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.

assignment agreement patent

O btaining Written Assignments for New Patent Applications

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

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

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

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

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

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

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

Recording a Patent Assignment With the USPTO

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

So the patent owner (the Assignee) should should record the assignment through the  USPTO’s Assignment Recordation Branch . They can use the  Electronic Patent Assignment System (EPAS)  to file a  Recordation Cover Sheet  along with a copy of the actual patent assignment agreement.

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

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

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

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

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

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

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

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

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

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

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

N eed Help With Your Patent Assignments?

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

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

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

assignment agreement patent

Michael K. Henry, Ph.D.

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

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

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

Patent Rebel

What is a Patent Assignment?

Whether you’re curious about assigning a patent to someone else or having a patent assigned to you, you might be wondering what a patent assignment is? Patent law allows patent holders to assign patents to other parties. Patent assignments often take place between an employee and his company, however, it’s not uncommon for a person to assign his interest to a patent to a third party. So, what exactly is a patent assignment? We will cover this below.

What is a Patent Assignment ?

A patent assignment is an agreement by the patent holder (assignor) to transfer his interest and ownership of a patent to another party known as the assignee (party receiving patent rights). Once a patent holder executes an assignment agreement assigning his interest in a patent to another party, the assignor loses his rights under the patent. The assignor (transferor) will no longer be able to stop others from using, making, and selling the patent invention. Instead, the assignee gains these rights.

In the United States, patent assignments are very common between an employee and his company because a company or business cannot apply for a patent. An inventor has to apply for a patent and then the inventor then assigns his interest under a patent to the company for which he is working.

An assignment transfers the ownership of the patent from the inventor or employee to the company for which he is working. That said, assignments can also be made by any two parties that agree to transfer ownership of a patent.

So, now we know that a patent holder can transfer his patent rights to a third party, can an inventor assign a pending patent application? Absolutely, yes! An inventor can assign his rights under a pending patent application to another party.

If you’re an inventor and you want to assign your patent to another party, just remember that patent assignments are final. Once an inventor assigns (transfers) his interest in a patent to another party, the assignment (transfer of rights) cannot be undone, it’s final.

What is a Patent Assignor?

A patent assignor is a party that transfers it’s interest and right to the patent to the transferee (assignee) or the party receiving the patent. Once an agreement is executed and recorded with the patent office, the assignee becomes the patent right holder.

What is a Patent Assignee?

A patent assignee is a person to whom the patent rights are transferred to. Said differently, the assignee is the new owner of the patent. An assignee should immediately record an assignment agreement with the patent office to establish his rights as the new patent owner.

Requirements to Execute a Patent Assignment Agreement

For a patent holder to assign (transfer) his interest in a patent to another party, the assignor (person transferring patent rights) must execute a written agreement that includes details, such as the name of the assignor and the assignee, as well as the patent that is to be assigned (transferred) to the assignee.

Once the assignment agreement is executed, it must be filed with the USPTO for the agreement to take effect. Please remember that the agreement needs to be in writing, oral agreements are not sufficient to transfer the rights from the patent holder to the assignee.

The assignment agreement must include the following information:

  • The agreement must contain the legal names of both the assignor (person transferring patent rights) and the assignee (person receiving patent rights).
  • The agreement must clearly identify the patent by stating the name of the patent, as well as the patent number.
  • The terms of the agreement must be included in the assignment agreement.
  • Both the assignor(s) and assignee(s) must sign the agreement.

Who Owns the Patent After a Patent Assignment?

Once the assignor and assignee execute an assignment agreement and file the assignment with the USPTO, the assignee owns the patent. As the new patent owner, the assignee will have the right to stops others from using, making, and selling the patented invention for the remaining patent term.

The assignor (person who transferred his rights) loses his rights under the patent and will no longer be able to enforce the patent. Assigning a patent is similar to selling a car and registering the title in someone else’s name. Once the patent is assigned, similar to registering the title of a vehicle in someone else’s name, the new owner is the assignee (person to whom the patent was transferred to). Once the assignment is recorded with the patent office, the records will be updated to show the assignee (new owner) of the patent. This information will then be made available to the public.

Assigning a Patent vs Licensing a Patent

Assigning a patent is much different than licensing a patent. When a patent holder assigns his interest in a patent to another party, he is usually transferring ownership of the patent to the other party. Patent licensing is different in that a license is merely a transfer of the right to use the patent in the manner specified in the licensing agreement. Assignments transfer ownership while a license transfers the right to use the patented invention. That said, if a patent is assigned, the information of the assignor and assignee will become part of the public record. Whereas if an inventor licenses his patent, that information is not typically published to the public.

Does a Patent Assignment Need to be Notarized?

The USPTO does not require patent assignments to be notarized. The patent office only requires that the assignment be executed and signed by both the assignor and the assignee. Once an agreement is executed and signed by the parties, the assignment must be recorded with the patent office.

If the assignee fails to record the assignment, there is nothing to protect the assignee from the assignor assigning the patent to a third party. So, if you’re an assignee, make sure to record your assignment as soon as it’s executed to avoid problems.

Although a patent assignment does not need to be notarized, notarizing it can be beneficial in the event that the previous patent holder claims that he did not make the assignment. It’s an added layer of protection that could prove to be very valuable.

Can Multiple People Own a Patent?

Yes, multiple people can own a patent. For example, if three inventors make a single invention, all three are considered joint inventors and their names should appear on the patent application, as well as the issued patent.

If there are multiple inventors on a patent application, all inventors must execute an assignment agreement to assign each of their interest to the assignee for the assignee to own the entire patent.

For example, if only 1 of 3 inventors assigns his interest, the assignment would be a partial assignment until all 3 inventors each assign (transfer) their interest to the assignee.

Patent Assignment Tips

1) hire an attorney to assist you with your patent assignment.

