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patent assignment recordation fee

Patent assignment—How-to guide

Find out more about business management

patent assignment recordation fee

by   LegalZoom staff

Read more...

Updated on: February 15, 2024 · 13min read

1. Overview

  • 2. Do's & don’ts checklist

3. Patent assignment instructions

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

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

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

2. Do's & don’ts checklist

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

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

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

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

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Patent Assignment: Everything You Need to Know

A patent assignment is an irrevocable agreement for a patent owner to sell, give away, or transfer interest to an assignee, who can enforce the patent. 6 min read updated on January 01, 2024

Updated November 5, 2020:

Patent Assignment: What Is It?

A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue others for making or selling the invention or design.

There are four types of patent assignments:

Assignment of Rights - Patent Issued: This is for patents that have already been issued.

Assignment of Rights - Patent Application : This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.

Assignment of Intellectual Property Rights - No Patent Issued or Application Filed: This is for unregistered inventions with no patent.

Exclusive Rights

Advantages of a Patent Assignment

Assignees don't create a unique invention or design. They also don't go through the lengthy patent process . They simply assume exclusive rights to intellectual property.

Profit Potential

Many patents cover intellectual property that can earn the owner money. A patent owner can charge a lump sum sale price for a patent assignment. After the transfer, the assignee can start to earn profits from the patent. Both original owners and assignees can benefit from this business arrangement.

Disadvantages of a Patent Assignment

Too Many or Not Enough Inventors

Patents can have multiple owners who invented the product or design. Sometimes patents list too many or not enough inventors. When this happens, owners can argue about an incorrect filing. This kind of dispute can make a patent assignment impossible.

Limited Recourse

Older patents may already have many infringements. Not all patent assignments include the right to sue for past infringements. This is known as the right to causes of action. This can cost the assignee a lot of potential profit.

Examples of What Happens When You File a Patent Assignment vs. When You File a Patent License

When You File a Patent Assignment

The patent owner changes permanently. You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public.

Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits.

When You File a Patent License

The patent owner doesn't change permanently. Most licenses have a time limit. At the end of the period, the original owner takes control again. Licensing information isn't always available through an online USPTO search. Contact the recordation office directly to get information about patent licenses.

The licensee can assign rights to another person or company. This adds another layer of ownership over the intellectual property.

Many owners charge royalties for a patent license. The licensee pays royalty fees throughout the license period. If the royalty fees are high and the license period is long, a patent assignment may be a better choice for earning the new owner more money.

Common Mistakes

Not Filing an Assignment Document

A verbal agreement is not official. File a patent assignment to change patent ownership.

Taking Action Before Filing

The assignee shouldn't make or sell the invention before the patent assignment is official. If an error or another problem happens, this could be patent infringement .

Making a Filing Error

Patent assignments are official documents. The assignee's name must be legal and correct. Before filing, check the spelling of the assignee name. If the assignee is a business, confirm the legal name. Many patents have more than one owner. List all names on the assignment.

Misidentifying the Patent

Include as much information about the patent as you can. List the patent number and title. Describe the intellectual property completely.

Not Searching for Security Interests

Patents can be collateral. A bank or another party can file a security interest in a patent, and this can limit how much an assignee can earn from a patent. Check for security interests before filing a patent assignment.

Not Filing a Proprietary Information Agreement

Many businesses file patents, as this is part of a business plan , and it's especially common for startup businesses. Inventorship problems can happen if employees file patents instead of the business.

Often, employees have an obligation to assign inventions to a company. This is true if they developed the invention on the job.

To avoid confusion, require employees to sign a proprietary information agreement. This automatically assigns inventions and designs to the business. Other options include signing an automatic assignment or an explicit assignment. These all clarify patent ownership.

Not Being Notarized

Make sure all official documents concerning your patent are notarized. There is a huge legal advantage to being notarized. It makes it so that your documents will be accepted as correct until it is proven otherwise. If you can't get your documents notarized, gather two witnesses. Have them attest to the signatures.

You have to file a patent assignment within three months of signing the form. If you don't, the assignee could lose ownership rights.

Frequently Asked Questions

Where Do I Record a Patent Assignment?

If you have a U.S. patent, record your patent assignment with the USPTO. If you have a foreign patent, file with the correct national patent offices.

I Can't Get a Signature from the Inventor. What Happens Now?

First, it needs to be officially established that:

  • Whoever is pursuing the application has the right to do so.
  • The inventor cannot be reached.

In order to establish this, the patent office will need a copy of the following:

  • the employee agreement
  • the assignment
  • other evidence of the rights

After that, the patent office will continue as if the signature has been obtained, even though it hasn't.

If the inventor has died, the patent office will try to contact the person in charge of managing the deceased's estate or the heir. If the invented refuses to sign or is missing, the patent office will ask for a declaration from the person who is trying to contact them. They will also look at the following items that have been sent to the inventor:

  • Do I Have to File a Patent Assignment if the Owner's Name Changed?

No, you don't need a patent assignment if only the person's or company's name changed. If the company merged with another, you may need a patent assignment.

What if I Make a Mistake on My Patent Assignment?

You can't correct a patent assignment. You have to assign it back to the original owner. Then you have to reassign with the correct information.

How Much Does a Patent Assignment Cost?

The patent assignment fee is $25. Filing electronically doesn't cost extra. You do have to pay an additional $40 fee if you file on paper.

Should I Hire a Lawyer?

Yes, you should get a lawyer to help with a patent assignment. A lawyer will make sure there are no filing errors. A lawyer knows how to describe the patent correctly. Errors and bad descriptions can limit the power of a patent assignment. This could cost the assignee a lot of money in future profits and legal fees.

Steps to File a Patent Assignment

1. Fill Out a Recordation Form Cover Shee t

The Recordation Form Cover Sheet is an official USPTO document. This includes the names of the assignor(s) and the assignee(s). It also includes the patent title and number.

2. Complete a Patent Assignment Agreement

The patent assignment agreement should list the assignor(s) and the assignee(s). It should state that the assignor has the right to assign the patent. It should also describe the intellectual property clearly and completely. It should also explain any financial or other transactions that have to take place. This includes a description of the lump sum payment.

3. Sign the Patent Assignment Agreement

All patent owners and assignees must sign the patent assignment agreement.

