patent assignment clause

Sample Patent Assignment Agreements

Three examples of standard language you'd use to assign your rights in a patent..

If you hold a patent , then you have certain exclusive rights over your particular invention, and those rights have economic value. By way of background, a patent is a form of intellectual property that gives inventors certain exclusive rights over their inventions. Typically those exclusive rights last for 20 years, and serve to prevent others in the marketplace from copying (or "infringing") that patented invention.

Getting your patent probably took a good amount of time and money, and you don't want others to take advantage of that. Still, there are times when you might want to license or otherwise assign your patent.

Most commonly, you would do this for monetary reasons, giving another person or entity the ability to borrow or buy your patent in exchange for some amount of money or payment stream. Of course, you'd want to make sure the agreement is clearly set forth in writing.

To help you with this, three sample patent assignment agreements are provided below. They are intended to be used as follows:

• ASSIGNMENT OF RIGHTS OF PATENT: An assignment is intended for use for a patent that has been issued by the U.S. Patent and Trademark Office (USPTO).
• ASSIGNMENT OF RIGHTS TO APPLICATION: This type of assignment is for the rights to an invention for which a patent application has been filed. However, there is no guarantee that the USPTO will approve this application, so the assignment has lesser value.
• ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS WITHOUT PATENT FILED: This type of assignment is intended for use when no application has been filed and no registration has been granted for the invention. Obviously, this method has the lowest economic value of the three types of assignments.

Before filling out one of these, you should read more about the process of assigning patents and speak with a patent attorney to ensure that you are not giving up any important rights or protections. Patent assignments are complex, and often need customization by an experienced lawyer before use.

• ASSIGNMENT OF RIGHTS - PATENT ISSUED
• ASSIGNMENT OF RIGHTS: PATENT APPLICATION
• Assignee Can Be Applicant
• ASSIGNMENT OF INTELLECTUAL PROPERTY RIGHTS: NO PATENT ISSUED OR APPLICATION FILED
• Additional Resources

____________ [insert name of person or company assigning rights] ("Assignor") is owner of U.S. Patent Number: ______, dated ______, titled ____________ [insert name of invention], (the "Patent"). ___________ [insert name of person or company to whom rights will be assigned] ("Assignee") desires to acquire rights in and to the Patent.

Therefore, for valuable consideration, the receipt of which is acknowledged, Assignor assigns to Assignee ____% [insert percentage of interest that is being assigned - it can be less than 100%, but it cannot be more than 100%] of his or her right, title and interest in the invention and Patent to Assignee for the entire term of the Patent 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 Patent. 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.

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 Patent and any and all applications and registrations for the invention in any and all countries.

Date: _______________ ________________________

[to be completed by notary public]

On this _____ day of _________, before me, _________________________, the undersigned Notary Public, personally appeared ____________ ASSIGNOR, personally known to me (or 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 or she executed the same. WITNESS my hand and official seal in _____________ County of ______________ on the date set forth in this certificate.

________________________________

Notary Public

___________ [insert name of person or company assigning rights] ("Assignor") is owner of _____________ [insert name of invention] , as described in the U.S. Patent Application signed by Assignor on _____ [insert date you signed your patent application] , U.S. Patent and Trademark office Serial Number: _____, filed ________ [insert filing date], (the "Patent Application"). ___________ [insert name of person or company to whom rights will be assigned] , ("Assignee") desires to acquire all rights in and to the Patent Application and the patent (and any reissues or extensions) that may be granted.

Therefore, for valuable consideration, the receipt of which is acknowledged, Assignor assigns to Assignee ___% [insert percentage of interest that is being assigned - it can be less than 100%, but it cannot be more than 100%] of his or her right, title, and interest in the invention and Patent Application (as well as such rights in any divisions, continuations in whole or part, or substitute applications) to Assignee for the entire term of the issued Patent and any reissues or extensions that may be granted and for the entire terms of any and all foreign patents that may issue from foreign applications (as well as divisions, continuations in whole or part, or substitute applications) filed claiming the benefit of the Patent Application.

Assignor authorizes the United States Patent and Trademark Office to issue any Patents resulting from the Patent Application to Assignee according to the percentage interest indicated in this assignment. The right, title, and interest is to be held and enjoyed by Assignee and Assignee's successors and assigns as fully and exclusively as it would have been held and enjoyed by Assignor had this assignment not been made.

Assignor further agrees to: (a) cooperate with Assignee in the prosecution of the Application and 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 Patent for the invention in any and all countries.

Date: _______________ ____________________

Now, as a result of passage of the America Invents Act (AIA) in 2012, the assignee (the person or company to whom the inventor assigned rights) can be listed as a the patent applicant (the "obligated assignee"). Although proof of the assignment is not required at the time of filing, the assignment document must be filed by the time that the issue fee is due for the application.

______________ [insert name of person or company assigning rights] ("Assignor") is the owner of all proprietary and intellectual property rights, including copyrights and patents, in the concepts and technologies known as _____________ [insert name of invention] and more specifically described in Attachment A [attach a description of the invention to the Assignment and label it "Attachment A"] to this Assignment (and referred to collectively as the "Invention") and the right to registrations to the Invention. ______________ [insert name of person or company to whom rights will be assigned] , ("Assignee") desires to acquire the ownership of all proprietary rights, including, but not limited to, the copyrights, trade secrets, trademarks and associated good will and patent rights in the Invention and the registrations to the Invention;

Therefore, for valuable consideration, the receipt of which is acknowledged, Assignor, hereby assigns to Assignee ___% [insert percentage of interest that is being assigned - it can be less than 100%, but it cannot be more than 100%] of all right, title and interest in the Invention, including:

(1) all copyrights, trade secrets, trademarks and associated good will and all patents which may be granted on the Invention;

(2) all applications for patents (including divisions, continuations in whole or part or substitute applications) in the United States or any foreign countries whose duty it is to issue such patents;

(3) any reissues and extensions of such patents; and

(4) all priority rights under the International Convention for the Protection of Industrial Property for every member country.

Assignor warrants that: (1) Assignor is the legal owner of all right, title and interest in the Invention; (2) that such rights have not been previously licensed, pledged, assigned, or encumbered; and (3) that this assignment does not infringe on the rights of any person. Assignor agrees to cooperate with Assignee and to execute and deliver all papers, instruments, and assignments as may be necessary to vest all right, title, and interest in and to the intellectual property rights to the Invention in Assignor. Assignor further agrees to testify in any legal proceeding, sign all lawful papers and applications, and make all rightful oaths and generally do everything possible to aid Assignee to obtain and enforce proper protection for the Invention in all countries.

Date: _______________ ____________________________

On this _____ day of _________, before me, _________________________, the undersigned Notary Public, personally appeared ____________ ASSIGNOR, personally known to me (or 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 or she executed the same.

As you consider assigning your patent, check out these additional resources from Nolo:

Letter Confirming Employee's Ownership of Intellectual Property Rights (Establish ownership of a creative work you have made as an employee).

Profit From Your Idea: How to Make Smart Licensing Deals (Get everything you need to protect and profit from your invention with this all-in-one guide).

Thank you for your feedback

Please explain why

Talk to a Lawyer

Need a lawyer? Start here.

How it Works

• Briefly tell us about your case
• Provide your contact information
• Choose attorneys to contact you

Talk to a Patent attorney.

