Obtaining a patent can be a long process. However, transferring legal complexities and ownership intricacies can make patent transfers even more difficult. Having facilitated numerous successful transfers, I understand the nuances involved in the transfer process.
Today, I will guide you on how to transfer a patent and help you smoothly transition ownership.
How to Transfer a Patent
When a patent application is drafted and submitted, at least one inventor must always be identified. Whoever the inventor is or inventors are, they take ownership of that patent. The patent owner has the right to prohibit anyone else from doing the following concerning the invention:
- Manufacturing
- Selling
- Using
- Importing
The patent owner can typically claim damages if an individual or company infringes these patent rules.
The owner (inventor) must sign a USPTO patent assignment if patent ownership is to be transferred to another entity or company. A patent assignment is the smoothest, most reliable method of transferring a patent. This is an agreement where the assignor transfers a percentage or all of their patent rights to another entity, even if the patent application is still pending.
Transferring a Patent Application and Granted Patent
According to the USPTO, “During examination of a pending patent application or after the patent is granted, the owner of the patent may change.” Therefore, if a patent application has been submitted and has not yet been approved, the owner can decide to transfer ownership to another party.
The initial owner of the utility patent may also “retain ownership [and] change its name.” To record the patent assignment or name change, the original owner must do so by completing a Recordation Cover Sheet via the USPTO’s Assignment Recordation Branch.
They must also submit a copy of the assignment, legal documentation (consult with a patent attorney for further help), and proof of the name change, if necessary.
Patent Assignment Explained
To transfer ownership of a patent application, a document known as a patent assignment must be completed. Under 35 U.S.C. § 261, patents are assignable by an instrument in writing, and recording such assignments is critical to establish ownership rights against subsequent purchasers or mortgagees.
The entity or individual transferring the rights must sign a patent assignment. The recipient is not usually required to sign the document; however, certain countries require both assignor and assignee signatures. This is important to know if you need to transfer a patent internationally. Once completed, the assignment is recorded with the USPTO.
I recommend inventors only sign the document once the patent application has been submitted. This gives a better chance of speeding up the process of transferal by the USPTO.
Obtaining Written Assignments for New Patent Applications
Before filing a patent application, it’s important to obtain written assignments from every individual who contributed to the invention. This includes anyone who played a role in conceiving or reducing the invention to practice, even if their contribution seems minor. These assignments serve as legal proof of ownership, transferring the inventors’ rights to your company.
Having these documents in place prevents potential disputes over ownership in the future, which can be especially important when seeking investment or licensing agreements. Make sure each assignment is clear, concise, and specifically identifies the invention being assigned.
Recording a Patent Assignment With the USPTO
After executing a patent assignment, it’s crucial to record it with the United States Patent and Trademark Office (USPTO). This recording serves as public notice of the ownership transfer and protects your rights. The USPTO recommends recording assignments within three months of execution.
You can record the assignment online through the USPTO’s Electronic Patent Assignment System (EPAS) or by mail. The recording process involves submitting the assignment document along with the required fee.
When Would I Need to Execute a New Assignment for a Related Application?
While an initial assignment may cover the original patent application, you might need to execute new assignments for related applications. This includes continuation applications, divisional applications, and continuations-in-part. These applications stem from the original application but may have different claims or subject matter.
It’s vital to obtain new assignments from the inventors to make sure that ownership of these subsequent applications is also properly transferred if the original assignment doesn’t explicitly cover these types of related applications.
What If an Investor Won’t Sign the Written Assignment?
It’s important to understand their concerns and try to negotiate a mutually agreeable solution if an investor refuses to sign a written patent assignment agreement. Explain the importance of the assignment for securing the company’s intellectual property rights and attracting future investment.
Suppose direct negotiation fails, consider alternative arrangements like a licensing agreement contract that grants the investor certain rights to the patent without full ownership. However, if all attempts at negotiation fail, legal action might be necessary to protect the company’s interests.
