aippi.org: https://aippi.org/download/commitees/183/GR183malaysia.pdf

AIPPI. (n.d.). Report Q183 in the name of the Argentinean Group: Employers’ rights to intellectual property. Retrieved July 25, 2017, from AIPPI.org: https://aippi.org/download/commitees/183/GR183argentina.pdf

AIPPI. (n.d.). Report Q183 in the name of the Philippine Group Employers’ rights to intellectual property. Retrieved July 26, 2017, from aippi.org: https://aippi.org/download/commitees/183/GR183philippines.pdf

AIPPI. (n.d.). Report Q183 in the name of the Singapore Group Employers’ rights to intellectual property. Retrieved July 25, 2017, from aippi.org: https://aippi.org/download/commitees/183/GR183singapore.pdf

Articles 15-20 of the Spanish Patents Act (Law 11/1986, of 20 March, on Patents –”SPA”) . (n.d.).

Bai, B. a. (2015, September 24). Inventor Remuneration: Have a Company Policy. Retrieved July 25, 2017, from Kluwerpatentblog.com: http://kluwerpatentblog.com/2015/09/24/inventor-remuneration-have-a-company-policy/

Chakraborty, S. (n.d.). AIPPI Report Q183 in the name of the Indian Group. Retrieved July 25, 2017, from aippi.org: https://aippi.org/download/commitees/183/GR183india.pdf

Choe, M. a.-H. (2013). Employers to Face Additional Hurdles for Employee Inventions: Amendment to Employee Invention Law in Korea. Retrieved July 18, 2017, from www.kimchang.com: http://www.kimchang.com/newsletter/templates/newsletter_ip_en_summerFall2013_article03.html

Civil Code of the Russian Federation . (n.d.).

Communication from the German authorities. (1996, July 1). Law on Employee Inventions (Officially: Gesetz über Arbeitnehmererfindungen). Retrieved July 25, 2017, from wipo.int: http://www.wipo.int/edocs/lexdocs/laws/en/de/de039en.pdf

Feng, C. (2016, February 16). Mondaq. Retrieved July 25, 2017, from China: Employee Inventions in China: http://www.mondaq.com/china/x/462864/Patent/Employee+Inventions+in+China

Government of Hong Kong. (n.d.). Cap. 514 Patent Ordinance – Part VI Employee’s Inventions. Retrieved July 20, 2017, from Hong Kong e-Legislation: https://www.elegislation.gov.hk/hk/cap514

Hogan Lovells. (n.d.). Patents – Law on Employees’ Inventions – France. Retrieved July 25, 2017, from limegreenip.hoganlovells.com: http://limegreenip.hoganlovells.com/article/119/patents-law-on-employees-inventions-france

Hogan Lovells. (n.d.). Patents – Law on Employees’ Inventions – Germany. Retrieved July 25, 2017, from limegreenip.hoganlovells.com: http://limegreenip.hoganlovells.com/article/104/patents-law-on-employees-inventions-germany

Hogan Lovells. (n.d.). Patents – Law on Employees’ Inventions – Poland . Retrieved July 25, 2017, from limegreenip.hoganlovells.com: http://limegreenip.hoganlovells.com/article/137/patents-law-on-employees-inventions-poland

Hogan Lovells. (n.d.). Patents – Law on Employees’ Inventions – Russia . Retrieved July 26, 2017, from limegreenip.hoganlovells.com: http://limegreenip.hoganlovells.com/article/114/patents-law-on-employees-inventions-russia

Hogan Lovells. (n.d.). Patents – Law on Employees’ Inventions – Spain . Retrieved July 26, 2017, from limegreenip.hoganlovells.com: http://limegreenip.hoganlovells.com/article/113/patents-law-on-employees-inventions-spain

Industrial Property Law dated 30 June 2000 . (n.d.).

Intellectual Property High Court. (n.d.). New Trend in Employee’s Invention Compensation. Retrieved July 25, 2017, from ip.courts.go.jp: http://www.ip.courts.go.jp/eng/vcms_lf/061207_03.pdf

International Bureau of WIPO. (2017, June 1). Finnish Patent and Registration Office (PRH) as Designated (or Elected) Office. Retrieved July 25, 2017, from wipo.int: http://www.wipo.int/pct/guide/en/gdvol2/annexes/fi.pdf

International Bureau of WIPO. (n.d.). Act on the Right in Employee Inventions 29.12.1967/656 (Unofficial translation)(Amendments up to 2000/1078 included) . Retrieved July 25, 2017, from wipo.int: http://www.wipo.int/wipolex/en/text.jsp?file_id=193894#LinkTarget_119

Italian Code of Industrial Property (Article 64) – Leglislative Decree N°30 of 10 February 2005, Text effective as from 2 September 2010, as amended by Legislative Decree N°131 August 2010. (n.d.).