How it works.

Copyright © 2024 MH Sub I, LLC dba Nolo ® Self-help services may not be permitted in all states. The information provided on this site is not legal advice, does not constitute a lawyer referral service, and no attorney-client or confidential relationship is or will be formed by use of the site. The attorney listings on this site are paid attorney advertising. In some states, the information on this website may be considered a lawyer referral service. Please reference the Terms of Use and the Supplemental Terms for specific information related to your state. Your use of this website constitutes acceptance of the Terms of Use , Supplemental Terms , Privacy Policy , Cookie Policy , and Consumer Health Data Notice .

Considerations for Patent Assignments After Minerva Ruling

• Post author By Austen Zuege

By Austen Zuege & Benjamin Edlavitch

A version of this article about patent assignments and assignor estoppel appeared in an online magazine on August 4, 2021 as intellectual property “expert analysis”.

Introduction

For many decades, the terms and content of patent assignments have been relatively uncontroversial.  However, the Supreme Court’s recent ruling in Minerva Surgical, Inc. v. Hologic, Inc. established that assignor estoppel will apply to some assignments but not others. [i]   Consequently, the execution of an assignment of patent rights is now potentially more contentious than before.  Parties to an assignment may now wish to scrutinize the terms of an assignment document as well as the factual context around the execution of an assignment that may give rise to implied terms.  What follows is an analysis of practical considerations for a patent assignment, including sample assignment clauses that might be negotiated, in light of Minerva . 

Minerva reaffirmed the doctrine of assignor estoppel but limited its scope to what an assignor represents in assigning patent rights.  The assignor is estopped from challenging the validity of the patent when the “assignor’s claim of invalidity contradicts explicit or implicit representations” the assignor made. [ii] A key aspect of the Court’s holding involved determining the scope of “implicit representations” that result in assignor estoppel. 

The Minerva Decision

Inventor Truckai had assigned patent applications to Novacept, Inc., which was later acquired by Hologic, Inc. [iii]   Afterwards, Truckai founded Minerva Surgical, Inc., and Hologic sued Minerva for patent infringement on resulting patents. [iv]   Hologic argued that assignor estoppel barred Minerva from arguing the patents were invalid and the district court and the Federal Circuit both found that assignor estoppel barred the defendant from pursuing invalidity defenses. [v]  The Court vacated and remanded the case in a 5-4 ruling and explained that “the limits of the assignor’s estoppel go only so far as, and not beyond, what he represented in assigning the patent application.” [vi]   Therefore, “if Hologic’s new claim is materially broader than the ones Truckai assigned, then Truckai could not have warranted its validity in making the assignment” and, thus, “there is no basis for estoppel.” [vii]

The Court outlined a total of three examples where assignor estoppel does not apply.  “One example . . . is when the assignment occurs before an inventor can possibly make a warranty of validity as to specific patent claims.  Consider a common employment arrangement.   An employee assigns to his employer patent rights in any future inventions he develops during his employment; the employer then decides which, if any, of those inventions to patent.  In that scenario, the assignment contains no representation that a patent is valid.  How could it?  The invention itself has not come into being.” [viii]     “A second example is when a later legal development renders irrelevant the warranty given at the time of assignment.” [ix]   Thirdly, a post-assignment change in patent claim scope in which the “new claims are materially broader than the old claims” does not trigger assignor estoppel. [x]   This last example was the situation alleged in Minerva : materially broader continuation claims filed after execution of the assignment were not subject to assignor estoppel because the Court held there was no implied warranty of validity. [xi]   While the majority opinion helpfully gave a few examples of circumstances that would or would not give rise to an implied warranty, they are hardly exhaustive and do not reach some fairly common assignment scenarios, leaving some ambiguity. [xii]  

Practical Considerations and Possible Assignment Clauses

Almost all of the factors that determine whether assignor estoppel will apply may be within the control of the parties to an assignment.  It may be possible to include explicit terms in the assignment document in order to avoid later dispute about what was or was not implied by circumstances of execution.  The question becomes, what are the sorts of terms that assignors and assignees may now wish to consider?  The following are simply examples; particular parties will have different interests and their relative bargaining power will of course vary from one situation to the next.  Though as discussed below the enforceability of certain terms should not be assumed in all scenarios. 

Assignees will now have motivations to try to add clauses to employment and services agreements establishing assignment obligations with some or all of the following additional terms: assignment timing requirements ( i.e. , after assignor estoppel attaches), requirements for non-quitclaim assignment or warranty of validity requirements, and express no-challenge clauses.  For example, if an assignee’s claims are materially broadened, then the assignor could not have warranted the claims’ validity at the time of the assignment and there is no basis for assignor estoppel, as the Court held in Minerva . [xiii]  Assignees seeking to acquire patent rights on a stand-alone basis will now have reasons to do one or more of the following: add an express warranty of validity or a no-challenge clause to an assignment, obtain a further post-grant warranty of validity (especially if any claim is materially broader), obtain a new assignment with each continuation or divisional application having materially different claims (especially any broader claims), and include a choice of law provision.  The following are sample clauses that might be used to pursue assignee objectives:

I hereby waive all my rights to challenge validity of said invention in the United States and its territorial possessions and in all foreign countries and of all Letters Patent or similar legal protection in the United States and its territorial possessions and in any and all foreign countries to be obtained for said invention by said application or any continuation, continuation-in-part, divisional, renewal, substitute, or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted. [No-challenge clause for stand-alone assignment]

I hereby waive all my rights to challenge validity of any and all inventions which I may solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the period of time I am in the employ of the Company in the United States and its territorial possessions and in all foreign countries (collectively, “the Invention(s)”) and of all Letters Patent or similar legal protection in the United States and its territorial possessions and in any and all foreign countries to be obtained for the Invention(s) by any application or any continuation, continuation-in-part, divisional, renewal, substitute, or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted. [No-challenge clause for employment agreement]

Assignors (including employee-inventors [xiv] ) will now have greater reasons to question and push back against terms present in—or missing from—assignee-supplied assignment forms.  As the Supreme Court put it, assignor estoppel “raises the price of patent assignments.” [xv]   For example, assignors will have reasons to demand one or more of the following: insist upon only a quitclaim assignment [xvi] or language expressly denying any warranty of validity, inserting a clause that assignor estoppel shall not apply, sign an assignment only with regard to a patent application lacking claims, [xvii] refuse to sign any “confirmatory” assignment that gives rise to a new warranty, and  negotiate additional consideration ( e.g. , larger payment, bonus(es), a raise in base compensation, promotion in job title, etc.) if an assignee expects any express or implied warranty.  The following are sample clauses that might be used to pursue some of those assignor objectives:

I hereby make this assignment without representation or warranty as to patentability or validity of said invention. [No Warranty of Validity]

It is possible that an assignor could unilaterally write-in additional terms into an assignment form prepared by the assignee, given that only the assignor conventionally signs an assignment under U.S. law. [xviii]   Assignees might be faced with scenarios where further consideration is required to subsequently “undo” terms unilaterally written-in by the assignor if consideration was already paid—giving rise to assignees withholding payment until the executed assignment (free from unilateral modifications) is delivered.   