Any individual who’s either an assignor or assignee should hire an attorney to assist with the assignment of a patent. Attorneys will ensure that the assignment agreement complies with the law and contains all of the information that is required for a successful patent assignment. Although it’s not unheard of for parties to execute an assignment agreement on their own, making a mistake could cause legal troubles down the road.

2) Don’t Forget to Record A Patent Assignment

If you have been assigned a patent, don’t forget to record your assignment with the USPTO. We say this because patent assignments don’t go into effect unless the assignment is recorded with the patent office. Recording a patent assignment tells the patent office that you are the new owner of the patent.

If an assignee does not record the assignment with the patent office, it is as if the assignment never took place. Also, if it’s not recorded, the assignor could possibly assign the patent to a third party. So, make sure to record your assignment as quick as possible.

3) Notarize Your Assignment Agreement

It’s good practice to have an assignment agreement notarized. This helps in a situation where the assignor claims that he did not execute the assignment agreement. In the event that an assignor claims he did not execute the assignment agreement, you will have evidence to show otherwise. The burden may shift to the assignor to prove that he did not execute the assignment agreement. So, notarize your agreement, as well as other documents relating to the assignment of a patent.

4) How Much Does it Cost to Record an Assignment with the USPTO?

It’s currently free to record an assignment with the USPTO if a party submits the assignment electronically. However, if a party chooses to record the assignment agreement by paper, there is a $50 fee for the service. So, record your assignment online if you want to avoid paying anything. That said, you may need to publish your assignment in an official gazette, such publication does cost $25.

Patent Assignment

Let’s do a quick recap. A patent assignment is the transfer of ownership of a patent from one party to another. The party transferring its right is known as the assignor and the party receiving the patent rights is known as the assignee.

To assign a patent, both parties must execute a written assignment agreement to reflect the transfer of ownership. Once the parties execute the agreement, they must record it with the patent office to establish the new ownership. If you have any general questions or comments, please feel free to leave them in the comments section below.

assignment agreement patent

My name is Noah and I love everything about patents and patent law. During my law school years, I studied intellectual property law and took courses in patent law, trademark law, and copyright law. I graduated from Loyola Marymount Law School and obtained my Juris Doctorate in 2014.

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Patent Assignment Agreement

Jump to section, what is a patent assignment agreement.

A patent assignment agreement is a document that transfers the rights to an invention or idea from one person or company to another. This agreement includes all necessary information such as the name and contact information for both parties, any limitations on what can be done with the patented technology, and how much money should change hands if someone licenses the patent.

Patent assignment agreements are not always needed when selling a product or process, but they need to be written if you want to protect your intellectual property (IP) rights and make sure no one else uses them without permission.

Common Sections in Patent Assignment Agreements

Below is a list of common sections included in Patent Assignment Agreements. These sections are linked to the below sample agreement for you to explore.

Patent Assignment Agreement Sample

Reference : Security Exchange Commission - Edgar Database, EX-10.19 4 dex1019.htm PATENT ASSIGNMENT AGREEMENT , Viewed December 14, 2021, View Source on SEC .

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assignment agreement patent

This patent assignment is between  , an individual a(n) (the " Assignor ") and  , an individual a(n) (the " Assignee ").

The Assignor has full right and title to the patents and patent applications listed in Exhibit A (collectively, the " Patents ").

The Assignor wishes to transfer to the Assignee, and the Assignee wishes to purchase and receive from the Assignor, all of its interest in the Patents.

The parties therefore agree as follows:

1. ASSIGNMENT OF PATENTS.

The Assignor assigns to the Assignee, and the Assignee accepts the assignment of, all of the Assignor's interest in the following in the United States and its territories and throughout the world:

  • (a) the Patents listed in Exhibit A ;
  • (b) the patent claims, all rights to prepare derivative works, goodwill, and other rights to the Patents;
  • (c) all registrations, applications (including any divisions, continuations, continuations-in-part, and reissues of those applications), corresponding domestic and foreign applications, letters patents, or similar legal protections issuing on the Patents, and all rights and benefits under any applicable treaty or convention;
  • (d) all income, royalties, and damages payable to the Assignor with respect to the Patents, including damages and payments for past or future infringements of the Patents; and
  • (e) all rights to sue for past, present, and future infringements of the Patents.

2. CONSIDERATION.

The Assignee shall pay the Assignor a flat fee of as full payment for all rights granted under this agreement. The Assignee shall complete this payment no later than .

3. RECORDATION.

In order to record this assignment with the United States Patent and Trademark Office and foreign patent offices, within hours of the effective date of this assignment, the parties shall sign the form of patent assignment agreement attached as Exhibit B . The Assignor Assignee is solely responsible for filing the assignment and paying any associated fees of the transfer.

4. NO EARLY ASSIGNMENT.

The Assignee shall not assign or otherwise encumber its interest in the Patents or any associated registrations until it has paid to the Assignor the full consideration provided for in this assignment. Any assignment or encumbrance contrary to this provision shall be void.

5. ASSISTANCE.

  • (1) sign any additional papers, including any separate assignments of the Patents, necessary to record the assignment in the United States;
  • (2) do all other lawful acts reasonable and necessary to record the assignment in the United States; and
  • (3) sign all lawful papers necessary for Assignee to retain a patent on the Patents or on any continuing or reissue applications of those Patents.
  • (b) Agency. If for any reason the Assignee is unable to obtain the assistance of the Assignor, the Assignor hereby appoints the Assignee as the Assignor's agent to act on behalf of the Assignor to take any of the steps listed in subsection (a).

6. NO LICENSE.

After the effective date of this agreement, the Assignor shall make no further use of the Patents or any patent equivalent, except as authorized by the prior written consent of the Assignee. The Assignor shall not challenge the Assignee's use or ownership, or the validity, of the Patents.