4. Submit the Patent Assignment

Finally, submit the patent assignment with the USPTO. You have to pay the assignment fee at this time.

If you need help with patent assignments, you can post your question or concern 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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29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

Patent Assignment: How to Transfer Ownership of a Patent

  • Intellectual Property
  • Patent Prosecution

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

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

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

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

What Is a Patent Assignment and Why Does it Matter?

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

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

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

Patent Assignment vs. Licensing

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

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

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

U sing Employment Agreements to Transfer Patent Ownership

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

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

The employment agreement should include the following provisions:

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

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

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

Drafting Agreements for Non-Employees

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

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

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

patent assignment recordation fee

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.

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

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Ant-Like Persistence

Best practice for recording US patent assignments

I’ll share my notion of the Best Practice for recordation of US patent assignments.  Please post comments below.

As a starting point to this discussion, I will remind the reader that if we receive a signed assignment and if we sit on it too long, we eventually come out on the wrong side of the 3-month period set forth in 35 USC § 261:

An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

So we will take as our starting point that whatever else we do about recording an assignment or postponing the recording of an assignment, we ought to try extremely hard to avoid getting on the wrong side of this three-month period.  (There are similar statutory three-month periods for trademark assignments and copyright assignments.)

Old-timers (or at least, practitioners who were in practice prior to January 1, 2014) will recall the days when it was necessary to pay a government fee to record a patent assignment. In those old days, practitioners would go to great lengths to try to avoid paying two fees if there was a way to squeeze two recordations into a single recordation (so as to pay only one fee).  A practitioner having encountered a problem with an existing recordation filing would go to great lengths to try to salvage the filing so as to avoid having to pony up a second government fee.  If there were two inventors, each of whom was supposed to sign an assignment, and if the signed assignments showed up on different days, most folks would carefully save up the first one and postpone e-filing it until the second signed assignment arrived.  This way, the filer could bunch them together and e-file them all in the same package.

As I say, the overarching goal for most practitioners in those old days was to try as hard as possible to get away with paying only one government fee for multiple assignments.

But the US eliminated the fee on January 1, 2014.  So that is no longer a reason to drag our feet on e-filing a signed assignment if we have it in hand.

A first drawback to intentionally postponing recording a signed assignment is that one might inadvertently permit the three-month period to pass (which I will call a “recordation failure”). By this I mean that to avoid a recordation failure, one needs to aggressively docket the three-month period. The docket steps would be (a) receive the signed assignment from the client; (b) note the date of execution (which might not be the same as the date that we received the signed assignment from the client); (c) add three months to the date of execution to arrive at a drop-dead recordation date, and (d) docket the drop-dead date and one or two warning dates.

If there were a docket failure (failing to set the drop-dead date, or failing to blow whistles loudly enough toward the end of the three-month period) then this would lead to a recordation failure (failing to record the signed assignment within the three-month period set forth in 35 USC § 261).

In our office, we estimate that the internal cost to set and clear a docket is around $50.  So if we can simply do something and get it done, rather than dragging our feet on the task, we don’t need to docket to remember to do whatever it is.  And then we save $50.

So to emphasize the above point, if we record each signed assignment promptly after receiving it, this also avoids having to do the above-mentioned fuss of docketing the three-month period under 35 USC § 261. Once we record the signed assignment, we can stop worrying about setting and clearing dockets to remember to record the signed assignment.

The practitioner who makes a decision to postpone recording an assignment is creating a second risk.  Whenever we sit on a signed assignment without recording it, we create the risk of misplacing the signed assignment . What if the document falls behind a desk?  What if the breeze catches the document and it flies out the window?  What if the file server where we store the PDF document crashes?  What if the file server does not crash, but through some bad luck the PDF document gets stored in the wrong folder?

The USPTO’s assignment recordation system may thus be thought of as an offsite backup for signed assignments. Saying this a different way, the sooner the signed assignment is recorded, the sooner that one may stop worrying about the risk of misplacing it.

A nay-sayer might ask “yes but if I record each inventor’s assignment when it arrives, I will have to fill in the twenty or so fields of the EPAS system twice instead of once!”  The answer to this, of course, is that when we are recording the first assignment, we should save a template.  When the second assignment shows up, we can use the template to auto-populate nearly all of the fields of the EPAS system for that second recordation.

Do you think that what I have described is a Best Practice?  Please post your comment below.

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8 replies to “best practice for recording us patent assignments”.

Fully agree! And file the 373. I docket neither of these, however I do have my own reminder system. Any new file opened automatically asks several questions in red, such as IDS filed? PoA filed? Assignment recorded? 373 filed? When done I turn each green. Because of 261, I treat newly received executed assignments as “drop everything and record this”. It is engrained. Jeff

So what happens if you record it beyond the 3 month execution date? Is it just not enforceable later during any potential litigation? Don’t we record assignments in divisional and cons, when one is recorded already in parent case? Aren’t those going to be more than 3 months from execution date?

The statute quoted in Carl’s post answers the “what if” Missing the three month deadline is almost always no big deal — not recording at all can turn into a HUGE problem! If you miss the three-month deadline for recording, the assignment is

void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

The three-month deadline is just a “relation back” type rule.

I wish Carl would have replied to this, as he was requesting comments.

Is the order of recordation important? If ownership flowed from inventors to Company A then to Company B, could there be a problem (perhaps later in litigation) with recording the assignment from Company A to Company B first then later recording the assignment from the inventors to Company A?

The order of the recordation is, generally speaking, not important.

A person rendering an opinion as to title will not (or, at least, should not) pay much attention to the sequence in which the recordations took place.

The one limited area where a date of recordation might make some difference is that under 35 U.S. Code § 261 a filer who dawdles for too long (a filer who permits more than three months to pass after the date of execution of an assignment) could possibly end up on the wrong end of a document signed by a second second purchaser or mortgagee.

Question: In the following the statement, “for a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.1.” does “assignee” refer only to assignees who are not the original Applicants, or does it refer to Assignee-Applicants as well?

In other words, if GIZOMOCO was listed on the ADS as the original Applicant and the 373 was submitted at filing along with a copy of the document assigning the rights from the inventor(s)s to GIZMOCO but the assignment to GIZMOCO wasn’t recorded, will the patent issue to the GIZMOCO or to the inventor(s)?

