patent assignment witness

29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

• 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.

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!

Michael K. Henry, Ph.D.

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

10 Jan 2024

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April 23, 2020

Signing while Social Distancing, Part 2: Assignments

Problems with assignments are likely to occur many years in the future when the assignor may be unavailable or uncooperative. Therefore, you (the person advising on or determining the process for obtaining signatures) should determine the signature method most likely to have evidentiary value and recognition across your jurisdictions of interest while falling below a threshold of inconvenience to the signer. For example, an inventor clicking a link in an email and typing their name into electronic signature software is a very low burden. On the other hand, an inventor may balk at participating in a notarization videoconference that requires answering personal questions that are as invasive as those asked when accessing their annual credit report.

• Handwritten, in-person notarization may receive the widest international recognition, but is not feasible now.
• Remote notarization comes in a close second.
• Electronic signature software (for example, DocuSign) is the most convenient for the signer and offers greater authenticity guarantees than simply modifying a PDF. Use this when international recognition is less critical.
• For any type of signature, recording a video of the signature process is powerful evidence of the authenticity of the signature.
• If your normal practice is notarization, consider temporary usage of electronic signature software; then, when in-person notarization is once again feasible, obtain notarized confirmatory assignments.

Assignments

Understanding the considerations for signing inventor declarations (discussed here ) is difficult enough, and declarations only need to satisfy one entity: the USPTO. Meanwhile, patent assignments may need to have worldwide effect. If you are familiar with the law of one of the 153 Patent Cooperation Treaty (PCT) contracting states, that leaves only 152 jurisdictions for you to consult competent counsel in. And don’t forget the countries (like Taiwan and Argentina) that are not PCT contracting states. Further, in the U.S., there is not a single body of contract law governing patent assignments, so you’ll want to consider all 50 states (and perhaps the District of Columbia). We haven’t vetted the below thoughts with every country in the world, but general principles should be applicable to the vast majority.

The goals to be satisfied by an assignment signature are:

• Create a document that can be recorded with the USPTO to demonstrate a clear chain of title to the patent holder
• Create evidence for purposes of U.S. enforcement that the assignment was an authentic act by the assignor
• Demonstrate chain of title to non-U.S. governments and patent offices — including, importantly, the right of an assignee to claim priority to an earlier application
• Create evidence for purposes of non-U.S. enforcement that the assignment was an authentic act by the assignor
• Bind the assignor to promises of further cooperation laid out in the assignment

Goal #1 will be met by any of the signature methods described below, so will only be mentioned once more. Goal #2 is satisfied to greater or lesser extents by the signature methods, as described below. Goals #3 and #4 may not be relevant to an applicant/patentee interested in only U.S. protection, in which case the related considerations can be ignored.

Achievement of goal #5 should be closely related to goal #2, with the caveat that contractual consideration may be a more important factor for goal #5. Consideration for an inventor-assignor may include payment of a patent-related bonus; continued employment may also serve as consideration.

Goals #2–4 may have less importance if the assignment is primarily to confirm the prior operation of law or agreement. This is generally most relevant for an inventor assigning to a company. For example, an employment agreement with “hereby assign” language may have already operated to assign the invention from the inventor to the company. For additional information on employment agreement language, see this blog post . In another example, national law (such as the Employee Inventions Act in Germany) may have operated to assign the rights in an invention to the employer from the employee. In such cases, you may want to choose a signature method that is less demanding of the signer’s time and privacy.

Signature Types

Signature methods may be divided into three groups:

• handwritten
• live in-person
• live remote
• later attestation
• handwritten with in-person notary
• electronic with remote notary

Goal #2 – U.S. Enforcement

For U.S. enforcement of patent rights, a notarized signature has statutory benefits. Specifically, 35 U.S.C. § 261 states that a notarization “shall be prima facie evidence of the execution of an assignment, grant or conveyance of a patent or application for patent.” In other words, a notarized signature shifts the burden to the challenger to prove that the signature is not authentic.

If a signature is witnessed by one or more (though usually it is one or two) other people, those people can be called at trial to offer evidence of the signature’s authenticity. There is, however, no statutory benefit afforded to witnessed signatures. And ten years from now in litigation (TYFNIL), a witness may not be available, or their memory of witnessing a particular signature may not be very clear.

A bare signature offers none of the evidentiary benefits of notarization or witnessing. However, a handwritten signature may be authenticated by an expert. Meanwhile, authenticating an electronic signature may require documentary evidence of the signature process for that particular signature. This may obligate the assignee to retain evidence of the correspondence related to the signature. As an improvement, signature software (for example, DocuSign) adds authenticity and anti-tampering features to an electronic signature and may retain records related to the authenticity of the signature.

For any of these three types of signatures, video evidence of the signature being applied may prove very useful TYNFIL. Specifically, the video should show the person applying the signature, some evidence of their identity (such as a government issued identification), and the act of applying the signature. While a notarization provides prima facie evidence of execution, the video recording would provide actual evidence that would be difficult to dispute. Similarly, if a recording were made of the witness observing the signature — either in person or over a video link — the recording may eliminate the need to find the witness or refresh their recollection. While less likely to be used in the case of a bare signature, the signer or a third party could make a video recording of the signor applying their signature to the document.