Given that assignors and assignees may have widely divergent interests, with each seeking to receive more in exchange for less, there may be a need to reach a compromise with regard to assignment terms.  For example, one or more of the following terms might be agreed to: explicitly spell out what due diligence has or has not been performed and expressly include a partial warranty of validity limited to actual knowledge and due diligence activities and/or include express language that assignor estoppel is limited only to validity challenges based on the law as it exists at the time and/or only to prior art of which the assignor was actually aware at the time (putting the obligation on the assignee to inform the assignor of all material prior art). [xix]   The following are sample clauses that might be used to pursue some of those compromise objectives:

After performing due diligence, I hereby warrant and represent my belief in the validity of the specific claims presented to me as of the Effective Date of this Assignment to define said invention only with regard to prior art actually known to me as of the Effective Date and only with regard to patent statues, regulations, case law, and any other controlling authorities in effect as of the Effective Date, but this warranty does not extend to any other patent claims that are materially broader than the specific claims presented to me as of the Effective Date, and I hereby accept no liability for any finding of unpatentability or invalidity by any competent authority; and [Partial Warranty of Validity]

I agree, upon payment of a reasonable fee, to conduct further due diligence with respect to any materially broader claim and to make a similar warranty and representation of my belief in validity of that materially broader claim if, in my discretion, such a warranty and representation is justified by all of the facts and information available to me at that time. [Promise to Make Future Warranties for a Reasonable Fee]

Enforceability Considerations

The enforceability and effectiveness of warranties of validity and related contractual clauses present a number of other issues.  Among those is the need for consideration in order for an assignment to constitute a valid contract. [xx]   This is where an inventor bonus program could be useful—a bonus could be provided as consideration for an assignment and an explicit warranty, or even just for the warranty alone. 

Obligations to assign, such as in employment agreements, are subject to state (or foreign) law. [xxi]   But obligations to assign do not necessarily also create an obligationto warrant as to validity.  A party under an obligation to assign might therefore refuse to provide a warranty of validity absent receipt of further consideration.  And the enforceability of an employment agreement or master services agreement that purports to impose a prospective obligation to warrant validity of an invention not yet conceived is a question distinct from the enforceability of prospective obligations to assign, and may need to be sorted out by courts.

To even further complicate things, it has been suggested that a confirmatory assignment could create a warranty of validity that did not attach to an earlier assignment. [xxii]   That position seems doubtful, though it turns on the particular language used.  A true “confirmatory” assignment merely acknowledges (confirms) a prior assignment, perhaps curing technical defects such as to fix a typo, add missing information needed to accommodate recordation requirements in particular jurisdictions, or to omit sensitive price information in a publicly recorded version.  If the prior assignment contained no warranty of validity, express or implied, then merely confirming that prior (warranty-less) assignment creates no new warranty.  That would be especially true for nunc pro tunc assignments that relate back to the effective date of an earlier warranty-less assignment.  Many assignments include boilerplate language about further writings to effectuate the transfer in the event of a technical defect or barrier to recordability.  But if a new warranty is expressly (or implicitly) added to a purportedly “confirmatory” assignment, then the assignment is not really (or not merely) a confirmatory assignment and there must be consideration for the new warranty term—continued employment alone would not be sufficient consideration in some states. [xxiii]  

The execution of an assignment of patent rights is now potentially more contentious than before.  However, it seems that amending an assignment in light of Minerva may reduce disputes subsequent to its execution.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

[i] U.S. No. 20–440 (June 29, 2021). 

[ii] Id. Slip Op. at 1.

[iii] Id. at 2-3.

[iv] Id. at 3.

[v] Id. at 3-4.

[vi] Id. at 16.

[viii] Id. at 15.

[x] Id. at 15-16.

[xi] Id. at 16-17.

[xii] There are also ambiguities in the Court’s decision that stem from shifting terminology.  For instance, are (granted) “patent claim(s)” = (pending) patent application claim(s) “presented” to the USPTO = (unfiled) claims prepared by assignee’s attorney = (unfiled) claims prepared by assignor or assignor’s attorney?  A “patent claim” is not necessarily synonymous with a “patent application claim”.  An assignment knowingly executed while a pending patent application claim stands rejected might arguably carry no warranty, though Minerva does not explicitly address such a scenario. 

[xiv] See Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys. , Inc. , 563 U.S. 776, 786 (2011) (“In most circumstances, an inventor must expressly grant his rights in an invention to his employer if the employer is to obtain those rights.”); Banks v. Unisys Corp . , 228 F.3d 1357, 1359 (Fed. Cir. 2000) (“The general rule is that an individual owns the patent rights to the subject matter of which he is an inventor, even though he conceived it or reduced it to practice in the course of his employment.”).

[xv] Minerva , Slip Op. at 14,n.4.   

[xvi] See, e.g., Van Renesselaer v. Kearney , 52 U.S. 297, 322 (1851); Black’s Law Dictionary 503 (10th ed. 2014) (quitclaim deed is one that “conveys a grantor’s complete interest or claim in certain real property but that neither warrants nor professes that the title is valid.”).  Assignor estoppel for patents is derived from real property law.   Minerva , slip op. at 5-6.  A patent quitclaim assignment could include language such as “hereby conveys and quitclaims” or “hereby transfers by quitclaim”, and the document title could explicitly use the word “quitclaim” (or “quit-claim”). 

[xvii] A U.S. utility patent application (but not a design patent application) can receive a filing date even if lacking a claim.  37 C.F.R. § 1.53 .

[xviii] However, handwritten changes to an assignment are normally initialed and dated by each of the assignor(s) to avoid disputes about post-execution changes not agreed to by the assignor(s).  See MPEP § 323 . 

[xix] See Mast, Foos, & Co. v. Stover Mfg. Co. , 177 U.S. 485, 493 (1900) (“we must presume the patentee was fully informed of everything which preceded him, whether such were the actual fact or not”); In re Wood , 599 F.2d 1032, 1036 (CCPA 1979) (“we presume full knowledge by the inventor of all the prior art in the field of his endeavor. However, with regard to prior art outside the field of his endeavor, we only presume knowledge from those arts reasonably pertinent to the particular problem with which the inventor was involved.”) accord Airbus SAS v. Firepass Corp. , 941 F.3d 1374, 1380 (Fed. Cir. 2019).

[xx] See Mars, Inc. v. Coin Acceptors, Inc. , 527 F.3d 1359, 1370 (Fed. Cir. 2008) ( “ Construction of patent assignment agreements is a matter of state contract law.”) and Jim Arnold Corp. v. Hydrotech Sys., Inc. , 109 F.3d 1567, 1572 (Fed. Cir. 1997) (“the question of who owns the patent rights and on what terms typically is a question exclusively for state courts”; collecting cases); but contrast, e.g., Hewett v. Samsonite Corp. , 507 P.2d 1119, 1121 (Colo. App. 1973) (continued employment insufficient consideration for patent assignment, which was found invalid for lack of consideration) and Jostens, Inc. v. Nat’l Computer Sys. , 318 N.W.2d 691, 703-04 (Minn. 1982) (mere continued employment provided insufficient consideration under Minnesota law for coercive intellectual property agreement) with, e.g., Preston v. Marathon Oil Co. , 684 F.3d 1276, 1284-85 (Fed. Cir. 2012) (under Wyoming law, no additional consideration is required to support an employee’s post-employment execution of an agreement to assign intellectual property to his employer). A state-by-state or country-by-country survey is beyond the scope of this article.   