First, there is no need to file a 3.73 if you list GIZOMOCO as the Applicant on the ADS.

Second, as Carl explains above, there is no reason to fail to record the assignment.

To answer your question: the issued patent will list as Assignee whomever is listed in Box 3 of the Issue Fee Transmittal, regardless of who is Applicant. But the Issue Fee Transmittal reminds you of the 37 C.F.R. 3.81 requirement you quote: to list an Assignee on the Issue Fee Transmittal, you must have recorded the chain of assignments from the inventors to that Assignee.

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A license is a grant (assignment) to the licensee of various licensed rights.  The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another.  Thus, the first recordation of a license may be recorded as a “license,” while the assignment of those same licensed rights to another entity may be recorded as an “assignment.”  The only way to really understand the situation is to review the actual documents, which are all readily available from the recordation branch of the patent office.

Note that the patent office sometimes refers to licenses as a species of assignment.  That is correct, because one is assigning license rights.

Not necessarily.  Assignments are only needed if you are contractually obligated, by employment or otherwise, to make the assignment.

An important corollary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name.  Investors are usually unhappy with that arrangement, but there can be significant advantages.  One major advantage is that the patent holder is a “necessary and indispensable” to any litigation over patent validity.  Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.

Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications.  See the previous FAQ.

Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications.  That is a dangerous strategy.  In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company, or divorce.

It is not technically necessary to re-file assignments for divisional or straight continuation applications.  A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.  Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee.

Absolutely.  Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues.

Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office.

Note that the office charges US$ 40 for each patent or patent application listed on the recorda­tion form.  Thus, if an assignment references a family of 5 patent applications, the recorda­tion fee is US$ 200.  Of course paralegal charges would also apply, and possibly attorney time.

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment.  The statute is similar to recording statutes used for recording real property.  Thus, although there is no requirement to record an assignment, it is foolish not to do so.

Note that absent some unusual circumstance, patent assignments do not have to be notarized for use within the United States.

Preparing assignments is usually a simple matter of filling in the blanks of a form.  Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in  Strategic Patenting .

Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document.  The recording branch does not generally read the documents to verify the content.

The Patent office will proceed as if the signature had been procured from the inventor, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached.  Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights.

In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished.  Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact.

One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form.

In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees).

It depends on the wording of the assignment and the recordation laws of the foreign countries.  Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications.  Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country.

Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments.

Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office.  Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages.

The main disadvantage to recording assignments is that many countries (including most or all of Europe) consider assignment of a patent or application to be a taxable transfer, and charge VAT (Value Added Tax) on the estimated value of the application or patent.  Since the value is often low in the early days, and can rise considerably during the life of the patent, the disadvantage of recordation can be mitigated by registering early.

Assignments records at the USPTO are available for  public inspection , but only for patents and published applications.  One can search by reel/frame number, patent or publication number, and assignor or assignee name.

The underlying documents are not available for download, but can be ordered from the assignment branch.  Paper mail requests can take months, but faxed requests are usually filled within a day or two.

No.  One should never rely upon the designation of “assignee” as set forth on the face of a patent.  First, the patent office obtains the “assignment” information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct.  The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment.  Second, the patent is never altered after it is published.  Information that was correct at one point in time may well be superseded down the road.  Third, even if the “assignee” information is correct, one cannot know from the face of the patent what rights were assigned.  It might well be that only licensed rights were assigned, or that such rights are subject to a reversion.

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The following table lists the patent fees charged by the United States Patent and Trademark Office. USPTO  Trademark Fees  are listed separately. A complete copy of the USPTO's fee schedule is available from  their website . 

Quick Jump:  Patent Trials and Appeals Board (PTAB)  | PCT:   International Stage  -  National Stage  -  WIPO  |  Hague Convention 