Goals #3 and #4 – Non-U.S. Considerations

Many countries have electronic signature laws and they are not all consistent. It would be difficult to stay up to date with the electronic signature laws in 150 or more countries. If you have interest in patent protection in any particular countries or regions, you should consult with competent counsel in those jurisdictions.

Generally, you would expect a notarized signature to carry more weight in a foreign country than would a signature not legalized in any way. It stands to reason that a handwritten signature with a physical notary stamp would be the most familiar to countries around the world, and the least likely to run afoul of jurisdiction-specific electronic signature requirements. However, the realities of quarantine may require taking the risk of non-U.S. disapproval of an electronic notarization.

It is not clear that the presence of witnesses has any impact on formal requirements of non-U.S. governments. For both witnessed and bare signatures, handwritten signatures are most likely to be familiar to countries around the world. However, electronic signatures collected with the assistance of electronic signature software may have sufficient authenticity factors to satisfy the requirements in some countries. In fact, software-assisted signatures may even qualify as “advanced” signatures in Europe, in contrast to “simple” electronic signatures that have no authenticity features.

Notarization

Recognition.

For patents and patent applications, does the location of notarization matter? In other words, if you are trying to enforce a patent in the District Court of Delaware, does it matter whether an assignment was notarized in New Jersey? What if the notarization process doesn’t satisfy Delaware notarial rules? What if the New Jersey notary would not qualify as a notary in Delaware?

These are questions that have arisen historically. At the present time, it appears that a notarization properly performed according to the rules of one state will generally be recognized in other states. See Enduring Benefits of Interstate Recognition of Notarial Act Laws , a statement from the National Notary Association. According to this 2017 statement, the one exception appears to be Iowa, which does not recognize remote notarizations done by Iowa notaries or notaries of other states. A remote notarization is when the notary is located in a different location from the signer and they are only virtually connected, such as by a videoconference. It appears that Iowa has passed legislation effective July 1, 2020 to allow remote notarization and temporarily waived the prohibition in advance of that effective date.

In short, remote notarization appears to be nearly universally recognized throughout the U.S. The governors of a number of states, including Michigan and Missouri, have signed executive orders expanding the use of online notarizations, making it easier for notaries to conduct remote notarizations. In Michigan, the Secretary of State has approved certain vendors for remote notarization, including NotaryCam and Notarize .

For approximately $25, a remote notarization vendor verifies the identity of a signer, connects the signer with a notary via videoconference, allows the signer to apply a signature and the notary to apply an electronic notary stamp, records the videoconference, and distributes the signed documents. The expertise of a vendor may be preferable to law firms or companies training existing notaries who may only be familiar with handwritten notarial procedures.

Because the remove notarization vendor does not personally know the signer, the verification process may seem intrusive to the signer. Using the training materials of one vendor as an example, the signer must take pictures of the front and back of a government-issued ID and provide the last 4 digits of their social security number. Then, the vendor generates 5 challenge questions to be answered in 2 minutes. These questions are similar to what you might need to answer in order to pull your annual credit report, so they are very personal.

While it is hard to know whether all jurisdictions around the world will be comfortable with a remote notarization, the practice appears to be satisfactory throughout the U.S. Further, the video recording provides excellent evidence of the authenticity of the signature for U.S. enforcement.

Witnesses may be able to provide evidence that a signature is authentic, though it is not clear that they will solve any concerns of non-U.S. patent offices regarding the formalities of the signature. In any case, witnesses should not hurt the effectiveness of the assignment. As a note, try to avoid the witness being related to the signer as a family member, significant other, etc.

When social distancing prevents in-person witnessing, a videoconference will allow one or more witnesses to observe the signer applying their signature. If the signature is handwritten, a webcam could be directed toward the paper. If the signature is applied by editing a PDF, screen-sharing functionality of the videoconference can allow the signature to be witnessed.

A video recording of the signature process (of course, with the informed consent of all the parties being recorded) will provide excellent evidence of the authenticity of the signature. The identity of the signer should be verified within the recording, such as by directing a webcam at the signer’s face, having the signer state their name, and perhaps display a government-issued identification. In fact, a video recording of a signature may be more probative for purposes of U.S. enforcement than a handwritten notarization not captured by video.

One additional approach to witnessing is offered by signature software. Using DocuSign as an example, a document is sent to the signer for signature with an indication that one or more witnesses are required. The signer applies their signature and then specifies the name, email address, and a custom message for each witness. DocuSign then sends the signed document to the specified witness(es) for them to apply their signature. Because the witnesses in this situation did not physically watch the signature occur, this might be referred to as later attestation. This may allow the witnesses to be called to give evidence of the signature’s authenticity TYFNIL. Since the signature software already enforces that the signature is entered by someone having control of the signer’s email address, it is not clear how witnesses receiving attestation requests from that email address provides much practical additional authenticity.

Electronic Signatures

S-signatures.

The USPTO rules for S-signatures (slash signatures) are irrelevant for assignment signatures, though using slashes do not hurt. In fact, if you are using electronic signatures for the inventor declaration (see the prior declaration signature blog post for more details), consistency and simplicity may suggest that you instruct that the inventor use an S‑signature on both the declaration and the assignment.

Because contract law in the U.S. differs from state to state, you may question what requirements an electronic signature would have to meet to be enforceable in all 50 states. As it turns out, the requirements have become fairly uniform due to the federal passage of the Electronic Signatures in Global and National Commerce Act (ESIGN) and the adoption by most states of the Uniform Electronic Transactions Act (UETA). For more information, see this 2017 law review article from Emory Law School.