[xxi] See Allen v. Riley , 203 U.S. 347, 355-57 (1906); Akazawa v. Link New Tech. , 520 F.3d 1354, 1356-58 (Fed. Cir. 2008); see also 35 U.S.C. § 261 ; but see DDB Techs., L.L.C. v. MLB Advanced Media, L.P. , 517 F.3d 1284, 1290 (Fed. Cir. 2008) (whether patent assignment clause creates automatic assignment or mere obligation to assign treated under Federal Circuit law).

[xxii] Dennis Crouch, “Assignor Estoppel Persists — But Only for Claims Specifically Assigned,” Patently-O (June 29, 2021).

[xxiii] See, e.g., Jostens, 318 N.W.2d at 703-04.

• Tags Assignments , Assignor Estoppel , Patents

Execution of Patent Assignment Agreements

The execution of patent assignment agreements is a critical step in the transfer of patent rights, requiring careful attention to legal formalities, signature and witness requirements, notarization, and recordation procedures to validate and fortify the agreement. A well-crafted agreement is crucial to supporting a smooth transfer of patent rights, ultimately supporting a robust patent strategy. Key elements, such as parties, patent details, assignment terms, consideration, and signatures, must be carefully considered. In addition, understanding the obligations and functions of each party is necessary to facilitate a seamless transfer of patent rights. A thorough comprehension of these complexities is imperative to navigate the intricacies of patent assignment agreements.

Table of Contents

Understanding Patent Assignment Agreements

A patent assignment agreement is a legally binding contract that transfers ownership of a patent or patent application from one entity to another, assigning the associated rights, title, and interest. This agreement is a vital component of a patent strategy, as it enables the transfer of intellectual property rights, allowing companies to acquire or divest patent portfolios, merge with other entities, or license technology. The benefits of a patent assignment agreement are multifaceted. It provides a clear understanding of the ownership and rights associated with the patent, verifying that all parties involved are aware of their obligations and entitlements. Additionally, the agreement can be tailored to meet the specific needs of the parties, allowing for flexibility in the terms and conditions of the transfer. By executing a patent assignment agreement, companies can protect their intellectual property, minimize potential disputes, and facilitate the transfer of valuable assets. A well-crafted agreement is vital to supporting a smooth transfer of patent rights, ultimately supporting a robust patent strategy.

Key Elements of Assignment Documents

When drafting a patent assignment agreement, it is vital to incorporate key elements that guarantee a thorough and legally binding document. The structure of the assignment document, the legal transfer of ownership, and the effective date clauses are crucial components that warrant careful consideration. By examining each of these elements, parties can establish a clear and enforceable agreement that accurately reflects their intentions.

Assignment Document Structure

Every patent assignment agreement typically comprises several key elements that collectively form the backbone of the assignment document, providing a thorough and legally binding transfer of patent rights. These essential components ensure that the agreement is comprehensive, accurate, and enforceable. Effective drafting of these elements is crucial, and using established document templates can facilitate the process.

The following table highlights the key elements of a patent assignment agreement:

Legal Ownership Transfer

The legal ownership transfer, a critical aspect of patent assignment agreements, is facilitated by the inclusion of specific key elements that unambiguously convey the transfer of rights from the assignor to the assignee. These elements guarantee that the assignee acquires unequivocal ownership of the intellectual property, thereby safeguarding asset protection.

To effectuate a seamless transfer, the assignment agreement must explicitly state the assignor's intention to transfer all rights, title, and interest in the patent. The agreement should also identify the specific patent(s) being assigned, including their respective patent numbers, titles, and filing dates. In addition, the assignee's acceptance of the assignment should be acknowledged, and the assignor's warranties and representations regarding the patent's validity and ownership should be outlined.

Effective Date Clauses

In patent assignment agreements, decisive date clauses play a crucial part in establishing the precise point in time at which the assignor's rights, title, and interest in the patent are transferred to the assignee. These clauses define the moment when the assignor's obligations and liabilities cease, and the assignee's rights and responsibilities commence. Decisive date clauses can have retrospective application, where the transfer of rights is deemed to have taken place at a prior date, or they can specify future dates, where the transfer occurs on a specific date or upon the fulfillment of certain conditions. The inclusion of decisive date clauses provides clarity and certainty in the assignment process, avoiding potential disputes and ambiguities. It is imperative to draft these clauses with precision, taking into account the specific circumstances of the assignment, to guarantee that the parties' intentions are accurately reflected. By doing so, the decisive date clause provides a clear and binding agreement on the timing of the patent assignment, safeguarding the interests of both the assignor and assignee.

Parties Involved in Execution Process

In the execution process of a patent assignment agreement, multiple parties play vital parts to validate and confirm the enforceability of the agreement. The assigning party, receiving party, and witnesses all have distinct responsibilities that must be fulfilled to complete the execution process successfully. A thorough understanding of the obligations and functions of each party is vital to facilitate a seamless transfer of patent rights.

Assigning Party's Role

Executing a patent assignment agreement necessitates the active involvement of the assigning party, who plays a crucial part in the execution process. The assigning party, also referred to as the assignor, is responsible for transferring their patent rights to another entity. The assignor's motivation for assigning the patent rights may vary, including a desire to monetize their intellectual property, to simplify their patent portfolio, or to comply with regulatory requirements. Regardless of the motivation, the assignor assumes certain liabilities throughout the assignment process. Assignor liability may arise from representations and warranties made in the assignment agreement, such as the assignor's ownership of the patent rights and the absence of any encumbrances. The assignor must verify that the assignment agreement accurately reflects the terms of the transfer, including the scope of the assigned rights and any applicable territorial restrictions. By understanding their function and obligations, assignors can effectively navigate the patent assignment process and minimize potential liabilities.

Receiving Party's Obligations

The receiving party, also known as the assignee, takes on significant obligations upon entering into a patent assignment agreement, including the duty to pay consideration, comply with contractual provisions, and assume liability for future infringements. These obligations are vital to the execution of the agreement and must be carefully considered by the receiving party.

| Recordation | The receiving party must record the assignment with the relevant patent office to provide public notice of the change in ownership.

Witnesses and Signatures

A patent assignment agreement's validity and enforceability often hinge on the proper execution of the document, which necessitates the involvement of specific parties to witness and sign the agreement. In this regard, the presence of witnesses is vital to authenticate the signatures of the assignor and assignee. Witness rules dictate that the witnesses must be impartial, unrelated to the parties involved, and of legal age. Typically, two witnesses are required, although this may vary depending on jurisdictional requirements. The witnesses must sign the agreement in the presence of the assignor and assignee, thereby verifying their identities and confirming that they have voluntarily executed the document.

Signature protocols are equally important, as they validate the authenticity and integrity of the agreement. The assignor and assignee must sign the agreement in the presence of the witnesses, using their full legal names and titles. The signatures must be original, and any modifications or alterations to the agreement must be initialed by all parties. By adhering to these witness rules and signature protocols, the patent assignment agreement is rendered legally binding and enforceable, providing a solid foundation for the transfer of patent rights.

Signature and Witness Requirements

In jurisdictions with specific signature and witness requirements, patent assignment agreements must comply with these formalities to guarantee their validity and enforceability. Failure to meet these requirements can lead to the agreement being deemed invalid or unenforceable, potentially resulting in significant legal and financial consequences.