7. ASSIGNOR'S REPRESENTATIONS.

The Assignor hereby represents to the Assignee that it:

  • (a) is the sole owner of all interest in the Patents;
  • (b) has not transferred, exclusively licensed, or encumbered the Patents or agreed to do so;
  • (c) is not aware of any violation or infringement of any third party's rights (or a claim of a violation or infringement) by the Patents;
  • (d) is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment;
  • (e) was not acting within the scope of employment of any third party when conceiving, creating, or otherwise performing any activity with respect to the Patents.

The Assignor shall immediately notify the Assignee in writing if any facts or circumstances arise that would make any of the representations in this assignment inaccurate. 

8. INDEMNIFICATION.

The Assignor shall indemnify the Assignee against:

  • (a) any claim by a third party that the Patents or their creation, use, exploitation, assignment, importation, or sale infringes on any patent or other intellectual property;
  • (b) any claim by a third party that this assignment conflicts with, violates, or breaches any contract, assignment, license, sublicense, security interest, encumbrance, or other obligation to which the Assignor is a party or of which it has knowledge;
  • (c) any claim relating to any past, present, or future use, licensing, sublicensing, distribution, marketing, disclosure, or commercialization of any of the Patents by the Assignor; and
  • (d) any litigation, arbitration, judgments, awards, attorneys' fees, liabilities, settlements, damages, losses, and expenses relating to or arising from (a), (b), or (c) above.
  • (i) the Assignee promptly notifies the Assignor of that claim;
  • (ii) the Assignor controls the defense and settlement of that claim;
  • (iii) the Assignee fully cooperates with the Assignor in connection with its defense and settlement of that claim;
  • (iv) the Assignee stops all creation, public use, exploitation, importation, distribution, or sales of or relating to the infringing Patents, if requested by the Assignor.
  • (i) obtain the right for the Assignee to continue to use the infringing Patent;
  • (ii) modify the infringing Patent to eliminate the infringement;
  • (iii) provide a substitute noninfringing patent to the Assignee pursuant to this assignment; or
  • (iv) refund to the Assignee the amount paid under this assignment for the infringing Patent.
  • (c) No Other Obligations. The Assignor shall have no other obligations or liability if infringement occurs, and shall have no other obligation of indemnification or to defend relating to infringement. The Assignor shall not be liable for any costs or expenses incurred without its prior written authorization and shall have no obligation of indemnification or any liability if the infringement is based on (i) any modified form of the Patents not made by the Assignor, (ii) any finding or ruling after the effective date of this assignment, or (iii) the laws of any country other than the United States of America or its states.

9. GOVERNING LAW.

  • (a) Choice of Law. The laws of the state of  govern this agreement (without giving effect to its conflicts of law principles).
  • (b) Choice of Forum. Both parties consent to the personal jurisdiction of the state and federal courts in County, .

10. AMENDMENTS.

No amendment to this assignment will be effective unless it is in writing and signed by a party or its authorized representative.

11. ASSIGNMENT AND DELEGATION.

  • (a) No Assignment. Neither party may assign any of its rights under this assignment, except with the prior written consent of the other party. All voluntary assignments of rights are limited by this subsection.
  • (b) No Delegation. Neither party may delegate any performance under this assignment, except with the prior written consent of the other party.
  • (c) Enforceability of an Assignment or Delegation. If a purported assignment or purported delegation is made in violation of this section, it is void.

12. COUNTERPARTS; ELECTRONIC SIGNATURES.

  • (a) Counterparts. The parties may execute this assignment in any number of counterparts, each of which is an original but all of which constitute one and the same instrument.
  • (b) Electronic Signatures. This assignment, agreements ancillary to this assignment, and related documents entered into in connection with this assignment are signed when a party's signature is delivered by facsimile, email, or other electronic medium. These signatures must be treated in all respects as having the same force and effect as original signatures.

13. SEVERABILITY.

If any one or more of the provisions contained in this assignment is, for any reason, held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or unenforceability will not affect any other provisions of this assignment, but this assignment will be construed as if those invalid, illegal, or unenforceable provisions had never been contained in it, unless the deletion of those provisions would result in such a material change so as to cause completion of the transactions contemplated by this assignment to be unreasonable.

14. NOTICES.

  • (a) Writing; Permitted Delivery Methods. Each party giving or making any notice, request, demand, or other communication required or permitted by this assignment shall give that notice in writing and use one of the following types of delivery, each of which is a writing for purposes of this assignment: personal delivery, mail (registered or certified mail, postage prepaid, return-receipt requested), nationally recognized overnight courier (fees prepaid), facsimile, or email.
  • (b) Addresses. A party shall address notices under this section to a party at the following addresses:
  • If to the Assignor: 
  • If to the Assignee: 
  • (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.

15. WAIVER.

No waiver of a breach, failure of any condition, or any right or remedy contained in or granted by the provisions of this assignment will be effective unless it is in writing and signed by the party waiving the breach, failure, right, or remedy. No waiver of any breach, failure, right, or remedy will be deemed a waiver of any other breach, failure, right, or remedy, whether or not similar, and no waiver will constitute a continuing waiver, unless the writing so specifies.

16. ENTIRE AGREEMENT.

This assignment constitutes the final agreement of the parties. It is the complete and exclusive expression of the parties' agreement about the subject matter of this assignment. All prior and contemporaneous communications, negotiations, and agreements between the parties relating to the subject matter of this assignment are expressly merged into and superseded by this assignment. The provisions of this assignment may not be explained, supplemented, or qualified by evidence of trade usage or a prior course of dealings. Neither party was induced to enter this assignment by, and neither party is relying on, any statement, representation, warranty, or agreement of the other party except those set forth expressly in this assignment. Except as set forth expressly in this assignment, there are no conditions precedent to this assignment's effectiveness.