USPTO Fee changes : Fees increased effective January 16, 2018 PCT Fee  Changes: Some International Stage and National Stage fees changed January 16, 2018 PCT Fee for search by EPO and Rospatent changed as of December, 2017 PCT Fee for search by IPO Singapore changed as of November 1, 2017 PCT Fee for sarch by ILPO changes as of July 1, 2017 PCT Fees for search by JPO and KIPO changed as of March 1, 2017 WIPO fees  and  International Fees  changed January 1, 2017 The "Large Entity Fee", "Small Entity Fee" and "Micro Entity Fee" columns on this page incorporate changes to USPTO fees which became effective through the last update of this page - changes which have been announced, but are not yet effective, are listed in the "pending fees" columns. Upcoming changes will be incorporated as they are announced.  See  this page on our website  for instructions on how to decide if you are entitled to small entity or micro-entity fees.    DESCRIPTION Large Entity Fee Small Entity Fee Micro Entity Fee Utility Application Basic Filing Fee 320 128 64 Utility Application Basic Filing Fee (Small Entity) if filed electronically n/a 64 n/a Excess Claims: more than three  Independent Claims  (per indep. claim over 3) 480 192 96 Excess Claims: more than 20 total claims (per claim over 20) 100 40 20 Excess Claims: surcharge if there are any  multiple dependent claims 860 344 172 Utility Application Search Fee 700 280 140 Utility Application Examination Fee 800 320 160 Surcharge - Late Filing Fee, search fee, examination fee or oath/declaration 160 64 32 Surcharge - Late Provisional Filing Fee or Cover Sheet 60 24 12 Design Filing Fee or  Continuing Prosecution Application (CPA) 220 88 44 Design Search Fee 160 64 32 Design Examination Fee 640 256 128 Reissue Filing Fee 320 128 64 Reissue Search Fee 700 280 140 Reissue Examination Fee 2,320 928 464 Plant Filing Fee 220 88 44 Plant Search Fee 440 176 88 Plant Examination Fee 660 264 132 Provisional Application Filing Fee 300 120 60 Excess pages (all applications) - if more than 100 pages, per add'l 50 pages  (note: each page in an electronically filed application counts as 3/4 of a page for the purpose of calculating this fee, so that for electronically filed applications this fee becomes, in effect, $420/168/84 for each additional 66 pages if there are more than 133 electronically filed pages)  420 168 84 Extension - First Month 220 88 44 Extension - Second Month 640 256 128 Extension - Third Month 1,480 592 296 Extension - Fourth Month 2,320 928 464 Extension - Fifth Month 3,160 1,264 632 Request for Continued Examination (RCE) (first request) 1,360 544 272 Request for Continued Examination (RCE) (second or more request) 2,000 800 400 Correcting inventorship after first action on the merits (FAOM) Note: does not apply if inventor(s) are deleted, and statement is filed that correction is solely due to cancelation of claims in the application. 640 256 128 "Request for Prioritized Examination" (a/ka/ "Track I" or "Fast Track") of Utility Application 4,200 1,680 840 Request for Expedited Examination of Design Application 1,600 640 320 Petitions under the following 37 CFR sections (group I): § 1.36(a) - for revocation of a power of attorney by fewer than all applicants § 1.53(e) - to accord a filing date. § 1.57(a) - to accord a filing date. § 1.182 - for decision on a question not specifically provided for. § 1.183 - to suspend the rules. § 1.378(e) - for reconsideration of decision on petition refusing to accept delayed payment of maintenance fee in an expired patent. § 1.741(b) - to accord a filing date to an application under § 1.740 for extension of a patent term. 420 168 84 Petitions under the following 37 CFR sections (group II) § 1.12 -for access to an assignment record. § 1.14 -for access to an application. § 1.47 -for filing by other than all the inventors or a person not the inventor. § 1.59 -for expungement of information. § 1.103(a) - to suspend action in an application. § 1.136(b) - for review of a request for extension of time when the provisions of section 1.136(a) are not available. § 1.295 - for review of refusal to publish a statutory invention registration. § 1.296 - to withdraw a request for publication of a statutory invention registration filed on or after the date the notice of intent to publish issued. § 1.377 - for review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of a patent. § 1.550(c) - for patent owner requests for extension of time in ex parte reexamination proceedings. § 1.956 - for patent owner requests for extension of time in inter partes reexamination proceedings. § 5.12 -for expedited handling of a foreign filing license. § 5.15 - for changing the scope of a license. § 5.25 - for retroactive license. 220 88 44 Petitions under the following 37 CFR sections (Group III) § 1.19(g) -to request documents in a form other than that provided in this part. § 1.84 -for accepting color drawings or photographs. § 1.91 - for entry of a model or exhibit. § 1.102(d) - to make an application special. § 1.138(c) - to expressly abandon an application to avoid publication. § 1.313 - to withdraw an application from issue. § 1.314 - to defer issuance of a patent. 140 56 28 Processing fees under the following 37 CFR sections § 1.28(c)(3) - for processing a non-itemized fee deficiency based on an error in small entity status.  § 1.41 - for supplying the name or names of the inventor or inventors after the filing date without an oath or declaration as prescribed by § 1.63, except in provisional applications.  § 1.48 - for correcting inventorship, except in provisional applications.    -  but see new fee for filing change in inventorship after first office action §1.17(d), above § 1.53(b)(3) - to convert a provisional application filed under § 1.53(c) into a nonprovisional application under § 1.53(b).  § 1.55 - for entry of late priority papers.  § 1.71(g)(2) – to enter an amendment to the specification for purposes of 35 U.S.C. 103(c)(2) if not filed within the cited time periods  § 1.99(e) - for processing a belated submission under § 1.99.  § 1.103(b) - for requesting limited suspension of action, continued prosecution application (§ 1.53(d)).  § 1.103(c) - for requesting limited suspension of action, request for continued examination (§ 1.114).  § 1.103(d) - for requesting deferred examination of an application.  § 1.217 - for processing a redacted copy of a paper submitted in the file of an application in which a redacted copy was submitted for the patent application publication.  § 1.291(c)(5) - for processing a second or subsequent protest by the same real party in interest.  § 1.497(d) - for filing an oath or declaration pursuant to 35 U.S.C. 371(c)(4) naming an inventive entity different from the inventive entity set forth in the international stage.  § 3.81 - for a patent to issue to assignee, assignment submitted after payment of the issue fee. 140 56 28 §1.52(d) Non-English Specification 140 56 28 §1.221—for requesting voluntary publication or republication of an application. 140 140 140 Petition for Revival of an Abandoned Application for a Patent, for the Delayed Payment of the Fee for Issuing Each Patent, or for the Delayed Response by the Patent Owner in any 1453/2453/3453 1.17(m) Reexamination Proceeding 2,100 840 420 Submission of an Information Disclosure Statement (1.97) or third party submission (1.290(f)) 260 104 52 Processing fee for various actions on Provisional Applications (correcting inventorship, convert nonprovisional to provisional, etc)  50 50 50 Filing a submission after final rejection (1.129(a)) 880 352 176 Per add'l invention to be examined (1.129(b)) 880 352 176 Acceptance of Unintentionally delayed claim for priority 2,100 840 420 Utility or Reissue Issue Fee  1,200 480 240 Design Issue Fee 740 296 148 Plant Issue Fee 840 336 168 Publication fee - early, voluntary or normal 0 0 0 Publication fee - republication 320 320 320 Filing Application for patent term adjustment 210 210 210 Request for reinstatement of term reduced 420 420 420 Copy of Patent or Published Patent Application 3 3 3 Plant Patent Copy in color 15 15 15 Copy of Utility Patent or SIR in Color 25 25 25 Paper Copy of Patent Application as Filed 35 35 35 Paper Copy of File Wrapper (no page limit) 290 290 290 Paper copies of documents in file, other than application, per document 25 25 25 Electronic copy of File Wrapper 60 60 60 Certified or uncertified copy of document, not otherwise provided 25 25 25 For Assignment Records, Abstract of Title and Certification 35 35 35 Library Service 50 50 50 Copy of Non-U.S. Patent Document 25 25 25 Certificate of Correction 160 160 160 Processing fee for correcting inventorship in a patent 160 160 160 Request for ex parte Reexamination - streamlined * Micro-entity not available for third-party requestors 6,300 2,520 1,260* Request for ex parte Reexamination - non streamlined 12,600 5,040 2,520 Reexamination - excess independent claims 480 192 96 Reexamination - excess total claims 100 40 20 Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) 2,040 816 408 Statutory Disclaimer  note: no small or micro entity discount available 170 170 170 Maintenance Fee - 3.5 Years 2,000 800 400 Maintenance Fee - 7.5 Years 3,760 1,504 752 Maintenance Fee - 11.5 Years 7,700 3,080 