To ensure compliance, it is essential to understand the specific requirements of the jurisdiction in which the agreement is being executed. This may include:

• Physical presence : In some jurisdictions, signatories must be physically present to sign the agreement.
• Witness requirements : The agreement may require a specific number of witnesses to be present during the signing process.
• Digital authentication : Some jurisdictions permit digital authentication, allowing for electronic signatures to be used in place of traditional wet signatures.
• Formal notarization : In certain cases, the agreement may require formal notarization, which involves the signature of a notary public.

Notarization and Recordation Procedures

Following compliance with signature and witness requirements, patent assignment agreements must undergo notarization and recordation procedures to complete their execution and provide public notice of the assignment. Notarization involves having the signatures of the parties authenticated by a notary public, verifying the identities of the signatories and validating their willingness to execute the agreement. The notary's fee for this service, known as Notary Fees, varies by jurisdiction.

Recordation, on the other hand, involves filing the notarized agreement with the relevant patent office or registry, making it a public record. This step is vital, as it provides constructive notice to third parties of the assignment and helps to establish the new ownership rights. Jurisdictional Issues may arise during recordation, particularly when dealing with international assignments or agreements involving multiple parties from different countries. It is vital to comply with the specific recordation requirements and procedures of each jurisdiction to guarantee the validity and enforceability of the assignment. By completing the notarization and recordation procedures, parties can confirm the legal effectiveness of their patent assignment agreements.

Post-Execution Obligations and Considerations

Upon execution of a patent assignment agreement, parties must attend to various post-execution obligations and considerations to guarantee the seamless transfer of rights and minimize potential disputes. This critical phase ensures that the agreement is properly implemented, and all necessary steps are taken to secure the assigned patent rights.

To achieve a smooth transition, the following post-execution obligations and considerations are essential:

• Compliance Checks : Verify that all necessary formalities, such as recordation with the relevant patent office, have been completed to perfect the assignment.
• Ongoing Maintenance : Ensure that all patent maintenance fees are paid, and necessary documents are filed to maintain the validity of the assigned patent.
• Notice to Interested Parties : Inform all relevant parties, including inventors, employees, and other stakeholders, of the patent assignment to avoid any confusion or disputes.
• Documentation and Record-Keeping : Organize and maintain accurate records of the patent assignment, including the agreement, proof of payment, and other relevant documents.

Frequently Asked Questions

Can patent assignment agreements be electronically signed?.

In the digital age, the question arises: can agreements be electronically signed? Yes, patent assignment agreements can be validly executed with digital signatures, provided they adhere to electronic authentication protocols, guaranteeing authenticity and non-repudiation.

How Long Does the Execution Process Typically Take?

The execution process duration varies, but with digital signatures, Faster Processing is achievable. Typically, it takes 1-5 business days, depending on the parties' availability and the complexity of the agreement, which may require extended Legal Review.

What Happens if a Party Refuses to Execute the Agreement?

In the event of refusal to execute an agreement, a party may face breach consequences, including legal action and potential damages. Dispute resolution mechanisms, such as arbitration or mediation, may be employed to resolve the impasse.

Can Assignment Agreements Be Amended After Execution?

After execution, assignment agreements can be amended through a subsequent agreement or court order, potentially resolving post-execution disputes, although such revisions must comply with applicable laws and regulations governing agreement revisions.

Who Bears the Cost of Notarization and Recordation Fees?

In general, cost allocation for notarization and recordation fees is typically negotiated between parties, with fee responsibility often falling on the assignor, although it may be stipulated in the agreement or dictated by local laws and regulations.

When a Promise Isn’t Enough – Crafting Proper Employee Patent Assignments

Christopher M. King

Related insights, a look at the cross-border payments market, foley automotive update, beyond the podium: technology & fashion in track and field.

• Marketplace
• Case Studies
• Join Provider Network

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.

Get started by telling us a little bit about your legal needs and a member of our team will begin working on your matchmaking process.

• 617.395.7000
• Artificial Intelligence
• Chemical & Material Sciences
• Computer Technology & Software
• Consumer Products
• Electronics
• Life Sciences
• Mechanical & Industrial
• Medical Devices

Practice Areas

• Strategic Counseling
• Licensing & Transactions
• Trade Secret
• News & Events
• Knowledge Center
• Entrepreneurship Center
• Diversity, Equity, and Inclusion
• Client Portal

T: 617.395.7000

E:  [email protected]

D. Mass. IP Litigation Blog

• Knowledge Center :
•   IP Insights

A Potential and Unintended Consequence of ‘Routine’ Patent Assignments

• April 20, 2022

By: Thomas P. McNulty and Peter C. Lando

This article was originally published on Entrepreneur.com , March 28, 2022.

Patents and patent applications are frequently assigned from one entity to another, for example between inventors and their employers or between companies seeking to collaborate on a project. Like any other contract, there are occasionally disputes between the parties regarding the agreement contemplated by the patent assignment. These instances may reflect the different intentions or understandings of the parties at the time the agreement was entered into or may come about by the diverging interests of the parties over time. Some of these disputes have found their way to the Supreme Court. For example, the Court has held that an inventor must expressly grant his or her rights in an invention, and that standard employment agreement language that includes a promise to assign future inventions did not result in an immediate assignment of future inventions and could be superseded by an assignment using present-tense language.

A recent decision of the Supreme Court draws attention to another issue that may arise with a “routine” patent assignment. In this case, limits of the judicially-created doctrine of assignor estoppel was pivotal. The doctrine has been long understood to prevent one from asserting that the patent he or she assigned is invalid, because the requirements of good faith and fair dealing between contracting parties should prevent one from selling something for value and later asserting that what was sold is worthless.

The Supreme Court’s 2021 Minerva Surgical, Inc. v. Hologic, Inc. decision addressed when the estoppel applies, holding that assignor estoppel is invoked only where an invalidity claim contradicts an explicit or implicit representation in the assignment that the patent was valid. Otherwise, the principle of fair dealing does not come into play. The Court noted several examples where the estoppel might not arise.

Assignment of Future Inventions

The first occasion noted by the Court was the assignment of inventions not yet made. This type of assignment might occur when an employee signs an agreement at the onset of employment that assigns all future inventions and patent applications to the employer. The employee cannot warrant that any claims covering future applications resulting from his or her work are valid, as the inventions have not yet been made and the claims have not yet been drafted or prosecuted.

Post-Assignment Changes in Patent Law

When a significant shift in patent law occurs following an assignment, either by the passage of a new statute or through a change in the interpretation of the patent laws, the doctrine also might not apply, at least with respect to the part of the law that changed. One such instance would be the Supreme Court’s 2014 Alice decision that set a new framework for analyzing patent eligibility for computer-implemented inventions. The validity of a patent in this field may well have been changed through the application of this new framework, and an inventor who assigned prior to the Alice decision could not have been expected to anticipate such a change and warrant that the claims were valid under the new framework.

Patent Claims that were Broadened by the Assignee

A third exception to application of the doctrine is exemplified in the Minerva case. Here, an inventor assigned a patent application to his company, which later assigned it to Hologic. When the inventor opened a new business, Minerva Surgical, to make and sell an improvement on the previously assigned invention, Hologic amended the claims of the assigned patent application to cover the new product. After the patent issued, Hologic sued Minerva for patent infringement, and Minerva then challenged the validity of the patent. Hologic then invoked assignor estoppel to argue that Minerva could not challenge the validity of the patent.