17. HEADINGS.

The descriptive headings of the sections and subsections of this assignment are for convenience only, and do not affect this assignment's construction or interpretation.

18. EFFECTIVENESS.

This assignment will become effective when all parties have signed it. The date this assignment is signed by the last party to sign it (as indicated by the date associated with that party's signature) will be deemed the date of this assignment.

19. NECESSARY ACTS; FURTHER ASSURANCES.

Each party shall use all reasonable efforts to take, or cause to be taken, all actions necessary or desirable to consummate and make effective the transactions this assignment contemplates or to evidence or carry out the intent and purposes of this assignment.

[SIGNATURE PAGE FOLLOWS]

Each party is signing this agreement on the date stated opposite that party's signature. 

[PAGE BREAK HERE]

EXHIBIT A PATENTS AND APPLICATIONS

FORM OF RECORDABLE PATENT APPLICATION ASSIGNMENT

For good and valuable consideration, the receipt of which is hereby acknowledged, between  , an individual a(n) (the " Assignor ") and  , an individual a(n) (the " Assignee ") all of the Assignor's interest in the Assigned Patents identified in Attachment A to this assignment, and the Assignee accepts this assignment.

Each party is signing this agreement on the date stated opposite that party's signature.

ATTACHMENT A ASSIGNED PATENTS

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Free Patent Assignment Agreement Template for Microsoft Word

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Patent Assignment Agreement

This Patent Assignment (hereinafter referred to as the “Assignment”) is made and entered into on [Insert Effect Date] (the “Effective Date”) by and between the following parties:

[Insert Assignor Name] [Insert Assignor Address]

(the “Assignor”)

[Insert Assignee Name] [Insert Assignee Address]

(the “Assignee”)

WHEREAS the Assignor is the sole and rightful owner of certain ideas, inventions, patent applications therefor and patents thereon (collectively referred to as the “Patents”) set forth in Exhibit A attached hereto; and

WHEREAS, the Assignee desires to purchase or acquire the Assignor’s right, title, and interest in and to the Patents; and

WHEREAS, the Assignor and Assignee are both duly authorized and capable of entering into this Assignment.

NOW, THEREFORE, for valuable consideration, the receipt of which is acknowledged, the parties hereto agree as follows:

1. ASSIGNMENT.

The Assignor does hereby sell, assign, transfer and set over to Assignee [Insert Amount]% of its right, title, and interest in the Patents to Assignee for the entire term of the Patents and any reissues or extensions and for the entire terms of any patents, reissues or extensions that may issue from foreign applications, divisions, continuations in whole or part or substitute applications filed claiming the benefit of the Patents. The right, title, and interest conveyed in this Assignment is to be held and enjoyed by Assignee and Assignee’s successors as fully and exclusively as it would have been held and enjoyed by Assignor had this assignment not been made.

The Assignor authorizes United States Patent and Trademark Office and any other applicable jurisdictions outside the United States to record the transfer of the patent and/or patent applications set forth in Exhibit A to Assignee as the recipient of Assignor’s right, title, and interest therein.

Assignor further agrees to: (a) cooperate with Assignee in the protection of the patent rights and prosecution and protection of foreign counterparts; (b) execute, verify, acknowledge and deliver all such further papers, including patent applications and instruments of transfer; and (c) perform such other acts as Assignee lawfully may request to obtain or maintain the Patents and any and all applications and registrations for the invention in any and all countries.

2. WARRANTY.

Assignor warrants that Assignor is the legal owner of all right, title, and interest in the Patents, that the Patents have not been previously pledged, assigned, or encumbered, and that this Assignment does not infringe on the rights of any person.

3. GOVERNING LAW.

This Assignment is governed by and is to be construed in accordance with the laws of the State of [Insert State].

4. ENTIRE AGREEMENT.

This Assignment constitutes the sole agreement of the parties and supersedes all oral negotiations and prior writings with respect to the subject matter hereof.

5. SEVERABILITY.

If one or more provisions of this Assignment are held to be unenforceable under applicable law, the parties agree to renegotiate such provision in good faith. If the parties cannot reach a mutually agreeable and enforceable replacement for such provision, then (i) such provision will be excluded from this Assignment, (ii) the balance of the Assignment will be interpreted as if such provision were so excluded and (iii) the balance of the Assignment will be enforceable in accordance with its terms.

6. ADVICE OF COUNSEL.

EACH PARTY ACKNOWLEDGES THAT, IN EXECUTING THIS AGREEMENT, SUCH PARTY HAS HAD THE OPPORTUNITY TO SEEK THE ADVICE OF INDEPENDENT LEGAL COUNSEL, AND HAS READ AND UNDERSTOOD ALL OF THE TERMS AND PROVISIONS OF THIS AGREEMENT. THIS AGREEMENT WILL NOT BE CONSTRUED AGAINST ANY PARTY BY REASON OF THE DRAFTING OR PREPARATION HEREOF.

IN WITNESS whereof, the Assignor and Assignee have executed this Agreement as of the Effective Date.

________________________________________________________________

By: ___________________________________ Date: __________________ [Insert Name of Assignor]

By: ___________________________________ Date: __________________ [Insert Name of Assignee]

List of Patents

U.S. Patent/Application number: _________________ Dated: _________________ Title: _________________

Related Documents

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Patent Assignment Agreement (Short Form) | Practical Law

assignment agreement patent

Patent Assignment Agreement (Short Form)

Practical law standard document 6-507-2833  (approx. 14 pages).