The UETA defines an electronic signature as “an electronic sound, symbol, or process attached to or logically associated with a record and executed or adopted by a person with the intent to sign the record.” Therefore, there appears to be no problem — with respect to U.S. recognition — if the signer does any of the following:

• pastes an image of a handwritten ink signature into a PDF (either manually or via signature software)
• freehand draws — using a mouse, trackpad, stylus, touchscreen, etc. — a signature directly onto a PDF or pasting such a freehand drawing into the PDF (either manually or via signature software)
• inserts text of a signature into the PDF (either manually or via signature software)
• types text of a signature directly onto the PDF

For international recognition and for U.S. evidentiary purposes, there may be a benefit to a handwritten signature over a simple electronic signature not applied using signature software. This is because a handwritten signature should be more difficult to forge than typed characters rendered on a PDF form, and is susceptible to later analysis by a handwriting expert.

Signature Software

Signature software — such as DocuSign from DocuSign, Inc. or Sign (formerly, EchoSign) from Adobe Inc. — has substantially more authenticity value than simply editing a PDF, generally recording indicia of the signer’s activity, including specific times of signing and email and IP addresses. Further, the signature software may generate a cryptographic signature to allow verification that the document has not been modified post signature. Some European law recognizes simple and advanced signatures, and these features of signature software may satisfy the requirements of an advanced signature.

In a typical signature software workflow, the administrator responsible for obtaining signatures uploads the unsigned assignment PDF to the signature software, designates the location of the required signatures and dates within the PDF, and specifies the signer’s email address. The signature software then sends a link to the signer’s email address. The patent application should be sent to the signer either through the signature software or over a side channel (such as in a direct email), especially if the application has not yet been filed.

The signer clicks the link, reviews the assignment, and applies a signature. The signature software automatically fills in the date field and then informs the administrator of execution of the assignment and provides a copy of, or a link to, an executed PDF. The signature software may implement automated reminders to signers who have not yet signed a document after a set number of days. Meanwhile, the signature software logs the email address of the signer, when the assignment was opened, and when the assignment was signed. This information may be hashed and stamped on the executed PDF or stored elsewhere to detect tampering. The signature software process ensures that the signature was applied by the signer or, at the very least, by someone having control of the signer’s email address.

Handwritten signature

The signer can follow the traditional handwritten signature process of printing the PDF file to paper, hand-signing the paper with permanent dark ink (blue or black is best), scanning the paper back in, and sending back an email with the scanned document. Then, the signer should send the ink-signed original paper back to the in-house counsel or outside counsel.

If the signer is working from home and doesn’t have a printer available, handwritten signatures are not practical (though mailing paper by courier remains a possibility). Most signers will have a smartphone or a digital camera, which can create a scanned image. Unfortunately, the scan may be skewed, blurry, and/or discolored. For example, the yellow color from warm home lighting may cause the entire document to have an off-white background. These scanning issues can result in readability issues, especially after USPTO processing. We have seen the USPTO’s assignment branch refuse recordation of an assignment due to the scan quality — one of the few ways to fail to achieve goal #1. Hopefully, the assignment preparer has software that can perform image processing to improve poor scans. The author has used ABBYY FineScanner Pro for this purpose, but does not endorse any particular product.

If possible, the signer should use a scanning app on their phone. On an iPhone, the built-in Notes app works just fine, and can apply a black-and-white filter to remove a yellow tinge or a shadow. See here for brief instructions . If the signer doesn’t mind installing a useful app, the Wirecutter site recommends Adobe Scan , which is available for free on both the Android and iOS operating systems.

Assignee signature

For all company to company assignments, the assignor and assignee should both sign. This is especially important if protection outside the U.S. (and especially Europe) is of interest. Regarding inventor to company assignments for inventions you are confident will be restricted to the U.S., obtaining the company’s signature is not a requirement.

Ideally, the signature by the assignee would be performed in the same manner as that of the assignor. However, as a practical matter, it is more likely for the signature of the assignor to be challenged. Therefore, if the person authorized to sign on behalf of the assignee is busy, it may be possible to use a simple electronic signature for the assignee even if the signature for the assignor is notarized.

Inventor to Company Assignments

If an inventor to company assignment is prepared prior to an application being filed, the assignment should list all the inventors. See 37 CFR 1.63: “if an assignment of a patent application… is executed… before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention….”

If an assignment is prepared after the application has been filed, a separate assignment can be prepared for each inventor. This may make tracking signatures simpler: each document for signature will correspond one-to-one with a returned executed document.

Two Bites at the Apple

For companies that usually require witnesses or notarization on assignment documents, online notarization or remote witnessing with video recording are options, as described above. Another option is to temporarily use electronic signature software. Then, when in-person notarization or witnessing is once again feasible, obtain confirmatory assignments. For inventor to company assignments, delaying an assignment creates a substantial risk of the inventor being unavailable to sign the assignment when the company is ready.

As a reminder, an assignment should be recorded with the USPTO within 3 months of execution to be valid against a bona fide purchaser. 35 USC § 261. Therefore, to avoid exceeding that 3-month timeframe, record the first assignment with the USPTO. Once the later (notarized or witnessed) assignment is obtained, it is not necessary to record it as well. However, recording the later assignment may provide a useful backup in the event of a loss of the original.