1,540 Surcharge - Maintenance Fee - 6 Months 500 200 100 Extension of Term of Patent Under 1.740  note: no small or micro entity discount available 1,180 1,180 1,180 Initial Application for Interim Extension Under 1.790     note: no small or micro entity discount available 440 440 440 Subsequent Application for Interim Extension Under 1.790     note: no small or micro entity discount available 230 230 230 Request for Supplemental Examination 4,620 1,848 924 Reexamination ordered as a result of Supplemental Examination 12,700 5,080 2,540 Supplemental Examination document size - nonpatent reference 21-50 sheets 180 72 36 Supplemental Examination document size - nonpatent reference >50 sheets (per 50 sheets or part thereof) 300 120 60 International Type Search Report 40 40 40 Recording Patent Assignment, Agreement or other document - submitted electronically  0 0 0 Recording Patent Assignment, Agreement or other document -  not  submitted electronically 50 50 50 Publication in the OG 25 25 25 Handling Fee - Incomplete Application 140 140 140 Submission of Sequence Listing of 300 MB to 800 MB 1,060 424 212 Submission of Sequence Listing of more than 800 MB 10,500 4,200 2,100 Additional Fee for Overnight Delivery 40 40 40 Additional Fee for Expedited Service 170 170 170 PCT Fees - International Stage Large Entity Fee Small Entity  Fee* Micro Entity Fee* Transmittal Fee 260 104 52 PCT Search Fee for USPTO search  (note: Discount for prior US search has been eliminated) 2,180 872 436 Supplemental Search (per additional invention) 2,180 872 436 PCT Search Fee for European Patent Office (EPO) search  2,107 2,107 2,107 PCT Search Fee for IP Australia (IPAU) search  (Note: IP Australia may only be used for a limited number of technologies - be sure to check our  PCT News Page  for the latest list before choosing ISA/AU) 1,587 1,587 1,587 PCT Search Fee for Korean Patent Office (KIPO) search  (Note: IP Korea has a list of technologies they will not search - see our  PCT News Page  for the list)  1,003 1,003 1,003 PCT Search Fee for Israel Patent Office (ILPO) search  1,036 1,036 1,036 PCT Search Fee for Japanese Patent Office (JPO) search  (note: only for "green technology") 1,457 1,457 1,457 PCT Search Fee for Russian Patent Office (Rospatent) search 537 537 537 PCT Search Fee for IP Office of Singapore (IPOS) search  ( 1,622 1,622 1,622 Preliminary Exam Fee (if US was International Searching Agency) 640 256 128 Preliminary Exam Fee (if US was not ISA) 800 320 160 Supplemental Examination (per additional invention) 640 256 128 Non-electronic filing fee (additional fee for applications filed on paper) 400 200 200 Late Furnishing Fee for Providing a Sequence Listing in Response to an Invitation Under PCT Rule 13 ter 320 128 64 For information on which fees need to be paid to file an International Stage application, see  the note  below.  PCT Fees - National Stage Large Entity Fee Small Entity Fee*   Micro Entity Fee* Basic Filing Fee       Basic National Stage Fee 320 128 64 Fees in addition to Basic Fee       National Stage Search Fee (other - i.e. if none of the exceptions below apply) 700 280 140 - Search fee if USPTO issued IPER saying novelty, inventive step (nonobviousness) and industrial applicability have been satisfied for all claims entering the National Stage  0 0 0  - Search fee if USPTO was ISA and Int'l Search fee paid 140  56 28  - Search fee if USPTO not ISA, but Int'l Search Report is provided to USPTO no later than time at which search fee is paid 540 216 108 National Stage Examination Fee 800 320 160  - Exam fee if USPTO issued IPER saying novelty, inventive step (nonobviousness) and industrial applicability have been satisfied for all claims entering the National Stage  0 0 0 Claims - Extra Independent (Over 3) 480 192 96 Claims - Extra Total (Over 20) 100 40 20 Claims - if application has any multiple dependent claim (also affects total fee calculation) 860 344 172 Surcharge - Oath or Declaration filed after 30 months from priority date 160 64 32 English Translation filed after 30 Months from priority date (large or small entity) 140 56 28 Extra pages - for each 50 sheets over 100 420 168 84 Non-electronic filing fee (additional fee for applications filed on paper) 400 200 200 Fee for filing a petition to revive an international application abandoned unintentionally under 37 CFR 1.137(b) 2,100 840 420 Submission of Sequence Listing of 300 MB to 800 MB 1,060 424 212 Submission of Sequence Listing of more than 800 MB 10,500 4,200 2,100 For information on which fees need to be paid to file an International Stage application, see  the note  below.  PCT Fees - to WIPO or EPO Large Entity Fee Small Entity Fee*   Micro Entity Fee* Basic application fee (up to 30 pages)# 1,367 n/a n/a Basic application fee (up to 30 pages) filed on paper with PCT-EASY zip file# 1,264 n/a n/a Basic application fee if application is filed electronically with PCT-EASY zip file# 1,161 n/a n/a Basic supplemental fee (each page over 30)#       Handling Fee (Chapter II)# 206 n/a n/a International CD Application# 5,200 n/a n/a Fee for requesting restoration of the right of priority (unintentional only)  (No Micro Entity discount as of Dec. 18, 2013) 1,700 850 n/a # -  Note : These fees are actually paid by the USPTO to WIPO or EPO in Swiss Francs, and therefore they will change from time to time based on the fluctuations in the exchange rate. Treat these dollar amounts as estimates only, and check when paying fees as to what they actually are at that time. No small entity or micro entity discounts are applicable to WIPO or EPO fees.  * - Small Entity and Micro Entity discounts are only available for some (not all) fees charged by USPTO. Other authorities do not offer these discounts. If the fee in the "Small Entity Fee" or "Micro Entity Fee" column is "n/a", this means that the discount is not available, and the next-larger fee must be paid.   Note on Fees for Filing PCT Applications Not all of the fees listed in the various PCT sections will actually be paid in any given application. When filing an International Stage PCT application in the USPTO as receiving office, at least the following fees are required: Basic Application Fee (from this WIPO section) Transmittal Fee (from  PCT Fees - International Stage ) Search Fee - depends on which search authority is chosen (US, EP, KR, AU or RU) see  PCT Fees - International Stage When entering a PCT application into the National Stage in the USPTO, at least the following fees are required (from the  PCT Fees - National Stage  list, above): Basic National Stage Fee National Stage Examination Fee National Stage Search Fee Other application fees may apply, depending on the application, but these are the only ones which  every  PCT application filed in the USPTO will pay. Of course, the fees on this table are only the government fees. Attorney fees and expenses are in addition to these fees - for a more complete explanation, see our  Patent Budget Estimator Patent Trials and Appeals Board Fees Large Entity Fees Small Entity Fees Micro Entity Fee Petitions to the Chief Judge under 37 CFR 41.3 420 420 420 Notice of Appeal 840 336 168 Filing a Brief - appeal of application or Ex Parte Reexamination 0 0 0 Filing a Brief - appeal of Inter Partes Reexamination 2,100 840 420 Request for Oral Hearing 1,360 544 272 Forwarding an appeal in an application or Ex Parte Reexamination * Third-Party Filers Are Not Eligible for the Micro Entity Fee. 2,360 944 472* Inter partes review (IPR) - request fee, up to 20 claims 19,000 19,000 19,000 IPR - Post-institution fee, up to 20 claims 22,500 22,500 22,500 IPR - claims in excess of 20 for inter partes review - in addition to request fee  (per claim) 375 375 375 IPR - claims in excess of 20 for inter partes review - in addition to post-institution fee  (per claim) 750 750 750 Post-grant Review (PGR) or a covered business method (CBM) review - request fee, up to 20 claims 20,000 20,000 20,000 PGR or CBM - post-institution fee, up to 20 claims 27,500 27,500 27,500 PGR or CBM - claims in excess of 20, in addition to request fee (per claim) 475 475 475 PGR or CBM - claims in excess of 20, in addition to post-institution fee (per claim) 1,050 1,050 1,050 Derivation Petition 420 420 420 Request to make a settlement agreement and other requests filed in a patent trial proceeding  420 420 420 Hague Convention Fees Transmittal Fee 120 48 24 International design application fees payable to WIPO - see  WIPO Fee Calculator var var var Notes:  For further information regarding fee amounts or to request a copy of the PTO fee schedule, please contact the USPTO General Information Services Division by phone at (800) 786-9199 [PTO-9199] or (703) 308-4357 [308-HELP], or by fax at (703) 305-7786. PTO fees are subject to change. Usually, new fees take effect in the Fall, typically October-December. Be sure to check for the latest fees before filing anything.  PCT fees change more or less quarterly, as exchange rates change. See note above in " PCT Fees to WIPO or EPO "  The preceding table was taken from information supplied by the  USPTO web site . Additional legal and handling fees may apply for preparing and processing paperwork for payment of these fees. Back  to Patents Page Back to  Patent Budget Estimator