Jin, X. (2016, October 13). Case Study: How to reward and remunerate inventors in China? Retrieved 25 07, 2017, from IPWatchdog: http://www.ipwatchdog.com/2016/10/13/reward-remunerate-inventors-in-china/id=73533/

Kably, L. (2015, August 3). Startups, SMEs tardy in protecting patents. Retrieved July 25, 2017, from timesofindia: http://timesofindia.indiatimes.com/business/india-business/Startups-SMEs-tardy-in-protecting-patents/articleshow/48322777.cms

Law No. 1733/1987 (FEK 171, A’ of 22/9/1987) on Technology Transfer, Inventions, and Technological Innovation’ (as last amended by Law No. 1739/1987 of November 11, 1987). (n.d.). WIPO Lex . http://www.wipo.int/wipolex/en/text.jsp?file_id=127570.

Lee, J. K. (2017). Supreme Court Affirms Employers Have Duty to Compensate Employee Inventors Even for Weak or Unused Patents. Retrieved July 25, 2017, from kimchang.com: http://www.kimchang.com/newsletter/2017newsletter/ip/eng/newsletter_ip_en_spring_summer2017_article04.html

Monaghan, P. (n.d.). Legal Examination Employee Inventions: Who Owns, and Who Owes? Retrieved July 25, 2017, from Businesskorea.com: http://www.businesskorea.co.kr/english/oped/opinions/5595-legal-examination-employee-inventions-who-owns-and-who-owes

Morgan, B. E. (n.d.). Report Q183 in the name of the Canadian Group. Retrieved July 25, 2017, from AIPPI.org: https://aippi.org/download/commitees/183/GR183canada.pdf

Morrisroe, L. (2015, December 2). Inventor Remuneration in Thailand. Retrieved July 25, 2017, from spruson.com: http://www.spruson.com/inventor-remuneration-in-thailand/

Patent Act 1978, as codified by the IP Code 1992. (n.d.). Article L. 611-7 of the French Intellectual Property Code (the “IP” Code) .

Pham & Associates. (1997, October 28). Vietnam: Introduction to Patent Law in Vietnam – Main Issues of Patent Law – Inventor. Retrieved July 25, 2017, from mondaq.com: http://www.mondaq.com/x/3042/Trademark/Introduction+To+Patent+Law+In+Vietnam+Main+Issues+Of+Patent+Law+Inventor

Pham & Associates. (n.d.). Frequently Asked Questions about Patents in Vietnam. Retrieved July 25, 2017, from pham.com.vn: http://www.pham.com.vn/en/publications/publications/frequently-asked-questions-about-patents-in-vietnam-1377.aspx

Pornwiriyangkura, A. (2013, May 17). Employee Inventions and Creativity: Ownership and Compensation. Retrieved July 25, 2017, from tilleke.com: http://www.tilleke.com/resources/employee-inventions-and-creativity-ownership-and-compensation

Sonderhoff Einsel. (2016, June 1). Revision of the Employee’s Invention System in Japan (as of April 1, 2016). Retrieved July 25, 2017, from se1910.com: http://se1910.com/info-center/revision-employees-invention-system/

Vision Associates. (n.d.). Who owns and employee’s invention: employer or employee? Retrieved July 25, 2017, from vision-associate.com: http://www.vision-associates.com/legal_news_detail/2/345/Who-owns-an-employee%E2%80%99s-invention–employer-or-employee

[1] The information related to this country was provided by KISCH IP

[2] The information related to this country was provided by Clarke Modet

[3] The information related to this country was provided by Clarke Modet

[4] The information related to this country was provided by Clarke Modet

[5] The information related to this country was provided by KISCH IP

[6] The information related to this country was provided by KISCH IP

[7] The information related to this country was provided by Clarke Modet

[8] The information related to this country was provided by KISCH IP

[9] The information related to this country was provided by Abu-Ghazaleh Intellectual Property

[10] The information related to this country was provided by Abu-Ghazaleh Intellectual Property

[11] The information related to this country was provided by Abu-Ghazaleh Intellectual Property

[12] The information related to this country was provided by KISCH IP

[13] The information related to this country was provided by KISCH IP

[14] The information related to this country was provided by Abu-Ghazaleh Intellectual Property

[15] https://aippi.org/download/commitees/183/

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  1. EXAMINER OF PATENTS & DESIGNS

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  5. assignment under patent act part 2 ||legal assignment #legalshorts #legalway #ipr #patent act

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COMMENTS

  1. 3 Types of Patent Rights to be transferred

    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).

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

    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

  3. Patent Assignment in India

    Equitable Assignment: Any form or agreement including a letter in which the proprietor agrees to share a certain share of the patent with another individual is referred to as the equitable assignment of the patent.

  4. D Young & Co

    An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement.

  5. Equitable Assignment: Everything You Need to Know

    An equitable assignment is one that does not fulfill the statutory criteria for a legal assignment, but is binding and upheld by the courts in the interest of equability, justice, and fairness.3 min read updated on February 01, 2023

  6. Employee Inventors and Patent Ownership: Whose Rights Are They Anyway?

    Dubilier Condenser Corp., the Supreme Court created the equitable doctrine called the "hired-to-invent" doctrine when it held that " [o]ne employed to make an invention, who succeeds, during his term of service, in accomplishing that task, is bound to assign to his employer any patent obtained." 22 The Court found this implied obligation to assi...