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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.

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Patent Assignment Agreement Lawyers & Attorneys

Intellectual property is a valuable asset for any company. You must secure its ownership, whether purchasing a patent  (exclusive rights to make, use or sell an agreement) from another inventor or ensuring you own an invention developed by a contractor or an employee. A patent assignment agreement is a permanent way to transfer this ownership. If you are looking to draft a patent assignment agreement, a patent lawyer from Priori Legal's vetted network of attorneys can help protect your interests.

Understanding Patent Assignment

When you invent a new technology, you have the right to file for a patent on that technology with the United States Patent and Trademark Office (USPTO), which gives you the exclusive rights to make, use, offer for sale, sell, export, or import that invention in the United States. This right remains with the first inventor to file, regardless of who else may have had a claim in developing the technology. Of course, not everyone has an interest in using these rights. Some inventors may choose to sell ownership of all or some rights to a third party through patent assignment. This is done by signing a patent assignment agreement which transfers ownership of these rights.

When a Patent Assignment Agreement Is Necessary

When you choose to assign the rights to an invention over to another party, this must be done through a formal patent assignment agreement. Unlike some contracts, patent assignment agreements cannot be oral or casually written out. A formal contract must be drawn up.

Of course, when a company wants to buy the full permanent rights for a patent, a patent assignment agreement is vital, but any time that a company wants to secure patent rights to an invention they commissioned, a patent assignment agreement can also be used. These are therefore common within independent contractor agreements. Additionally, some companies have employees sign patent assignment agreements as a condition of employment to secure and strengthen the work-for-hire doctrine.

Key Provisions of a Patent Assignment Agreement

A patent assignment agreement is generally a fairly straightforward contract, but it requires several key provisions in order to be both valid and effective. The following are some key provisions that should be addressed in your patent assignment agreement.

Fee and Payment.  In order for a patent assignment agreement to be valid, there must be consideration or payment. It must be specified and paid at signing, even if at the time of employment.

Assignment.  There must be a formal cause saying exactly what will be assigned and when assignment transfers.  

Patent Rights and Definitions.  The exact patent to be transferred must be specified and fully defined as it is registered in the USPTO filing.

Further Assistance.  If the original patent owner must help transition ownership or use of the patent, a further assistance clause will specify how and for how long.

Warranties and Indemnities.  Most patents are transferred as-is, but some patent assignment agreements have warranties and indemnities to protect the parties involved.

Notarization.  For a patent assignment agreement to be valid in the U.S., it must be notarized—or at least signed in front of two witnesses.

Patent Assignment vs. Licensing

Practically, patent assignment is very similar to patent licensing , especially exclusive licenses. Both transfer patent rights to another person or company. While licenses are temporary, however, assignment is permanent. Licensing patent rights is like renting property. Royalties are collected over time, but ownership does not transfer. Patent assignment agreements permanently transfer ownership. You can review and download a free template Patent Assignment Agreement  or Patent License Agreement  in Priori Legal's Document & Form Learning Center . 

How do I record a patent assignment?

Once a patent assignment agreement has been signed, the assignment can be reported to the USPTO using the Electronic Patent Assignment System . This simple process include filling out a Patent Assignment Recordation Coversheet online and attaching the patent assignment agreement for legal documentation. This will be automatically changed then in the system to reflect the new ownership of the patent. To formalize this assignment, however, you must make the assignment of record in the file of the original patent application.

If I hire an independent contractor to create work for my company, do I need to get them to sign a patent assignment agreement?

Unless the original independent contractor agreement contains a clause that assigns the invention created to the hiring organization, they could patent the invention, and your company would have to get that work assigned.

Can I require an employee to sign a patent assignment agreement?

Under work-for-hire doctrine, employees who invent anything during the course of their work duties do not have patent ownership. Instead, the employer is conferred these rights. Still, many employers ensure an added layer of protection by having new employees sign an additional patent assignment agreement at the time of their employment.

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The basics of patent assignments

What is a patent assignment, what are the requirements to make it valid, and why would a business enter into a patent assignment agreement? Read on to find answers to these questions and more.

Find out more about Patents

by   Cindy DeRuyter, Esq.

Cindy DeRuyter, Esq., has been writing for LegalZoom since 2018. She earned a Juris Doctor from Mitchell Hamline Scho...

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Updated on: December 4, 2023 · 2 min read

Defining Patent Assignment

Requirements to assign a patent, searching for patent assignments.

Assigning patents can be a great way for companies to generate revenue and reduce risks associated with intellectual property ownership. If you are considering entering into a patent assignment agreement, understand that it is irrevocable. Because of that, evaluate proposed terms and provisions carefully before moving forward.

Here's a high-level overview of how patent assignments work: when a patent's owner or applicant assigns it to another individual or company, the assignor agrees to relinquish their rights to enforce or benefit from it in the future.

You can assign rights for applications still pending with the United States Patent and Trademark Office (USPTO). When the USPTO approves the application, the assignee benefits from and may use and enforce the patent, not the assignor. Companies also assign rights for issued patents, which relieves the assignor of the burden of enforcing their intellectual property and provides a source of revenue.

Patent assignments can be lucrative for both parties. While assignors make money right away, assignees can create revenue streams by earning money from royalty payments. After an assignment is complete, the assignee has exclusive rights to such income.