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Patent Assignments in Employment Agreements – a Sometimes Overlooked, but Always Important Component

  • November 16, 2021

By: Peter C. Lando and Thomas P. McNulty

By: Thomas McNulty and Peter Lando, with assistance from summer intern Tyler Gruttadauria

Businesses, of course, have a strong interest in owning intellectual property created by their employees. Intellectual property—patents, copyrights, and other confidential and proprietary information including trade secrets—is often the most valuable asset a business can own, so it is important to ensure that employee developments and inventions belong to the employer. In the United States, inventions presumptively belong to the inventor, and any transfer of ownership (“assignment”) must be in writing to be effective. Rather than requiring employees to sign assignment agreements for each patent application filing, employers sometimes rely on employment agreements and handbooks to establish ownership in intellectual property created by an employee. Employers often provide employment agreements with assignment clauses that are intended to give the employer rights in inventions made by the employee during the period of employment. These assignment clauses are often treated as mere boilerplate, yet the precise wording of these clauses can have major impacts on the effectiveness and limitations of any assignment.

Ensure that you have an Assignment and not a mere promise to assign

When drafting an agreement to have an employee assign future inventions, it is vital that the language used in an assignment clause states a present-tense, actual assignment. Phrases such as “hereby assign,” “agrees to grant and does hereby grant,” or that inventions “shall belong” to the employer and employee “hereby conveys, transfers and assigns” have been deemed by the courts to be effective to transfer ownership of a future invention without the need for any subsequent agreement. Ownership effectively transfers immediately, once the invention has been made. Assignment clauses that use future tense language, on the other hand, generally will require an additional agreement to result in a transfer of ownership of the invention, and any intellectual property (“IP”) covering the invention. Terms such as “will assign,” “agree to assign,” “will be assigned,” and the like, have been found by numerous courts to constitute nothing more than a promise or contract to assign an invention in the future, but not to serve as an actual assignment.

In addition to the wording used in the assignment clause, the language of any carve-outs should also be scrutinized. Agreements may contain a carve-out clause to exclude a new employee’s prior inventions from being assigned, or to prevent assignment of inventions unrelated to the employee’s work from being swept into the assignment provision. A broad, non-specific carve-out clause may prevent an employee agreement from automatically assigning inventions of that employee, even where the assignment clause includes the proper “hereby assign” type of language, because this leaves open the possibility that an invention is not subject to the assignment clause. This contrasting language may create an ambiguity in the employment agreement that subjects it to construction under state law, which in turn may allow for the employee to introduce extrinsic evidence, such as conversations that took place during employment negotiations, to defeat the automatic assignment. While patent assignment provisions are governed by Federal Circuit law, resolution of contractual ambiguities is governed by state law, which varies considerably regarding the admissibility of such extrinsic evidence.

Failure to obtain an automatic assignment can have negative consequences

An assignment clause that is deemed ineffective to automatically transfer ownership of an invention can create significant problems for an employer. In such circumstances, a business would not have standing to bring a patent infringement suit until it has taken the necessary steps to obtain a valid assignment. This may require the filing of a breach of contract claim against the employee to require fulfillment of the contractual obligations, including execution of assignment documents. In the interim, infringers could continue practicing the invention; and if the infringing activity has gone on long enough, the six-year statute of limitations may prohibit full recovery of damages. Further, if an inventor/employee has made only a promise to assign, and instead transfers ownership to a third party who lacks knowledge of the assignment obligation, that second transfer of ownership may well prevail, leaving the original employer with no exclusionary rights at all.

Ineffective assignment provisions can affect more than just litigation. Businesses and investors typically conduct IP due diligence when entering into transactions involving the investment in or sale of IP assets, company divisions or entire entities, and any weaknesses in assignment provisions may affect the perceived value of the IP assets and/or business being considered.

Do not count on the “Hired-to-Invent” doctrine to result in ownership of employee inventions

Some employers do not require employees to sign an agreement containing an assignment of inventions because they believe that they automatically own inventions that they paid someone to create. Under the “hired-to-invent” doctrine, this will only occasionally be correct. Employees or contractors hired (and paid) specifically to create a particular invention or to solve a particular problem may be deemed to have implicitly assigned their rights in the invention to the employer. This is a highly fact-based determination, however, and applies only to inventions created in response to the specific thing the employee was hired to do. A mere title of “researcher” or even “inventor” will not, standing alone, suffice to ensure ownership of inventions by the employer. Further, until a court has ruled one way or the other, an employer relying on this doctrine will not have any certainty in its rights to the invention. Should the court rule against the employer, it would lose the exclusionary rights it believed it possessed and may face an infringement lawsuit from the employee or anyone to whom the employee may have assigned the invention/patent rights.

Absent an effective assignment, an employer may obtain limited “shop rights” in inventions made using the employer’s time, materials, facilities or equipment. Shop rights take the form of an implied license to practice the invention, precluding the employee from obtaining damages or injunctive relief on a patented invention. Shop rights are limited, however, and do not allow the employer to prevent others from competing by practicing the invention. Further, shop rights cannot be transferred via license or assignment, effectively devaluing the IP assets and, perhaps, the company.

Other Considerations

In addition to having the proper “hereby assign” language, employment contracts should ensure that inventions , rather than just patents or patent applications, are subject to the assignment clause. Language stating that all inventions, improvements, discoveries, and the like, whether or not patentable or copyrightable, are subject to the assignment, ensures that information that could be protected through other regimes, such as trade secrets, automatically become the property of the employer.

Intellectual property has taken on an ever-increasing role in determining the value of a business. A company’s ability to develop and protect its intellectual property is a key factor in its future success. Given this, it is important that businesses recognize that assignment provisions of employment agreements are not mere boilerplate, but instead may be one of the most important legal provisions that ultimately can impact not only an employment arrangement, but the value of the business itself.

assignment agreement patent

  • Peter C. Lando
  • Thomas P. McNulty

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

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

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

Patents Assignments: Change & search ownership

Change of owner (assignment) and change of owner name.

During examination of a patent application or after the patent is granted, the owner of the patent may:

  • Transfer ownership to another entity or party through an "assignment;" or
  • Retain ownership but change their name.