The Supreme Court upheld the principle of assignor estoppel in the abstract, but placed limitations on its application. The Court stated that where a patent application is assigned without foreknowledge of the scope of the claims that would issue, an inventor cannot be held to have attested to the validity of any claim broader than, or significantly different than, those of the application at the time of the assignment. Should the claims be narrowed, estoppel would still apply, as they would fall within the scope of the intellectual property known to be assigned. The Court then remanded the case for consideration of whether Hologic’s claim was materially broadened beyond the claims of the assigned patent application.

On remand, the Federal Circuit pointed out the trap that the Supreme Court’s holding leaves for inventors. Patent applications are typically written to claim an invention as broadly as the known prior art permits, but having filed broad claims, inventors who assign pending applications might find themselves estopped to argue invalidity of the claims that ultimately issue regardless of how the claims were changed after the assignment, because they will still fall within the scope of the claims as filed and assigned. Consideration should therefore be given to the breadth of claims filed in an application that is likely to be assigned, particularly where the assignee is or is likely to become a competitor of the inventor/assignor.

Entities To Whom the Estoppel Applies

The Minerva case did not address the degree of affiliation necessary for the estoppel to apply, leaving untouched the Federal Circuit’s “privity” analysis. Under that precedent, estoppel applies to each assignor and to everyone in privity with each assignor, with privity being determined by balancing the equities. Generally, if an assignor has a financial interest in the success of the accused activity, either directly or through an ownership stake in the defendant, or participates in the development of the allegedly infringing product or service, estoppel will apply.

If an employee assigned an invention to his employer, both the employee and the employer, and those in privity, would be estopped from challenging validity. In the Minerva case, Minerva was identified by the Court as the “alter-ego” of the assignor, who founded Minerva following the assignment of the relevant application. Other cases have found privity, and thus estoppel, where an inventor/assignor had been hired to work on the technology of the subject patents and had become a vice president and general manager of the division responsible for making the accused products; where an assignor is a principal stockholder, president and general manager of the accused infringer; where an assignor held control over the accused corporation despite lacking voting control of the corporation; where an assignor was married to a partner in the accused entity; and where an assignor provided knowledge and assistance in the accused conduct. Estoppel has been applied where the inventor/assignor was not an employee but consulted directly on the accused activity. On the other hand, hiring an inventor/assignor as a mere employee, with no ownership or control and with no input in the accused activity, may not result in an estoppel.

Consideration Supporting Estoppel

One question is whether the doctrine will be applied in circumstances where the assignor received little or no consideration for the assignment. Many employment contracts require employees to assign their inventions to their employers for some minimal amount or even as a condition of employment; likewise, many standard patent assignments refer to some unspecified “good and valuable consideration,” in which the receipt and sufficiency is acknowledged. The Federal Circuit has determined that employment, salary and/or bonuses are valid consideration for estoppel to apply, so inventors who are subject to such a contract will likely be unable to challenge the validity of their assigned patents.

What Assignor Estoppel Does Not Prohibit

While an assignor may not be able to challenge the validity of an assigned patent in court under this doctrine, some options are available. First, because the doctrine does not apply in actions before the Patent Trial and Appeals Board, an assignor may challenge the validity of a patent through inter partes review (IPR). While this does place some limitations on validity challenges (only anticipation or obviousness based on patents or printed publications can be asserted in an IPR), it does permit a validity challenge that could not be brought in court. The Federal Circuit held this month that parties can contract away their ability to bring an IPR proceeding, so assignees can potentially eliminate this avenue.

While not presented as invalidity arguments, assignors can also use prior art to support a narrow claim construction in a way that might avoid infringement. Similarly, an assignor can argue that the accused product practices the disclosure of an expired patent that anticipates the claims of the assigned patent, determining that to preclude such an argument would wrongfully allow the assignee to recapture subject matter that is dedicated to the public upon the expiration of a patent. This type of argument, which is effectively that the expired patent anticipates the assigned claims, is limited to expired patents, however, and is therefore of limited use.

Finally, as the doctrine of assignor estoppel arises out of the “good faith and fair dealing” that comes with contract law, the parties may be able to contract around its application. The Minerva decision noted that “the assignment of specific patent claims carries with it an implied assurance” of validity, whether this warranty is put in writing or not, but can the assignment expressly disclaim such a warranty? An assignment agreement that contains express language that the intellectual property at issue is being assigned “as is,” with no representations or warranties as to its validity, may suffice to escape application of the doctrine.

Assignees, on the other hand, may wish to take additional steps to ensure that the assignor cannot later challenge an assigned patent. The assignment could include express language preventing the assignor from challenging the validity of the assigned patents in court or at the Patent and Trademark Office, removing one potential loophole to the estoppel. If a full bar cannot be negotiated, terms that deter a validity challenge without an outright bar can be considered. Payment for the assignment can be staged over time, with a validity challenge resulting in forfeiture of any unpaid amounts, or an assignor can be required to pay the assignee’s legal costs associated with a validity challenge. The assignment could also include a noncompete clause, preventing the assignor from working in the field of the patent for a period of time. As noncompete agreements in employment contracts have come under increasing scrutiny, such a clause in connection with an assignment of an invention is more likely to hold up than a conventional employee noncompete.

Assignor estoppel is a potentially damaging surrender of a defense to patent infringement that should be understood and fully considered when entering into a patent assignment. Assignors should carefully consider the terms of an assignment to avoid placing unforeseen limits on their future activities. Likewise, assignees should know whether they are receiving this assurance of validity when signing an agreement, to ensure they are receiving the full scope of benefits for which they bargained. Assignments of patents, patent applications, and inventions therefore should be carefully scrutinized and not be treated simply as “form” agreements.

• Thomas P. McNulty
• Peter C. Lando

Professionals

SHARE THIS POST

How can we help you?

• Patent Laws, Regulations, Policies & Procedures
• Manual of Patent Examining Procedure
• Chapter 0300
• Section 301

301 Ownership/Assignability of Patents and Applications [R-10.2019]

35 u.s.c. 261   ownership; assignment..

Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.

Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent.

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

35 U.S.C. 262   Joint owners.

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

37 CFR 3.1  Definitions.

For purposes of this part, the following definitions shall apply:

Application means a national application for patent, an international patent application that designates the United States of America, an international design application that designates the United States of America, or an application to register a trademark under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise indicated.

Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.

Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application, patent, or registration.

Office means the United States Patent and Trademark Office.

Recorded document means a document which has been recorded in the Office pursuant to § 3.11 .

Registration means a trademark registration issued by the Office.

Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1) . Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same (e.g., existence of another patent owner with a dominant patent, failure to obtain FDA approval of the patented invention, an injunction by a court against making the product of the invention, or a national security related issue).

For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a) . For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993). A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 .

“Assignment,” in general, is the act of transferring to another the ownership of one’s property, i.e., the interest and rights to the property. The U.S. Patent and Trademark Office cannot explain or interpret laws that govern assignments and related documents, nor can it act as counselor for individuals. Assignments and other documents are contracts that are governed by the relevant state or jurisdictional law.