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.

Don't underestimate the importance of this, either. Without a valid agreement on file with the USPTO, an intended assignor remains legally responsible for the patent and an intended assignee gains none of the rights or benefits.

Here are the requirements for a valid written assignment:

• Confirm that the assignor has the full, legal right to make the assignment and that the assignee can legally assume the rights and obligations.
• Clearly identify both the assignor and assignee using legal names. If more than one company owns the patent, identify all owners.
• Identify the underlying patent by title and number and include a complete and accurate description of it.
• Describe the terms of the agreement, including financial arrangements.
• All parties must sign the agreement, with limited exceptions in situations where the assignor cannot be reached but where enough evidence exists that documents their intentions and rights.
• File the patent assignment with the USPTO within three months after the agreement is signed, paying the then-current fee.

Though the agreement is a legal document, it does not need to be notarized. However, obtaining notarization for the signatures provides added protection, limiting the risk of a party later claiming a signature was not valid.

The USPTO maintains a patent assignment database that includes all the assignments recorded since August 1980. Using the database, you can search with the assignor's or assignee's name, the patent number, application number, publication number, or other identifying information.

Properly assigning patents protects both assignors and assignees. If you want to assign a patent, downloading a patent assignment form can help. Alternatively, you can consult an intellectual property attorney .

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MAKE YOUR FREE Patent Assignment

What is a Patent Assignment?

When to use a patent assignment:.

• You are buying or selling a patent or a patent application.
• You want to add, remove, or change the name of the patent owner.

Sample Patent Assignment

The terms in your document will update based on the information you provide.

Patent Assignment

This Patent Assignment (hereinafter referred to as the "Assignment") is made and entered into on (the "Effective Date") by and between the following parties:

(the "Assignor")

(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 % 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 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 .

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.

[Notary Acknowledgement to Follow]

List of Patents

U.S. Patent/Application number:

Assignor Acknowledgement

____________________________ ASSIGNOR, who proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within instrument and acknowledged to me that he/she executed the same in his/her authorized capacity, and that by his/her signature on the instrument the person, or the entity upon behalf of which the person acted, executed the instrument.

I certify under PENALTY OF PERJURY under the laws of the State of that the foregoing paragraph is true and correct.

WITNESS my hand and official seal.

________________________________________ (Notary Seal)

Notary Public

________________________________________

My commission expires

Assignee Acknowledgement

____________________________ ASSIGNEE, who proved to me on the basis of satisfactory evidence to be the person whose name is subscribed to the within instrument and acknowledged to me that he/she executed the same in his/her authorized capacity, and that by his/her signature on the instrument the person, or the entity upon behalf of which the person acted, executed the instrument.

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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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Who Owns What: Assignment and Ownership of Patents and Applications

Why does ownership of a patent/patent application matter?

A patent is a government-granted property right that can be used to exclude others from making, using, selling, offering to sell, and importing an invention for a specified time. Patents provide important commercial benefits (discussed in detail in our companion piece What You Need To Know About Patents ) — but only for patent owners.

So who owns a patent/patent application?

In the US, the inventor is presumed to be the initial owner of a patent or patent application. If there is more than one inventor, there may be more than one owner. Ownership can be transferred or reassigned. If your company values intellectual property and has employees who are encouraged to innovate, here are a few important strategies to ensure that your company can benefit from patents generated through employee inventions.

• Agreements with employees and service providers (Automatic Assignment) : Companies should have all employees sign confidential information and inventions assignment agreements before employees start generating intellectual property. Having employees sign these agreements at the beginning of their employment, before any work is done, is the best course of action. Likewise, failure to correctly structure IP provisions in agreements with third parties such as service providers and consultants prior to the execution of any work has caused serious issues for many companies. A form of confidential information and inventions assignment agreement for California employees is available , and a form of consulting agreement for US consultants (which contains IP assignment provisions) is available.
• Obligation to Assign : In some situations, even if your employees have not signed an agreement, they may still be obligated, either by contract or local law, to assign patent/patent application ownership to your company. For example, this could occur if the invention was developed on the job, the employee was hired specifically to invent for the company, and/or the inventor is an officer of the company.
• Explicit Assignments : Even when employees have signed appropriate agreements, your company should execute new patent-specific assignments whenever patent applications are filed. These assignments name the specific invention, patent, and/or patent application, and can have additional legal weight if the ownership of a patent is disputed.

Joint ownership of patent/patent application rights can be complicated. As with any property right, multiple owners can make for multiple legal scenarios. For example, co-owners would have to join together to bring a patent infringement lawsuit. By contrast, the opposite is true for licensing: a co-owner can license its patent/patent application rights to a third party, independent of the other co-owner(s), unless they have an agreement otherwise. Co-owners can also independently sell, mortgage, transfer, and will their rights to a patent/patent application. To avoid these kinds of issues, most attorneys recommend that a single entity be the patent/patent application owner, whenever possible. If this is not possible, then it is important to correctly structure IP provisions in an agreement, for example, ideally where one party exclusively licenses back all rights in the co-owned patent/patent application.

How do I make sure my company owns these patents/patent applications? 