The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by going to Assignment Center and filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Change Ownership - Assignment Center

Use Assignment Center to file a Patent Assignment Recordation Cover Sheet and attach the supporting legal documentation as a black-and-white TIFF or PDF file. You may email questions about filing patent assignments to [email protected] .

Patent Assignment Search

Use  Patent Assignment Search  to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching patent assignments to [email protected] .

For further information, you may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 am – 5:00 pm Eastern Time.

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Patent Assignment Agreement

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Priori Legal Shield

This free template Patent Assignment Agreement would be used to assign some or all of the rights in an existing Patent to a third party. A Priori lawyer can help you customize it to meet your company's needs. You can learn more about the requirements to draft a legal binding Patent Assignment Agreement here , as well as when it would be more appropriate to use a Patent License Agreement . 

A lawyer is available for free consultations through Priori to discuss this document and much more.

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ASSIGNMENT OF PATENT RIGHTS

_______________ to _____________

THIS ASSIGNMENT, effective the __ day of ________ 20__ by and between __________________, a _____________ residing at _____________________, (hereunder referred to as Assignor), and ____________________, a _______________ having  a place of business at ______________ (hereunder referred to as Assignee).

WHEREAS, Assignor is the owner of the entire right, title and interest in and to the patents and patent applications, and the inventions disclosed therein, (hereinafter referred to collectively as the Patent Rights) identified on the attached Schedule.

WHEREAS, Assignee is desirous of obtaining all right, title and interest in and to the inventions represented by the Patent Rights in the ________ ; and

WHEREAS, Assignor is agreeable to assigning the Patent Rights for the _____________ .

NOW, THEREFORE, for good and valuable consideration, the receipt of which is hereby acknowledged, the said Assignor has sold, assigned, transferred and set over, and by these presents does hereby sell, assign, transfer and set over, unto the said Assignee, its successors, legal representatives and assigns as of the effective date recited above, all right, title and interest in, to and under the Patent Rights in the _________ , including specifically the right to claim priority from said Patent Rights as fully and entirely as the same would have been held and enjoyed by Assignor if this assignment and sale had not been made, together with all claims for damages by reason of past infringement of the Patent Rights with the right to sue for and collect the same for Assignee’s own use and enjoyment, and for the use and enjoyment of its successors, assigns or other legal representatives.

Assignor hereby covenants that it has full right to convey the rights herein assigned, and that it has not executed, and will not execute, any agreements in conflict herewith.

This assignment may be executed in any number of counterparts, each of which will be deemed an original, but all of which together constitute one and the same instrument.  Executed signature pages to this assignment may be delivered by facsimile, or by email in portable document format (.pdf) and delivery of the signature page by such method will have the same effect as if the original signature had been delivered by the sending party to the receiving party.

IN WITNESS WHEREOF the said Assignor and Assignee have caused their respective corporate and legal names to be hereto signed.

                                         ASSIGNOR

______ __, 20__              By:__________________________

                                         Name:  _______________________

                                 Title:  ________________________  

______ __, 20__               By:__________________________

                                          Name:  _______________________ Title:  ________________________ Schedule Assignment of Patent Rights    

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Patent Assignment Agreement

A patent assignment agreement is intended to assign a patent to a company. The assignment must be supported by separate consideration which may be a nominal amount or a larger value. Download this free patent assignment agreement below and have it customized by an attorney for your needs today.

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Patent Assignment Agreement

Choose the state of residence or business for the entity who is assigning the trademark.

State of Alabama

A. This Patent Assignment Agreement ("Assignment"), made effective as of ________ , is agreed to by and between the following parties:

________ , a limited liability company, organized under the laws of the state of Alabama , ("Assignor"), having an address as follows:

________ , a limited liability company, organized under the laws of the state of Alabama , ("Assignee"), having an address as follows:

B. WHEREAS, Assignor is the sole and rightful owner of a certain ideas, inventions, patent applications therefor and patents thereon, collectively referred to as the "Patents", registered with the United States Patent and Trademark Office ("USPTO") with details as follows:

Patent title: ________ Registration number: ________ Registration date: ________

C. WHEREAS, the Assignee desires to purchase or acquire the Assignor's right, title, and interest in and to the Patents; and

D. WHEREAS, the Assignor and Assignee are both duly authorized and capable of entering into this Assignment.

NOW, therefore, in consideration of the promises and covenants contained herein, as well as other good and valuable consideration (the receipt and sufficiency of which is hereby acknowledged), Assignee and Assignor do hereby agree as follows:

I. ASSIGNMENT.

1. The Assignor does hereby sell, assign, transfer, and set over to Assignee their entire right, title, and interest in the Patents ( ________ % total interest in the Patent) to Assignee for the entire term of the Patents and any reissues or extensions that may issue from foreign applications, divisions, continuations in whole or part or substitute applications filed claiming the benefit of the patents. The right, title, and interest conveyed in this Assignment is to be held and enjoyed by Assignee and Assignee's successors as fully and exclusively as it would have been held and enjoyed by Assignor had this assignment not been made.

2. The Assignor authorizes the United States Patent and Trademark Office and any other applicable jurisdictions outside of the United States to record the transfer of the patent and/or patent application set forth here to Assignee as recipient of Assignor's right, title, and interest therein.

3. The Assignor further agrees to: a. cooperate with the Assignee in the protection of the patent rights and prosecution and protection of foreign counterparts; b. execute, verify, acknowledge, and deliver all such further papers, including patent applications and instruments of transfer; and c. perform such other acts as Assignee lawfully may request to obtain or maintain the Patents and any and all applications and registrations for the invention in any and all countries.

4. This Agreement shall become effective as of ________ and the Assignment itself shall become effective as of the date this Agreement has been registered with the United States Patent and Trademark Office (USPTO). The rights and obligations contained herein shall continue during the validity of such Assigned Patents, except as may be otherwise provided herein.