  7. Automatic Assignment of Future Inventions: A Serious Error of Federal

    According to Justice Newman, patent assignments are a matter of contract law, which is in the jurisdiction of the states. Therefore, the Federal Circuit should look more closely at state law in deciding cases about patent assignments. ... ," was applicable also to equitable assignments, and the latter, equally with the former, will be ...

  8. Ownership And Forms Of Transfer Of Patents Rights In India- A ...

    Equitable Assignment Mortgage Legal Assignment: An assignment (or an agreement to assign) of an existing patent is a legal assignment, where the assignee may enter his name as the patent owner. A patent which is created by deed can only be assigned by a deed. A legal assignee entitled as the proprietor of the patent acquires all rights thereof.

  9. Supreme Court Opens Door for Assignors To Challenge Patent Validity

    For nearly 100 years, Supreme Court law has recognized a common sense equitable rule governing the sale of patent rights called assignor estoppel. It prevents the seller (assignor) of a patent from later claiming it is invalid.

  10. PDF IP in Assignments, Licences & R&D Collaborations

    what is an assignment? • patents (and related rights) are a type of intangible property and can be exploited as such • assignmenst transfer IP from one owner to another - it can be a legal or equitable assignment • a legal assignment allows the new owner (the "assignee") to enforce the right assigned in his own name without joining the previous owner (the "assignor") to the proceedings

  11. Patent Assignees Must Receive a Present Transfer of Legal ...

    Often, the particular language used in the grant clause of an assignment determines whether a co-inventor or other presumptive owner transferred their rights to the asserted patent or merely created an obligation to assign those rights at some unknown time in the future.

  12. Divided Patent Ownership, Equitable Title, and Failed Assignments

    Jenkins, 81 U.S. 14 Wall. 452 (1871)(assignment of a patent and the invention secured by the patent legally assigns later applications directed to the same invention) As discussed in the Breyer dissent, the well accepted law prior to Film Tec was that a present assignment of a future invention created only an equitable obligation to assign once ...

  13. ISSUE XV: To license or to assign a patent?

    Assignment is in essence a transfer of ownership even if it is partial. 3 There are three kinds of assignments: legal assignment, equitable assignment and mortgages. An assignment of an existing patent is a legal assignment where the assignee may enter his name as the patent owner. A certain share given to another person is called an equitable ...

  14. Assignment (law)

    Assignment [1] is a legal term used in the context of the laws of contract and of property. In both instances, assignment is the process whereby a person, the assignor, transfers rights or benefits to another, the assignee. [2] An assignment may not transfer a duty, burden or detriment without the express agreement of the assignee.

  15. Supreme Court Limits Patent Assignor Estoppel

    In Minerva Surgical, Inc. V. Hologic, Inc., the Supreme Court limited the equitable doctrine of assignor estoppel that prevents an assignor from subsequently challenging the validity of the patent he or she assigned.The Court outlined three scenarios where assignor estoppel might not apply, and has employers wondering if and how they can better shield their patents from subsequent inventor ...

  16. Patent Assignment and Licensing in India

    Equitable assignments may involve sharing specific benefits or profits from the patent, but the assignee does not gain complete ownership rights as in a legal assignment. (iii) Mortgages - An agreement where the patent owner transfers the patent rights either wholly or partly to the assignee in return for a lump-sum payment of royalty.

  17. Patent Assignment: Difference between Assignment of Patent ...

    Assignment The term 'assignment of patent' is not defined in the Indian Patents Act. An assignment is an act by which the patentee assigns whole or part of the patent rights to the assignee who acquires a right to prevent others from making, exercising, using, or vending the invention. There are three kinds of assignments. Those are as follows:-

  18. An equitable interest in a patent

    The judge said that the inventor was asserting an equitable assignment of rights relating to the patent, since on his evidence there was only an agreement to assign rather than a completed assignment.

  19. Assignment of patent rights

    The assignment of patents plays an important role in facilitating the maintenance, defence and enforcement of owners' rights. While patent licensing involves providing limited permission to use a ...

  20. PDF Dear Saurabh Vishnubhakat

    Federal Circuit, legal and equitable title in patents and patent applications may reside in separate entities. In addition, licenses, whether or not exclusive, have been held by the Federal Circuit ... record a patent assignment voids the assignment against a subsequent purchaser or mortgagee of the patent." The assignment is void only if that ...

  21. Equitable Claim to Patent Title Insufficient for Standing

    The Court declined to reach the issue of whether the Unsigned Agreement amounted to an enforceable contract that was subject to 35 U.S.C. § 261, which requires assignments of patent interests to ...

  22. what is Patent Assignment Deed and its Advantages

    Equitable assignment - in this certain share is given to another person. Equitable Assignee can't enter his name as owner but can register as having interest in the patent. Mortgage - in this patent right is partially or wholly transferred to obtain money. On repayment of money, mortgagor becomes entitle to register his name as owner. Illustration:

  23. Thinking Globally: Inventor Remuneration Rights

    A granted patent will allow a patent holder exclusive rights to make, use and sell their invention for a specific period of time. However, who owns the ... the inventor shall be entitled to equitable remuneration" ... an assignment document signed by the inventors transferring their rights to the applicant is required.