In 37 CFR 3.1 , assignment of patent rights is defined as “a transfer by a party of all or part of its right, title and interest in a patent [or] patent application....” An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application. In order for an assignment to take place, the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inherent in the right, title and interest in the patent or patent application. 35 U.S.C. 261 requires transfer of ownership by an assignment to be in writing. See Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 859 (E.D. Va. 2016).

As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use. A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.

An exclusive license may be granted by the patent owner to a licensee. The exclusive license prevents the patent owner (or any other party to whom the patent owner might wish to sell a license) from competing with the exclusive licensee, as to the geographic region, the length of time, and/or the field of use, set forth in the license agreement.

A license is not an assignment of the patent. Even if the license is an exclusive license, it is not an assignment of patent rights in the patent or application.

Individual ownership - An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property. Alternatively, it occurs where all parties having ownership interest (all inventors and assignees) assign the patent property to one party.

Joint ownership - Multiple parties may together own the entire right, title and interest of the patent property. This occurs when any of the following cases exist:

• (A) Multiple partial assignees of the patent property;
• (B) Multiple inventors who have not assigned their right, title and interest; or
• (C) A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest.

Each individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.

An assignment can be made of record in the United States Patent and Trademark Office (Office) in two different ways, for two different purposes. The differences are important to note:

• (A) An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3 . Recordation of the assignment provides legal notice to the public of the assignment. It should be noted that recording of the assignment is merely a ministerial act; it is not an Office determination of the validity of the assignment document or the effect of the assignment document on the ownership of the patent property. See 37 CFR 3.54 , MPEP § 317.03 , and Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 862-3 (E.D. Va. 2016). For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.11 . See 37 CFR 3.81(a) .
• (B) An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding). This step may be necessary to permit the assignee to “take action” in the application, patent, or other patent proceeding under the conditions set forth in 37 CFR 1.46 and 37 CFR 3.81(a) and MPEP § 325 (for applications filed on or after September 16, 2012) or under the conditions set forth in pre-AIA 37 CFR 3.73 and MPEP § 324 (for applications filed before September 16, 2012). Recordation of an assignment in the assignment records of the Office does not , by itself, permit the assignee to take action in the application, patent, or other patent proceeding.

Additionally, for applications filed under 35 U.S.C. 111(a) , 363 , or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration. See 35 U.S.C. 115(e) , 37 CFR 1.63(e) , and MPEP §§ 302.07 , 317 , and MPEP § 602.01(a) .

301.01 Accessibility of Assignment Records [R-10.2019]

37 cfr 1.12  assignment records open to public inspection..

• (1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
• (2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
• (b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14 , are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
• (1) Be in the form of a petition including the fee set forth in § 1.17(g) ; or
• (2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.
• (d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

Assignment documents relating to patents, published patent applications, registrations of trademarks, and applications for registration of trademarks are open to public inspection. Records related to assignments of patents, and patent applications that have been published as patent application publications are available on the USPTO website. Images of assignment documents recorded June 1998 and later are also viewable on the Office website. To view images of earlier-recorded assignment documents, members of the public must place an order pursuant to 37 CFR 1.12(d) .

The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open. Thus, if a document covers either a trademark or a patent in addition to one or more patent applications, it will be available to the public ab initio; and if it covers a number of patent applications, it will be so available as soon as any one of them is published or patented. Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.

Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public. For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14 , information related thereto is only obtainable upon a proper showing of written authority. For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D). See 37 CFR 1.12 . For applications filed prior to September 16, 2012, the written authority must be from the applicant or applicant’s assignee or from the attorney or agent of either, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application. See pre-AIA 37 CFR 1.12 .

If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14 .

Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b) .

Requests for abstracts of title for assignments of patents recorded after May 1, 1957, are provided by the Certification Division upon request and payment of fee required in 37 CFR 1.19 . Requests for copies of pre-1957 records for patents should be directed to the National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA. Payment of the fees required by NARA should accompany all requests for copies.

All assignment records from 1837 to April 30, 1957 for patents are now maintained and are open for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746 and at the Civilian Records Division of the National Archives at College Park, 8601 Adelphi Road, College Park, MD 20740-6001. Assignment records from before 1837 are not available. Individuals should check the National Archives website, www.archives.gov , for how to obtain information from these locations.

• 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

• Accessibility
• Privacy Policy
• Terms of Use
• Emergencies/Security Alerts
• Information Quality Guidelines
• Federal Activities Inventory Reform (FAIR) Act
• Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act
• Budget & Performance
• Freedom of Information Act (FOIA)
• Department of Commerce NoFEAR Act Report
• Regulations.gov
• STOP!Fakes.gov
• Department of Commerce
• Strategy Targeting Organized Piracy (STOP!)
• USPTO Webmaster

Patent Assignment Agreement

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

Need to connect with a business formation lawyer near you?

Most attorneys on UpCounsel offer free consultations.

Any [ GREEN ] highlighted language is intended to be filled in by the user. Any [ YELLOW ] highlighted language is considered optional or conditional by the attorney community. Consult with an attorney before using this document. This document is not a substitute for legal advice or services. Refer to our Terms of Use for more details.

This form has been prepared for general informational purposes only. It does not constitute legal advice, advertising, a solicitation, or tax advice. Transmission of this form and the information contained herein is not intended to create, and receipt thereof does not constitute formation of, an attorney-client relationship. You should not rely upon this document or information for any purpose without seeking legal advice from an appropriately licensed attorney, including without limitation to review and provide advice on the terms of this form, the appropriate approvals required in connection with the transactions contemplated by this form, and any securities law and other legal issues contemplated by this form or the transactions contemplated by this form.

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

• Atlanta Intellectual Property Lawyers
• Austin Intellectual Property Lawyers
• Boston Intellectual Property Lawyers
• Chicago Intellectual Property Lawyers
• Dallas Intellectual Property Lawyers
• Houston Intellectual Property Lawyers
• Los Angeles Intellectual Property Lawyers
• New York Intellectual Property Lawyers
• Philadelphia Intellectual Property Lawyers
• San Francisco Intellectual Property Lawyers
• Seattle Intellectual Property Lawyers
• Charlotte Intellectual Property Lawyers
• Denver Intellectual Property Lawyers
• Las Vegas Intellectual Property Lawyers
• Phoenix Intellectual Property Lawyers
• San Antonio Intellectual Property Lawyers
• San Diego Intellectual Property Lawyers
• View All Intellectual Property Lawyers

Download Document

Located in the U.S.?

Not located in the u.s., optional, will help us get you started faster.

LEGAL NOTICE: We strongly suggest you have this document customized to your unique situation, because you might require additional clause(s) to better protect your business from potential legal issues.

LEGAL NOTICE: We strongly suggest you customize this document to suit you or your client's unique situation. You may require additional clause(s) to better protect you or your client’s business from potential legal issues.

Want to grow your practice?

Create your profile today and gain access to free marketing and practice management tools. Once your profile is complete, you will be reviewed for the UpCounsel Marketplace where approved attorneys can find and manage new or existing clients.

If you do not see an email from UpCounsel in the next few minutes, please check your spam box. Add: [email protected] to your email address book. This will help ensure future email delivery.

Share this document

Send to your friends, partners or attorney..