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Which Significant USPTO Fee Increases Might We See in 2025?

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

The USPTO Fee-Setting Process

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

PPAC Comments On Proposed Fee Adjustments

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

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

Mixed Support for Across the Board Fee Increases

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

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

Opposed New Assignment Recordation Fees

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

Support for Increased Excess Claim Fees

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

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

Support for New Escalating IDS Fees

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

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

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

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

Opposed New Escalating Terminal Disclaimer Fees

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

Conditional Support for New After-Final Consideration Program Fee

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

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

Support for Revised RCE Fee Structure

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

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

Mixed Support for New Continuing Application Fees

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

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

Conditional Support for Increased Patent Term Adjustment Reconsideration Fee

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

Qualified Support for Increased Patent Term Extension Application Fee

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

Mixed Support for PTAB Trial Fees

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

Will These Fees Change Applicant Behavior?

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

patent assignment recordation fee

Courtenay C. Brinckerhoff

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

patent assignment recordation fee

How to Perfect a Security Interest in Patents

This How-To Guide addresses how to perfect a security interest in patents.

Carefully research and adapt the following material to the facts and circumstances of your matter and verify the currency of the legal authorities.

Step 1: Understand Financing Statements Under Division 9 of the Commercial Code

The creation, perfection, priority, and enforcement of security interests in personal property are (subject to exceptions) the subject of Division 9 of the California Commercial Code , which is California's version of  Article 9 of the Uniform Commercial Code , as revised effective July 1, 2001, and later amended.   ( Com. Code, § 9701 .)

Two documents are normally essential to a valid and perfected security interest in personal property collateral:

The security agreement (a contractual document, in which the security interest is created ); and

The financing statement (a notice document filed with a public office, such as a Secretary of State's office, in which the security interest is perfected ).

The security interest may be perfected by the filing of a financing statement that meets the requirements of UCC Article 9 . Sections 9–502 and 9–516(b) of UCC Article 9 , as enacted in the state whose local law governs perfection and in which filing is to occur , specify the required contents of a financing statement.

In many transactions involving California real property and associated personal property, it is necessary to file the financing statement in a state other than California.   If the filing is to be made in another state,  Article 9  as adopted in that state should be consulted.   There are some state-to-state differences in the perfection rules. See Strategic Choice of Law Considerations for Multistate Division 9 Transactions in the Related Documents section, below.  

Step 2: File Financing Statement

You perfect a security interest in a patent by filing a financing statement with the state.

Current case law indicates that perfection is achieved through filing a financing statement with the Secretary of State.   ( Moldo v. Matsco, Inc. (In re Cybernetic Servs., Inc.) (9th Cir 2001) 252 F.3d 1039, 1059 ( state law governs perfection of security interests in patents ); compare In re World Auxiliary Power Co. (9th Cir 2002) 303 F.3d 1120 ( state law governs perfection of non-federally registered copyrights ). )

File a financing statement with the Secretary of State covering both :

The patent ; and

The patent application .

For detailed discussion of the steps to take to file a financing statement, see How to Perfect a Security Interest in Personal Property by Filing a UCC-1 Financing Statement in the Related Documents section, below.