Well-structured ownership assignments are legally binding, but what does “well-structured” mean? Patent/patent application assignments have several formal requirements to be considered valid.  Assignments must:

• Be in writing – unlike some other contracts, oral assignments or oral agreements to assign patent/patent application rights are rarely enforceable;
• Clearly identify all parties – recite names, addresses, and relationship of both the assignor(s) and assignee;
• Identify the property clearly – include the patent/patent application number, title, inventors, and filing date;
• Recite exchange of consideration – this is a standard for almost any contract, and here, even nominal consideration (e.g., $1) is sufficient;
• Execution be notarized or attested to by one, preferably, two non-inventor witnesses – notarization or witnessing serves as evidence that the signatures (and, thus, the assignment) is valid. There is a lot of interest in utilizing an e-signature platform, such as DocuSign, for execution of Assignments.  However, this is still a developing area, and the rules differ significantly around the world. If use of e-signatures is an important consideration for your Company, e.g., your employees are geographically diversified, you should consult with your IP counsel so as to understand the local laws and potential ramifications in countries that are important to your business.

Following these rules is a good practice and is an essential starting place to ensure the validity and enforceability of your assignment.  However, validity does not end here. As with any contract, the legal language is key to eliminating ambiguity in your agreements.

Finally, make sure that any assignment in a patent/patent application is recorded with the US Patent and Trademark Office ( USPTO ) as soon as possible after execution. If an assignment is not  recorded with the USPTO within three months from its effective date, the assignee’s claim to ownership could be at risk. For example, if an assignor were to subsequently improperly assign to another purchaser that was not aware of the previous assignment and the previous assignment had not been recorded with the USPTO, the subsequent purchaser may be able to successfully claim ownership.

You’re the new owner!

A patent is only as valuable as it is enforceable, and ownership is a key element of enforceability. Licensing , manufacturing, distributing, or otherwise making exclusive use of your invention can only be ensured if the patent is both valid and enforceable.  Having ownership protection in place prior to the development of your intellectual property, as well as the correct legal ownership assignment documents executed afterward, can help ensure that you can make the most of your company’s ingenuity.

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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.

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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Best Practices Around E-signatures

The U.S. government passed the ESIGN Act in 2000 to facilitate the adoption of e-signatures for specific documents in all locations where federal law is applicable. The Act 2 defines e-signature as an electronic sound, symbol, or process attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record. Here are some of the best practices that organizations must implement to ensure a seamless e-signing experience:

• Ensure Secure Signatures : E-signatures must create a tamper-proof seal once they have been recorded in a document, i.e., the e-signed document should be invalidated when unauthorized changes are attempted by unknown parties. In addition to this, a signature audit trail should be created for every e-signed record, allowing organizations to verify signed records in a single click.
• Check Multi-device Accessibility : Organizations are increasingly using multiple electronic devices such as mobile, tablets, and laptops for documenting their IP and business processes. Digital signatures required for these documents should be accessible on most if not all of these devices.
• Obtain Consent : It’s necessary to get consent from all signers. To this end, organizations can include in the document being signed a clause that states all parties agree to carry out the transaction electronically.
• Check Document Eligibility : Documents or transactions that are generally eligible for e-signatures include but are not limited to non-disclosure agreements (NDAs), the Technology sector, Life Sciences, and Software Licensing 3 . Other documents that can be signed digitally but must be dealt with caution are related to procurement, corporate resolutions, government filings, etc.
• Select the Right Solution : Identifying and deploying the right e-signature software solution is extremely important. Organizations can choose the best software for their business operations by comparing prices, the number of documents that can be e-signed, and advanced capabilities such as scalability, integration with other platforms, and mobile compatibility.
• Share E-signed Copies : Whether a transaction is simple or complex, it’s a good practice to share copies of the e-signed document(s) with all involved parties. This can be done either via emails or using the e-signature software.

Key Points to Consider Before Using E-Signatures for Patent Assignments

Using electronic signatures for patent documents such as assignments allows organizations to sign documents on electronic devices, reduces risks by ensuring that correct information is filled in patent documents, helps save costs by reducing spend on stationery items and postage/courier services, enhances security by making documents unforgeable, and increases efficiency and time savings.

Notwithstanding these benefits, it’s critical to confirm whether the concerned PTO accepts e-signatures for patent documents. For instance, the USPTO accepts electronic signatures for documents that are submitted electronically only via the EFS-web platform or fax.

It’s also important to bear these points in mind: (i) electronically signed documents should be valid under both federal and state law (ii) the “intent to sign” (15 U.S.C. § 7006) should be considered while evaluating the validity and enforceability of the e-signed assignments. For validating the assignments even further, they can be worded in a way that suggests all involved parties agree to voluntarily use e-signatures.

Note: The most appropriate e-signature for any document filed with the USPTO is “ S-signature “, where signers insert their name between two forward slashes.

Symphony’s Integration with E-Signature Platform for a Seamless Assignment Experience

At MaxVal, we understand that our clients and prospects are continually seeking software solutions to automate, manage and simplify their patent processes. Bearing their requirements and our commitment to providing the best solutions and services in mind, we have partnered with DocuSign , one of the most reliable and globally trusted services for e-signatures and approvals.

The partnership enables us to integrate DocuSign’s e-signature platform with Symphony to provide clients with a seamless experience while signing IP documents such as patent assignments. Clients are also saved from getting embroiled in legal disputes as DocuSign’s e-signatures are compliant with U.S. ESIGN Act, UETA, and the EU eIDAS Regulation. But that’s not all, the platform automatically generates and stores an audit trail for every agreement/transaction, offers the option to use templates to reduce duplicate work and save time, digitally verify the signing party’s identity, send SMS alerts to clients, and sign and send documents on the move from web-based or mobile applications.