5. Upon providing prior written notice of termination to the Assignor, the Assignee may terminate the license under this Agreement if the Assignor defaults or fails to perform any of its respective covenants, obligations, agreements, representations, or warranties contained herein, which violation, default, or failure is material and not cured within ninety (90) days after receipt of a written notice thereof from Assignee. Further, Assignee may automatically terminate the license granted under this Agreement without notice to Assignor in the event that Assignor makes a general assignment for the benefit of its creditors, or ceases operations, or is liquidated.

III. PAYMENT.

6. For the assignment, Assignee agrees to pay Assignor the following sum: $ ________ (________).

7. Assignor will accept the following methods of payment: Cash .

IV. COOPERATION.

8. Assignor agrees to cooperate with Assignee to the fullest extent possible in conveying the right, title and interest in and to the Patents. The cooperation referred to herein includes the prompt completion and execution of any papers necessary, including oaths, declarations, specifications or any other papers required to make good the complete conveyance of the Patents, as well as assistance in proceedings taking place before the USPTO or any foreign country.

V. WARRANTY.

9. Assignor warrants that Assignor is the legal owner of all right, title, and interest in the Patents, that the Patents have not been previously pledged, assigned, or encumbered and that this Assignment does not infringe on the rights of any person.

VI. RECORDATION.

10. Assignor will be responsible for causing recordation with the USPTO, by submitting all documents necessary to transfer ownership of the Patents. Assignor authorizes Assignee to complete recordation, and the USPTO and any other government officials to record and register this Assignment.

11. Assignor will be responsible for paying all fees required to the USPTO for recordation.

VII. 5588555885.

________ . 552 582528 525 28882528228 52525 2588 8888222222 8888 82552 22 252 8222282 525 82 8825822 5222 522 22 88882222'8 8588288258 525 588822228, 58 8288 58 88882225'8.

VIII. 885855828855.

________ . 5588 8888222222 252 82 25285225 82 825222525528, 588 22 85885 85588 8228282522 5 882282 525222222 8228222 252 2552828. 52 252 55228 822 22525 52 252 225 22 2588 52852222 552 582225222, 2588 8888222222 88 22 82 8228852525 222282882 58 22 252 5522 2552 8225 2552828 5582 882225 252 8888222222, 85885 252 82 252 85225 5522.

IX. NO CONFLICT.

12. Assignor warrants and represents that Assignor is not a party to, or will not be a party to, any assignment, agreement or other contract in conflict with this Assignment.

X. ENTIRE AGREEMENT.

13. This Assignment document constitutes the entire agreement between Assignor and Assignee and supersedes any prior or contemporaneous understandings, whether written or oral.

XI. SEVERABILITY.

14. If one or more provisions of this Assignment are held to be unenforceable under applicable law, the parties agree to renegotiate such provision in good faith. If the parties cannot reach a mutually agreeable and enforceable replacement for such provision, then such provision will be excluded from this Assignment, the balance of the Assignment will be interpreted as if such provision were so excluded, and the balance of the Assignment will be enforceable in accordance with its terms.

XII. ADVICE OF COUNSEL.

15. Each party acknowledges that, in executing this Agreement, such party has had the opportunity to seek the advice of independent legal counsel, and has read and understood all of the terms and provisions of this Agreement. This Agreement will not be construed against any party by reason of the drafting or preparation hereof.

XIII. HEADINGS.

16. Headings to this Assignment are for convenience only and shall not be construed to limit or otherwise affect the terms of this Assignment.

XIV. JURISDICTION & GOVERNING LAW.

17. This Agreement shall be governed in all respects by the laws of the United States of America and the laws of the state of Alabama . Assignor and Assignee consent to jurisdiction under the state and federal courts within the state of Alabama .

IN WITNESS WHEREOF, the Assignor and Assignee have executed and delivered this Assignment:

Signature:___________________________

Date:_______________________________

State of Alabama NOTARIZATION:

On the following date: ___________________, before me personally appeared the Assignor of this Assignment, namely, ________ . I am a Notary Public in and for said the state of Alabama and ________ is personally known to me or proved to me on the basis of satisfactory evidence to be the person(s) whose name is subscribed to the within the assignment and acknowledged that he/she/they executed the same.

WITNESS my hand and official seal:

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IMAGES

  1. Patent assignment agreement template in Word and Pdf formats

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  2. FREE 10+ Sample Patent Agreement Templates in PDF

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COMMENTS

  1. Patent Assignment Agreement

    This Patent Assignment Agreement is a comprehensive document designed to facilitate the transfer of patent ownership from the original patent owner, known as the assignor, to another party, known as the assignee. A patent is a legal grant issued by the United States Patent and Trademark Office (USPTO) to an inventor, providing exclusive rights to make, use, and sell their invention for a ...

  2. Sample Patent Assignments

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

  3. The basics of patent assignments

    After an assignment is complete, the assignee has exclusive rights to such income. Requirements to Assign a Patent. A patent assignment agreement documents the transfer and arrangement between the parties. If you are considering entering into one, know that you need it to be written—a verbal agreement alone is insufficient.

  4. PDF Intellectual Property Agreement (IPA) assignment

    property, and under patent law, patent applications have the attributes of personal property. By signing the Intellectual Property Agreement (IPA) an employee assigns to the University the entire title, ownership and rights to all inventions resulting from research conducted at the University, with significant use of University resources.

  5. 302-Recording of Assignment Documents

    37 CFR 3.11 Documents which will be recorded. (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover ...

  6. Commercial, Sample Agreement

    The following sample assignment agreement is an outright transfer with no reservation of use or license rights by the assignor. A sale or assignment of a patent is a way to realize value as an alternative to licensing or practicing the patent. The assignee should make sure that the sale, assignment or other interest received in a patent is ...