Step 3: Consider Also Recording With the Federal Government

You perfect a security interest in a patent by filing a financing statement with the state, but consider also recording a copy of the security agreement with the U.S. Patent and Trademark Office (USPTO) as a precaution and to protect your client’s interest against that of a bona fide purchaser for value.  

A. When to Record

1. comply with statutory deadline to obtain priority.

Record within 3 months after the grant of the collateral assignment.   (See  35 U.S.C. § 261 .)

“An interest that constitutes an assignment, grant or conveyance” ( e.g., a grant of a security interest) of a patent or application for patent “shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” ( 35 U.S.C. § 261 .)

2. Try to Meet Precautionary Deadline

If possible, record within 30 days to avoid any argument that the transfer is an avoidable preference or unperfected security interest under the Bankruptcy Code .   (See  11 U.S.C. §§ 544, subd. (a) , 547, subd. (e) .)

B. How to Record by Use of Filing Service

You can use the following service to file against patents (and copyrights and trademarks as well) and to search for filings:

CompuMark (owned by Clarivate)

3133 W. Frye Rd

Chandler, AZ 85226.

https://clarivate.com/compumark/

To submit an order request from CompuMark, submit it through this link .

Because of the many technical requirements, use of a service is advisable.

C. How to Record by Filing on Paper with the USPTO

Requests to record patent assignment documents may be filed on paper. See the USPTO’s patent assignments page here .

1. Prepare Appropriate Cover Sheet

Each document submitted to the USPTO for recording must include a single recordation cover sheet (as specified in 37 C.F.R. § 3.31 ) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document must be recorded. ( 37 C.F.R. § 3.28 .)

If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. ( 37 C.F.R. § 3.28 , emphasis added.)

Obtain a cover sheet (form PTO-1595 ) from the USPTO (cover sheets can also be downloaded here from the USPTO’s website) or prepare a cover sheet containing the following information ( 37 C.F.R. § 3.31 ):

The name, address, entity and citizenship of the secured party; and

The name and address of the debtor.

If the party receiving the interest ( i.e., the secured party) is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture. ( 37 C.F.R. § 3.31(a)(8) .)

Security Interest

Describe the interest conveyed or transaction to be recorded,  e.g.,  an assignment of a patent as a security interest.

Identification of Patent

Provide identification of the patent, as follows:

If the patent is recorded , use the patent number.

If the assignment relates to a recorded application , provide:

The application number consisting of the series code and serial number,  e.g.,  07/123,456;

The serial number and date of recordation ; or

An international patent application number , if applicable.

If the assignment is executed concurrently with or subsequent to an application for a patent but before the application is recorded, provide:

The date of execution of the application;

The inventor's name; and

The title of the invention.

Who Should Receive Notice

The name and address of the party to whom correspondence about the request to record the document should be mailed; and

The name and address of the domestic representative of the secured party if the secured party is not domiciled in the United States (see  37 CFR § 3.61 ).

Fee Enclosed

Indicate the number of registrations or applications identified in the cover sheet and the total fee enclosed.

Provide the date the document was executed.

Verification and Signature

Provide a verification statement by the party submitting the document that, to the best of the person's knowledge and belief:

The information on the cover sheet is true and correct;

The person intends to utilize the assignment; and

Any copy submitted is a true copy of the original document.

Finally. provide the signature of the party submitting the document.

2. Enclose Fee

If not filed electronically, enclose payment of a fee of $50 for each patent or application. ( 37 C.F.R. § 1.21 .)

Current fees are available on the USPTO’s website here . Search for fee code 8021 ($50 fee for recording each patent assignment, agreement, or other paper, per property -- if not submitted electronically). The $50 fee is the same for small and micro entities. No recording fee currently applies for electronic submissions.

Filing fees are subject to change.   To be certain, either use a filing service or check with the USPTO before filing.

3. Mail Documents and Fee

Mail a copy of the security agreement, cover sheet, and fee to ( 37 CFR §3.27 ):

Mail Stop Assignment Recordation Branch Director of the U. S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 (571) 272-3350 or (800) 786-9199 https://www.uspto.gov/

D. How to Record by e-Filing via the USPTO’s Electronic Patent Assignment System (EPAS)

You can e-file directly with the USPTO by logging onto the Electronic Patent Assignment System ( EPAS) page on its website. The USPTO also provides guidelines for using EPAS.

1. Getting Started

Before logging onto the website, scan the executed security agreement into a PDF file and keep it in a handy location for uploading to EPAS.

Scroll to the bottom of the USPTO’s EPAS page and click “Please click here to access EPAS forms.”

2. Prepare Cover Sheet

Click on "Start," or, if you file many assignments with the same conveying or receiving parties, you may want to create a template.

3. Conveyance Type

Select "Security Interest" and click on "Next Screen."

4. Correspondence Information

Enter the contact information of the person who will receive the notice.   Select "Next Screen."

5. Conveying Party

Enter the conveying party's name, organizational type (if not an individual), and state of organization or state or county of citizenship (if an individual).

Enter any former names.

Enter the date the security agreement was executed.

Select "Add and Go To The Next Screen" or, if you want to review what you entered, select "Add."

6. Receiving Party

Enter the receiving party's name, organizational type (if not an individual), and state of organization or state or country of citizenship (if an individual).

Enter the address of the receiving party.

Select "Add and Go To The Next Screen," or, if you want to review what you entered, select "Add."

7. Properties

Enter registered or unregistered patents as described in the manual filing instructions under "Identification of Patent."   When complete, select "Next Screen."

Unlike the equivalent USPTO trademark assignment software (ETAS), in which each serial number or registration number entered will reflect the actual trademark information in the USPTO’s database, with EPAS the patent submission form will not provide you with specific information about the application number or registration number entered into the system ( i.e., that it reflects a patent or application in the database) until you receive the acknowledgment.   Therefore, be sure that you have the correct application or registration numbers.

8. Image Attachments

Locate your PDF copy of the security agreement and select "Attach File."   The system will show you a small image of each of the pages.   Select "Next Screen."

9. Signature

This page allows the filer to review the entire filing.   If the cover sheet looks correct, add an electronic signature of the party filing this document (e.g., /Randy Rogers/).   Select "Next Screen."

10. Validation

This is your final chance to review the entire submission of the assignment and go back to make any corrections.