Final Thoughts

Given the critical nature of the IP industry and heavy reliance on manual methods, the adoption of e-signatures is expected to be gradual. But considering the benefits of e-signatures, the sooner the organizations start implementing them, the faster they will achieve the material savings and efficiencies mentioned above. Seeking credible solution providers who offer e-signature as a standalone solution or as a platform that can be integrated with an IP solution can be a good starting point for any organization looking to digitize its IP processes.

• https://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm
• https://www.govinfo.gov/content/pkg/PLAW-106publ229/pdf/PLAW-106publ229.pdf
• https://www.docusign.com/how-it-works/legality/global/united-states

Mridu Katoch

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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.

Share this:

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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• Patent Laws, Regulations, Policies & Procedures
• Manual of Patent Examining Procedure
• Chapter 0300
• Section 302

302 Recording of Assignment Documents [R-07.2015]

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 sheets as specified in § 3.28 and § 3.31 , affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
• (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
• (c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.

37 CFR 3.58  Governmental registers.

• (a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12 .
• (b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.

37 CFR Part 3 sets forth Office rules on recording assignments and other documents relating to interests in patent applications and patents and the rights of an assignee.

37 CFR 3.11(c) provides that the Office will record a joint research agreement or an excerpt of a joint research agreement.

302.01 Assignment Document Must Be Copy for Recording [R-08.2012]

37 cfr 3.24  requirements for documents and cover sheets relating to patents and patent applications..

• (a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
• (b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.

The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317 . The document submitted for recordation will not be returned to the submitter. If the copy submitted for recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.

302.02 Translation of Assignment Document [R-08.2012]

37 cfr 3.26  english language requirement..

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.

302.03 Identifying Patent or Application [R-07.2015]

37 cfr 3.21  identification of patents and patent applications..

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.

The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:

“I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.”

302.04 Foreign Assignee May Designate Domestic Representative [R-10.2019]

35 u.s.c. 293   nonresident patentee; service and notice..

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

37 CFR 3.61  Domestic representative.

If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document. The designation of a domestic representative should be clearly labeled “Designation of Domestic Representative” and it will be entered into the record of the appropriate application or patent file. The designation must be signed in accordance with 37 CFR 1.33(b) .

302.05 Address of Assignee [R-08.2012]

The address of the assignee may be recited in the assignment document and must be given in the required cover sheet. See MPEP § 302.07 .

302.06 Fee for Recording [R-10.2019]

37 cfr 3.41  recording fees..

• (a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
• (1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
• (2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27 .

The recording fee set in 37 CFR 1.21(h) is charged for each patent application and patent identified in the required cover sheet except as provided in 37 CFR 3.41(b) . If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1) , currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2) . Customers should check the current fee schedule on the Office website before submitting documents for recordation. See MPEP §§ 302.08 - 302.10 for additional information regarding the acceptable ways to submit documents for recordation.

302.07 Assignment Document Must Be Accompanied by a Cover Sheet  [R-10.2019]

37 cfr 3.28  requests for recording..

Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31 ) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. 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. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.

37 CFR 3.31  Cover sheet content.

• (1) The name of the party conveying the interest;
• (2) The name and address of the party receiving the interest;
• (3) A description of the interest conveyed or transaction to be recorded;
• (i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
• (ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
• (5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
• (6) The date the document was executed;
• (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
• (ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
• (8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest 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.
• (b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
• (1) Indicate that the document relates to a Government interest; and
• (2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see §  3.41(b) ).
• (d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
• (e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
• (f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
• (1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
• (2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
• (3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
• (4) Indicate the date the joint research agreement was executed.
• (h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.

Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28 . The cover sheet for patents or patent applications must contain:

• (A) The name of the party conveying the interest;
• (B) The name and address of the party receiving the interest;
• (C) A description of the interest conveyed or transaction to be recorded;
• (D) Each patent application number or patent number against which the document is to be recorded, or an indication that the document is filed together with a patent application;
• (E) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
• (F) The date the document was executed; and
• (G) The signature of the party submitting the document.

For applications filed on or after September 16, 2012, if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under 37 CFR 1.63 . See 37 CFR 3.31(h) .

If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a "joint research agreement" (in the space provided for the description of the interest conveyed if using Form PTO-1595). The date the joint research agreement was executed must also be identified. The cover sheet must also identify the name(s) of the owner(s) of the application or patent (in the space provided for the name and address of the party receiving the interest if using Form PTO-1595). The name(s) of every other party(ies) to the joint research agreement must also be identified (in the space provided for the name of the party conveying the interest if using Form PTO-1595).

Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.

Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:

• (A) assignment;
• (B) security agreement;
• (C) merger;
• (D) change of name;
• (E) license;
• (F) foreclosure;
• (H) contract; and
• (I) joint research agreement.

Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.

A patent cover sheet may not refer to trademark applications or registrations.

Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

302.08 Mailing Address for Submitting Assignment Documents [R-08.2012]

37 cfr 3.27  mailing address for submitting documents to be recorded..

Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.