  7. 301-Ownership/Assignability of Patents and Applications

    A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee (s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 . II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ...

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

    A patent assignment is an agreement where one entity (the "assignor") transfers all or part of their right, title and interest in a patent or application to another entity (the "assignee"). In simpler terms, the assignee receives the original owner's interest and gains the exclusive rights to pursue patent protection (through filing ...

  9. Patent Assignment

    Patent Assignment: Everything You Need to Know Patent Law Resources How to Patent an Idea Provisional Patent Patent Pending Design Patent Plant Patent Utility Patent. 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

  10. What is a Patent Assignment? (Detailed Answer)

    A patent assignment is the transfer of ownership of a patent from one party to another. The party transferring its right is known as the assignor and the party receiving the patent rights is known as the assignee. To assign a patent, both parties must execute a written assignment agreement to reflect the transfer of ownership.

  11. Patent Assignment Agreement: Definition & Sample

    A patent assignment agreement is a document that transfers the rights to an invention or idea from one person or company to another. This agreement includes all necessary information such as the name and contact information for both parties, any limitations on what can be done with the patented technology, and how much money should change hands ...

  12. Free Patent Assignment Template & FAQs

    Start your Patent Assignment now and get Rocket Lawyer FREE for 7 days. Get legal services you can trust at prices you can afford. You'll get: All the legal documents you need—customize, share, print & more. Unlimited electronic signatures with RocketSign ®.

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

    A patent assignment is a written contract or agreement that formally transfers the rights of a patent from the original patent holder (the assignor) to another individual or entity (the assignee).

  14. Free Patent Assignment Template

    What's a patent assignment? If you want to buy patents, the first step is to ensure the seller owns the patent rights. The second step is the transfer of the patent owner's rights to the buyer. A patent assignment is an agreement that covers both steps, helping the buyer and the seller by providing records of ownership and transfer with ease.

  15. Free Patent Assignment Agreement Template for Microsoft Word

    Patent Assignment Agreement. This Patent Assignment (hereinafter referred to as the "Assignment") is made and entered into on [Insert Effect Date] (the "Effective Date") by and between the following parties: WHEREAS the Assignor is the sole and rightful owner of certain ideas, inventions, patent applications therefor and patents thereon ...

  16. Patent Assignment Agreement (Short Form)

    A standard short-form patent assignment agreement for use as an ancillary agreement to an asset purchase agreement or other principal transaction agreement. This patent assignment agreement can be attached as an exhibit to the asset purchase agreement or other principal transaction agreement and separately executed and recorded with the US Patent and Trademark Office (USPTO) against scheduled ...

  17. Patent Assignments in Employment Agreements

    Rather than requiring employees to sign assignment agreements for each patent application filing, employers sometimes rely on employment agreements and handbooks to establish ownership in intellectual property created by an employee. Employers often provide employment agreements with assignment clauses that are intended to give the employer ...

  18. Patents Assignments: Change & search ownership

    Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.

  19. Patent Assignment Agreement

    This free template Patent Assignment Agreement would be used to assign some or all of the rights in an existing Patent to a third party. A Priori lawyer can help you customize it to meet your company's needs. You can learn more about the requirements to draft a legal binding Patent Assignment Agreement here, as well as when it would be more ...

  20. Patent Assignment Agreement

    Section 2. Assignment. 2.1 Assignor shall transfer and assign to Assignee all of Assignor s right, title and interest to any and all patent ownership interest Assignor may have throughout the world in and to the Assigned Patents as of the Closing Date. 2.2 Assignee shall be solely responsible for all actions and all costs whatsoever, including ...

  21. Patent Assignment

    Patent Assignment Agreement. A patent assignment agreement is intended to assign a patent to a company. The assignment must be supported by separate consideration which may be a nominal amount or a larger value. Download this free patent assignment agreement below and have it customized by an attorney for your needs today.

  22. Patent Assignment Agreement

    Patent Assignment Agreement . State of Alabama. BACKGROUND. A. This Patent Assignment Agreement ("Assignment"), made effective as of _____, is agreed to by and between the following parties: _____, a limited liability company, organized under the laws of the state of Alabama, ("Assignor"), having an address as follows: and _____, a limited liability company, organized under the laws of the ...

  23. How to draft an agreement to assign a patent

    A patent assignment is an agreement where the assignor transfers the patent rights to the assignee. It is a process of how to patent an idea or transfer his or her interest to an assignee, and enforce the patent. The assignee receives the original owner's interest and rights to intellectual property. He can sue others for making and selling ...

  24. PDF Federal Register /Vol. 89, No. 40/Wednesday, February 28 ...

    Assignment Form; FEMA Form FF-104- FY-21-120 (formerly 010-0-7), Resource Request Form; FEMA Form FF-104-FY-21-121 (formerly 010-0- 8A), Mission Assignment Task Order Form. Abstract: A written request for Federal assistance may be submitted on an Resource Request Form (RRF). The RRF is a working document requesting

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    4 Days, 300 Exhibits and a $287M Verdict Against Samsung in Texas. Susman Godfrey said that in the 2016 agreement KPN gave Samsung certain rights to KPN's voluminous patent portfolio in return for ...

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    Notice of Filing of Complaint and Assignment; 20230930-DK-BUTTERFLY-1, Inc. F/K/A Bed Bath & Beyond Inc., Complainant, v. Evergreen Line Joint Service Agreement (FMC #011982) Consisting of Evergreen Marine Corp. (Taiwan) Ltd., Evergreen Marine (UK) Ltd., Italia Marittima SpA, Evergreen Marine (Hong Kong) Ltd., and Evergreen Marine (Singapore) Pte. Ltd., Respondents

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    Oppo's plan to bounce back in Europe comes a month after it signed a global patent cross-licensing agreement with Nokia, covering standard-essential patents in 5G.