All required fields on the electronic filing are indicated by an asterisk.   At any time, you can always go back to previous screens without losing any information.

At the bottom of the screen, the USPTO provides you the total fees based on the same calculations noted earlier in the manual filing method.

11. Payment

Select the method of payment:

Credit card;

Deposit Account (this method will require you to have set up an account with the USPTO); or

Electronic Funds Transfer (EFT), which will be drawn directly from your savings or checking account, as allowed by your banking institution.

Once you have completed these steps, you have submitted your Patent Assignment.

12. Acknowledgment

Print out the completed submission for your records.   Typically, you will receive an email from the USPTO confirming the submission within 24 hours.

Within a week of the submission, you should receive an emailed or a faxed copy of the filing acknowledgment for your records.

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Part of the Workflow

Secured personal property transactions, document outline.

patent assignment recordation fee

IMAGES

  1. Uspto Patent Assignment Dataset

    patent assignment recordation fee

  2. Patent Assignment Template

    patent assignment recordation fee

  3. ASSIGNMENT OF PATENT

    patent assignment recordation fee

  4. Patent assignment agreement template in Word and Pdf formats

    patent assignment recordation fee

  5. Patent Docs: Proposed USPTO Fee Increases and New Annual Patent

    patent assignment recordation fee

  6. Patent Assignment Agreement, effective August 22, 2022, by and

    patent assignment recordation fee

VIDEO

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

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  6. Roadmap for Patent Creation Week 1 Quiz Assignment Solution

COMMENTS

  1. USPTO fee schedule

    Patent fees. The fees subject to reduction upon establishment of small entity status (37 CFR 1.27) or micro entity status (37 CFR 1.29) are shown in separate columns. ... Recording each patent assignment, agreement or other paper, per property - if not submitted electronically: 50.00: 50.00: 50.00: 8022: 1.21(i) Publication in Official ...

  2. 37 CFR Part 3 -- Assignment, Recording and Rights of Assignee

    (b) After payment of the issue fee: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of ...

  3. Patent assignment—How-to guide

    There is a $40 fee for recording each assignment of a patent or patent application. If you are submitting your transfer papers to the USPTO by mail, you should send them (together with a cover sheet and the fee) to Mail Stop Assignment Recording Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA ...

  4. Recording of Assignments

    2020-06-24. No Comments. The Office records assignments, grants, and similar instruments sent to it for recording, and the recording serves as notice. If an assignment, grant, or conveyance of a patent or an interest in a patent (or an application for patent) is not recorded in the Office within three months from its date, it is void against a ...

  5. Patent Assignment

    Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits. ... Steps to File a Patent Assignment. 1. Fill Out a Recordation Form Cover Sheet. The Recordation Form Cover Sheet is an official USPTO document. This includes the ...

  6. Understanding Patent Assignments: Definition, Usage, Benefits, and

    A patent assignment is a legal mechanism through which ownership rights of a patent are transferred from one party (the assignor) to another (the assignee). ... Recording Fees: Pay the required ...

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

    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?

  8. Best practice for recording US patent assignments

    Old-timers (or at least, practitioners who were in practice prior to January 1, 2014) will recall the days when it was necessary to pay a government fee to record a patent assignment. In those old days, practitioners would go to great lengths to try to avoid paying two fees if there was a way to squeeze two recordations into a single ...

  9. Assignment Center

    Regarding patents and patent applications, assignment records cannot be canceled and are rarely expunged; see MPEP 323.01 for correction of assignment records. For further information, please contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 a.m. to 5 p.m. ET.

  10. Frequently Asked Questions about Patent Assignment

    Thus, if an assignment references a family of 5 patent applications, the recorda­tion fee is US$ 200. Of course paralegal charges would also apply, and possibly attorney time. ... The main disadvantage to recording assignments is that many countries (including most or all of Europe) consider assignment of a patent or application to be a ...

  11. USPTO Patent Fees

    Recording Patent Assignment, Agreement or other document - submitted electronically . 0: 0: 0: Recording Patent Assignment, Agreement or other document - not submitted electronically. 50: 50: 50: Publication in the OG. 25: 25: 25: Handling Fee - Incomplete Application. 140: 140: 140: Submission of Sequence Listing of 300 MB to 800 MB: 1,060: ...

  12. Federal Register :: Recording Assignments

    The filing fee for submitting a patent assignment as indicated by 37 CFR 1.21 (h) is $40 per property for recording each document, while the filing fee for submitting a trademark assignment as indicated by 37 CFR 2.6 (b) (6) is $40 for recording the first property in a document and $25 for each additional property in the same document.

  13. United States Patent and Trademark Office

    This searchable database contains all recorded Patent Assignment information from August 1980 to the present. When the USPTO receives relevant information for its assignment database, the USPTO puts the information in the public record and does not verify the validity of the information. Recordation is a ministerial function--the USPTO neither ...

  14. PDF RECORDATION FORM COVER SHEET PATENTS ONLY

    DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Mail Stop Assignment Recordation Services, Director of the . USPTO, P.O. Box 1450, Alexandria, VA 22313-1450. ... for the recordation of assignments related to patents and patent applications. Submission of this . information is voluntary but is required in order for the USPTO to ...

  15. Significant New USPTO Fees Proposed for 2025

    The fee for a Patent Term Extension application (e.g., based on FDA review of a regulated product) would increase 468% from $1180 to $6700 ... Assignment recordation (paper): $60; The Executive Summary suggests that re-imposing the assignment recordation fee withdrawn in 2014 will "discourage frivolous submissions" as well as help recover ...

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

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

  17. How to Perfect a Security Interest in Patents

    Enclose Fee. If not filed electronically, enclose payment of a fee of $50 for each patent or application. (37 C.F.R. § 1.21.) Current fees are available on the USPTO's website here. Search for fee code 8021 ($50 fee for recording each patent assignment, agreement, or other paper, per property -- if not submitted electronically).

  18. 323-Procedures for Correcting Errors in Recorded Assignment Document

    The "corrective document" must include the following: (A) A copy of the original assignment document with the corrections made therein. The corrections must be initialed and dated by the party conveying the interest; and. (B) A new Recordation Form Cover Sheet (form PTO-1595) (See MPEP § 302.07 ). The new recordation form cover sheet must ...