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patent assignment
2024 03 20
Mastering Patent Assignment: A Guide for Patent Owners and Collaborators

Patent assignment law enables the transfer of patent ownership from an original inventor, to those in a position to bring the invention or idea to its full market potential. While the concept of new assignment might seem straightforward, the layers of strategy, legal nuance, and potential impact patents have on your organization are profound.

 

In this guide, we’ll consider the strategic framework and practical steps to master patent property assignment.

 

Understanding Patent Assignments

 

Patent assignment involves a total transfer of ownership assign patent rights from the original applicant, inventor or patent holder (the assignor) to another entity or individual (the patent assignee)). It’s akin to selling a patent, where the assignee owner gains the exclusive rights to the patent as well as the ability to license those rights to others. For those developing or investing in new technologies, patent assignments are the key to protecting intellectual property and commercializing the innovations you’ve funded.

 

Many confuse patent assignments with licensing, but there are significant differences. Licensing is more like renting a patent than owning it. In this scenario, the patent owner grants permission to another party (the licensee) to use the applicant or patented technology under defined conditions while retaining ownership of the patent. This arrangement establishes an ongoing relationship between all parties: the the owner, inventor or original owner, the patent office, licensor and licensee, allowing the patent owner to potentially earn from their IP through multiple channels simultaneously.

 

Navigating Ownership Through Assignment or Licensing

 

Patent assignment tends to arise in the research or employment context where an individual person, be it co inventor or an employee, professor, or student, creates new technology on behalf of a company or an entity. In the the United States patent itself, only humans, not businesses, companies or other entities, can be named inventors on a patent unless the patent is assigned to an entity. So, patent assignment serves as the legal channel through which the individual inventor can transfer ownership to an entity like a business, a corporation or a university.

 

Essentially, organizations and companies that fund and support the development of new innovations will show interest and typically seek exclusive right of patent assignment, whereas individual inventors looking to profit from their creation while retaining their interest and ownership of claimed invention tend to show interest and prefer licensing agreements.

 

Strategic Considerations for Patent Owners

 

Patent assignments can be a powerful business tool for businesses looking to expand their technological capabilities or refine their IP assets. Whether you are a patent owner or an organization, company or business aiming to acquire patents from other owners, the patent infringement journey demands strategic planning. This requires a deep understanding of the patent’s value, due diligence, and negotiating terms that match your business goals.

 

Yet, the path to a successful patent assignment agreement is full of potential hurdles, such as ownership, patent and trademark office, title disputes, ambiguous contracts, and obligations under existing licenses. To navigate these challenges, patent owners and their partners should focus on clear, comprehensive agreements, thorough pre-assignment due diligence, and a keen awareness of the interest of all parties and joint owners and parties’ rights and responsibilities.

 

For organizations, your collaborators may be more than just your employees. You may need to consider whether independent contractors, subcontractors, or students are working on the patent applications, patents or innovations you’re funding. Each member plays a unique role in the development of an invention or new technology, and you’ll need to have clear agreements outlining their rights or assignments with respect to joint ownership of the invention or underlying IP.

 

Also, if new material is introduced in the form of a new patent filing, even if it’s developed by the same inventors working on publication number of other patent applications for the same invention or similar research, it will require a new patent assignment if you intend to own the new invention claimed innovation the patent application.

 

Best Practices for a Smooth Patent Assignment Process

 

The whole patent application and assignment process is not just a transaction but a strategic maneuver that can significantly impact a company or business’s growth and innovation trajectory. For those at the helm of a company owns this process, whether you’re consolidating your company and technology portfolio or acquiring new IP, a thoughtful approach to patent application and assign it is imperative.

 

Here are some tips for a smooth assignment process:

 

1. Conduct Rigorous Due Diligence

 

Start by examining the ownership of a patent’s history and current standing. Verifying ownership and legal status is not merely about ticking boxes; it’s about ensuring a smooth sail ahead, free from disputes or legal entanglements. Likewise, be sure you understand the impact of any existing employment agreement, licenses or employment agreement on third-party interests. This step is the foundation upon which a secure patent assignment agreement, license agreement or employment agreement is built.

 

2. Craft Precise Agreements

 

An effective assignment agreement or contract demands legal expertise and clarity. These documents should spell out the transfer of rights, title and obligations with unmistakable precision. That said, you should tread carefully if you’re using standard employment agreement contracts or oral agreements to assign IP rights. Employment agreement agreements often pre-date inventions and might not articulate the patent rights being transferred with legal specificity. They can also contain sensitive or confidential information throughout, making them less than ideal for public recording.

 

Instead, tailor each agreement to the patent property at hand, clarifying exactly what is personal property and intellectual property is being assigned to one party without ambiguity.

 

3. Time the Application and Assignment Strategically

 

The saying “timing is everything” is particularly true when it comes to patent assignments. When possible, it’s best to execute and assign an assignment before filing the patent application. It clarifies ownership and the ownership interest upfront, reducing the risk of the applicant or inventor refusing the obligation to assign assignment post-filing.

 

Also, keep a close eye on deadlines for assign them. An assignment should be recorded and filed with the USPTO within three months of filing date or the assignment date. This can be done in writing assignments recorded in person or electronically without a recordation fee.

 

4. Be Mindful of International Rules

 

In a global economy, patents often cross borders. If international validity of patent applications is a goal, it’s crucial to work with qualified and experienced patent attorneys in the respective foreign country local law jurisdictions. Meet with them before writing patent application or executing any documents to ensure your assignments and patents will be valid in different countries without jeopardizing future IP rights as you expand.

 

The Path Forward

 

For patent owners and entities, the nuances of a patent license assignment require a strategic, informed approach. By adhering to some of the best practices mentioned, you can ensure your patent assignments not only comply with legal standards but also align with your long-term objectives. With due diligence and seasoned guidance, you can protect and capitalize on the full value of your IP assets.

 

Got questions?

 

Reach out to our team and consult on a case-by-case basis.

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