Do I Need to Record My Assignments in Foreign Countries?
Yes, if you are seeking patent protection in countries outside the United States, you should record your patent assignments in those countries as well. Each country has its own intellectual property laws and regulations, including specific requirements and deadlines for recording assignments.
International transfers should comply with the Patent Cooperation Treaty (PCT), particularly Article 11, to ensure global recognition of ownership.
Failing to record an assignment in a foreign country can jeopardize your ownership rights and ability to enforce your patent in that jurisdiction. Consult with a patent attorney or agent familiar with the laws of each country where you have filed patent applications to ensure compliance.
When to File a Patent Assignment
In most circumstances, patent assignments should be filed as soon as possible after the invention was created or acquired. This can help establish clear ownership and avoid potential complications.
- Early inventor signatures are advisable: Obtaining inventor signatures early is highly recommended. This is because it can be challenging to locate them at a later date, especially ex-employees.
- Concurrent assignment filing: Preferably, the executed assignment should be filed alongside the patent application. It should be submitted within three months as per 35 USC 261, if this is unavailable.
- Strategic assignment recording: The recording of completed assignments is sometimes delayed. Recording the assignment before publication can help display the assignee’s name in the application. This means those interested can search for the application more efficiently
Effective Search Methods for Patent Assignments
You can search for patent assignments via the USPTO website. You must choose “Patent Assignment” and input the relevant information, such as patent numbers or assignee names. You can then locate records of transferred patent ownership.
Transfer (Assignment) of Patent and License Differences
It is easy to confuse the two when dealing with royalties patent licenses, and assignment agreements. Let’s clear up what each means:
- A license agreement grants permission to a third party (the licensee) to use the patent while the original owner (the licensor) retains ownership. The licensee tends to receive certain rights, which can be broad or restricted, and pays royalties or fees to the licensor for using the patented technology.
- A patent assignment involves transferring ownership rights from the original owner to an assignee. One party (the assignor) permanently transfers their rights to another party (the assignee). Therefore, the assignee becomes the new owner of the patent.
Why Transfer a Patent?
There could be various reasons to transfer a patent. Some of the most common include:
- Strategic alignment with another entity’s goals – Many inventors transfer or assign their patents to a company in order to align their business entity with complementary objectives. In turn, this can maximize the product’s potential impact.
- Monetization through selling or licensing – The patent transfer can allow the original owner to generate revenue by selling it outright or licensing its use to others for an agreed fee.
- Focus on core business areas – It is possible to shift the attention and resources towards the owner’s primary business activities, improving overall efficiency.
- Risk mitigation by offloading maintenance costs – Transferring a patent may relieve the owner of various financial and administrative burdens associated with maintaining and protecting the patent.
- Streamlined portfolio management – By consolidating or optimizing a patent portfolio, assignors can make managing and exploiting valuable intellectual property assets easier via transfers.
The sale of patent results in a one-off payment and all rights are given up (in most cases). It is essential to consult with a patent attorney to guarantee a fair fee and that all legal requirements are followed.
Related Questions
How Much Does It Cost to Transfer a Patent?
The cost to transfer a patent in the United States is currently estimated at $235, though this is subject to change. This entails the change of ownership of a single patent. Fees can vary depending on individual factors and patent specifics.
Is a Patent a Transferable Property?
A patent is a transferable property. This is because patents can be bought, sold, licensed, or assigned, thus allowing the owner to transfer their rights to another entity through legal processes.
Can Someone Copy My Patent?
Yes, someone can copy your patent in a few ways. They might try to design around it by making slight changes that avoid literal infringement. They could also challenge the patent’s validity in court. Remember, your patent protection is limited to the countries where it’s granted.
Conclusion
Transferring a patent typically involves a structured legal patent process with strict patent laws that require a qualified patent attorney or expert. Assignors can effectively change ownership or grant usage rights to another party through assignments, licenses, or agreements.