37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications. Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

302.09 Facsimile Submission of Assignment Documents [R-11.2013]

Assignments and other documents affecting title may be submitted to the Office via facsimile (fax). See the USPTO website or MPEP § 1730 for the facsimile number. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine. The customer’s fax machine should be connected to a dedicated line because recordation notices will be returned automatically to the sending fax number through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”

Any assignment-related document for patent matters submitted by facsimile must include:

• (A) an identified application or patent number;
• (B) one cover sheet to record a single transaction; and
• (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509 ), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.

The following documents cannot be submitted via facsimile:

• (A) Assignments submitted concurrently with newly filed patent applications;
• (B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same property); and
• (C) Requests for “at cost” recordation services.

The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office. See MPEP § 502.01 . The benefits of a certificate of transmission under 37 CFR 1.8 are available.

If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office “Notice of Non-Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.

302.10 Electronic Submission of Assignment Documents [R-10.2019]

• (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’ Malley III/) in the signature block on the electronic submission; or

37 CFR 1.4  Nature of correspondence and signature requirements.

• (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
• (ii) A patent practitioner (§ 1.32(a)(1) ), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) , must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
• (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
• (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
• (3) Electronically submitted correspondence . Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
• (i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
• (ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
• (5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms ( e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.

Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://epas.uspto.gov for additional information regarding EPAS.

Any assignment related document submitted by EPAS must include:

• (A) an identified application or patent number; and
• (B) one cover sheet to record a single transaction which cover sheet is to be completed on-line.

The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation. If a recordation fee is required, see MPEP § 509 for detailed information pertaining to the payment of fees.

For an assignment document filed electronically, the signature of the person who signs the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2) .

The date of receipt accorded to an assignment document sent to the Office by EPAS is the date the complete transmission is received in the Office.

If a document submitted by EPAS is determined not to be recordable, the entire document, with its associated cover sheet, and the Office "Notice of Non-Recordation" will be transmitted via fax back to the sender if possible. Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

• 301.01-Accessibility of Assignment Records
• 302.01-Assignment Document Must Be Copy for Recording
• 302.02-Translation of Assignment Document
• 302.03-Identifying Patent or Application
• 302.04-Foreign Assignee May Designate Domestic Representative
• 302.05-Address of Assignee
• 302.06-Fee for Recording
• 302.07-Assignment Document Must Be Accompanied by a Cover Sheet 
• 302.08-Mailing Address for Submitting Assignment Documents
• 302.09-Facsimile Submission of Assignment Documents
• 302.10-Electronic Submission of Assignment Documents
• 303-Assignment Documents Not Endorsed on Pending Applications
• 304‑305-[Reserved]
• 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
• 307-Issue to Non-Applicant Assignee
• 308-Issue to Applicant
• 309-Restrictions Upon Employees of U.S. Patent and Trademark Office
• 310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
• 311-Filing of Notice of Arbitration Awards
• 312-[Reserved]
• 313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
• 314-Certificates of Change of Name or of Merger
• 315-Indexing Against a Recorded Certificate
• 316-[Reserved]
• 317.01-Recording Date
• 317.02-Correction of Unrecorded Returned Documents and Cover Sheets
• 317.03-Effect of Recording
• 318-Documents Not to be Placed in Files
• 319-[Reserved]
• 320-Title Reports
• 321‑322-[Reserved]
• 323.01(a)-Typographical Errors in Cover Sheet
• 323.01(b)-Typographical Errors in Recorded Assignment Document
• 323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
• 323.01(d)-Expungement of Assignment Records
• 324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
• 325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

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IP Law Bulletin

In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

In Europe,  an assignment of a patent application must be in writing and "shall require the signature of the parties to the contract." (Emphasis added.) Thus, according to European law, which was highlighted in a Board of Appeals of the European Patent Office (EPO) on November 14, 2006 , both the assignor and the assignee must sign the assignment document. While contract law in the U.S. and in a number of other countries consider a contract signed by the conveying party to be valid for this type of one-way conveyance, this is not true everywhere in Europe. In many parts of Europe, contract law requires that both parties sign for all conveyances. Thus, an assignment signed only by the inventor may not be effective in countries such as Great Britain and France.

Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it . This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. If, for example, a PCT application claims priority to an earlier-filed U.S. application, the claim must be made by the identical legal person who filed the earlier priority application or a successor in title. This identity or relationship must be valid at the time the PCT application is filed. Where a U.S. priority document is filed in the name of the inventors and the PCT application is filed in the name of the owner, there must be an assignment from the inventors to the owner prior to the filing of the PCT application. This can be particularly problematic when a provisional application is used as a priority document. The provisional application never becomes a patent and does not need to be assigned. Thus, assignments are often only executed after a non-provisional application is filed. While problems with valid claims to priority should be eased under the America Invents Act (AIA) because U.S. applications can now be filed in the name of the owner instead of the inventor , care should be taken to ascertain a proper right to claim priority particularly if there is any difference in the identity of the applicant.

As a practice tip, practitioners should make sure all assignments are signed and dated before the PCT filing date and are signed by both the assignee and assignor. If this cannot be done, or if the right to claim priority is at all uncertain, practitioners should file the PCT application in the name of the "person" who filed the priority application and provide any correction later. Practitioners should also make sure that the assignment specifies the priority application(s) with particularity, includes an assignment of the right to claim priority, and make sure each signature is either witnessed or notarized. These measures should be taken to prevent complications in various jurisdictions, such as some countries in Europe.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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