• Starting a Business
• Growing a Business
• Small Business Guide
• Business News
• Science & Technology
• Money & Finance
• For Subscribers
• Write for Entrepreneur
• Tips White Papers
• Entrepreneur Store
• United States
• Asia Pacific
• Middle East
• South Africa

Copyright © 2024 Entrepreneur Media, LLC All rights reserved. Entrepreneur® and its related marks are registered trademarks of Entrepreneur Media LLC

Patent Assignments in Employment Agreements – A Sometimes Overlooked, but Always Important, Component Intellectual property is often the most valuable asset a business can own.

By Peter Lando and Thomas McNulty Edited by Russell Sicklick Dec 20, 2021

Opinions expressed by Entrepreneur contributors are their own.

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

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

When drafting an agreement to have an employee assign future inventions, it is vital that the language used in an assignment clause states a present-tense, actual assignment. Phrases such as hereby assign, agrees to grant and does hereby grant or that inventions shall belong to the employer and employee hereby conveys, transfers and assigns, have been deemed by the courts to be effective to transfer ownership of a future invention without the need for any subsequent agreement. Ownership effectively transfers immediately, once the invention has been made.

Assignment clauses that use future tense language, on the other hand, generally will require an additional agreement to result in a transfer of ownership of the invention, and any intellectual property ("IP") covering the invention. Terms such as will assign, agree to assign, will be assigned and the like, have been found by numerous courts to constitute nothing more than a promise or contract to assign an invention in the future, but not to serve as an actual assignment.

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

Failure to obtain an automatic assignment can have negative consequences

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

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

Related: The How-To: Protecting Your Intellectual Property As A Small Business

Do not count on the hired-to-invent doctrine to result in ownership of employee inventions

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

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

Other considerations

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

Related: Securing Your IP: The Two Key Legal Documents Every UAE ...

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

Related: Top 5 Intellectual-Property Challenges Businesses Face

*The authors would like to thank Lando & Anastasi summer intern Tyler Gruttadauria for his contributions to this article.

Want to be an Entrepreneur Leadership Network contributor? Apply now to join.

Editor's Pick Red Arrow

• Lock How to Design a Work Session That Tricks Your Brain Into Peak Performance, According to a Neuroscientist
• She Launched Her Black-Owned Beauty Brand with $1,500 in Her Pockets — Now Her Products Are on Sephora's Shelves
• No One Explained a 401(k) Until He Reached the NFL. So He Started Putting His Money to Work — and Helping Others Do the Same .
• Lock How to Land Your Next Job Without Sending a Single Resume
• Kevin O'Leary Says This Is the One Skill He Looks For in a Leader — But It's 'Almost Impossible to Find'
• Food Franchisees Are Shifting to Non-Food Investments — And You Should, Too

Most Popular Red Arrow

I asked chatgpt for a marketing plan and was shocked at the result.

Generative AI can give us mountains of information on any topic under the sun in seconds — but is it any good at marketing? I had to find out.

Change Is Hard — But This CEO and President Reveals How It Helped Him Build a Stronger Business and More Resilient Team

Implementing a major change to a business, used to happen once a decade, but with advancements in artificial intelligence and digital transformation, businesses are having to pivot frequently. Here's why it's important to consult with your front line employees.

63 Small Business Ideas to Start in 2024

We put together a list of the best, most profitable small business ideas for entrepreneurs to pursue in 2024.

The 'Low Code' Market Is a Huge Opportunity for Investors. Here's How to Get Your Share.

Capitalize on the ever-changing tech landscape with EvonSys.

Your Won't Have a Strong Sales Pitch Until You Follow These 6 Pitch Strategies

If you want to see improvement, you have to put in the work.

How I Scaled My Business Spending Just $10 a Day — And How You Can Do It, Too.

You can grow your business without breaking the bank — here's how.

Successfully copied link

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

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

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

The parties therefore agree as follows:

1. ASSIGNMENT OF PATENTS.

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

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

2. CONSIDERATION.

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

3. RECORDATION.

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

4. NO EARLY ASSIGNMENT.

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

5. ASSISTANCE.

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

6. NO LICENSE.

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

7. ASSIGNOR'S REPRESENTATIONS.

The Assignor hereby represents to the Assignee that it:

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

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

8. INDEMNIFICATION.

The Assignor shall indemnify the Assignee against:

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

9. GOVERNING LAW.

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

10. AMENDMENTS.

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

11. ASSIGNMENT AND DELEGATION.

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

12. COUNTERPARTS; ELECTRONIC SIGNATURES.

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

13. SEVERABILITY.

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

14. NOTICES.

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

• If to the Assignee: 
• (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.

15. WAIVER.

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

16. ENTIRE AGREEMENT.

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

17. HEADINGS.

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

18. EFFECTIVENESS.

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

19. NECESSARY ACTS; FURTHER ASSURANCES.

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

[SIGNATURE PAGE FOLLOWS]

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

[PAGE BREAK HERE]

EXHIBIT A PATENTS AND APPLICATIONS

FORM OF RECORDABLE PATENT APPLICATION ASSIGNMENT

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

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

ATTACHMENT A ASSIGNED PATENTS

Free Patent Assignment Template

How-to guides, articles, and any other content appearing on this page are for informational purposes only, do not constitute legal advice, and are no substitute for the advice of an attorney.

Patent assignment: How-to guide

A company’s ability to buy and sell property is essential for its long-term life and vitality. Although it doesn’t take up physical space, too much intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product.

Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including patents and other inventions) to support their growth must be sure that the seller does have title to the desired items. A properly drafted patent assignment can help in these circumstances.

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

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

Important points to consider while drafting patent assignments

What is a patent.

A patent is a set of exclusive rights on an invention given by the government to the inventor for a limited period. Essentially, in exchange for the inventor’s agreement to make their invention public and allow others to examine and build on it, the government provides the inventor with a short-term monopoly on their creation. In other words, only they can make, use, or sell that invention.

Are licenses and assignments different from each other?

Licenses are different from assignments. The individual who receives license rights from the patent holder isn’t gaining ownership. Rather, they’re getting assurance from the patent holder that they won’t be sued for making, using, or selling the invention. The terms of the license will vary from agreement to agreement and may address issues of royalties, production, or reversion.

What are the different kinds of patent assignments?

A  patent assignment  can take many forms.

• It can be the transfer of an individual’s entire interest to another individual or company.
• It can also transfer a specific part of that interest (e.g., half interest, quarter interest, etc.) or a transfer valid only in a designated country area. The exact form of the transfer is specific to the parties' agreement.

What is the role of the United States Patent and Trademark Office in patent transfer?

A patent transfer is usually accomplished through a contract, like the following written agreement form. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the  U.S. Patent and Trademark Office  (USPTO) . The agreement will only be effective if this registration is made. Moreover, if the transfer isn’t recorded within three months from the date of the assignment, there can be no later purchasers. In other words, such patents are no longer sellable to a third party by the assignee if it isn’t recorded quickly and correctly.

Note that there is a fee for  recording each assignment  of a patent or patent application.

What details should I add to my patent application?

Although you can adapt the document to suit your arrangement, you should always identify the patent(s) being assigned by their USPTO number and date and include the name of the inventor and the invention’s title (as stated in the patent itself). This is a requirement of federal law, and failure to follow it could invalidate your assignment.

What are the benefits of patent assignment?

The advantage of selling your invention or patent outright (and not simply licensing or attempting to develop and market it yourself) is that you’re guaranteed payment at the price you and the purchaser have negotiated.

On the other hand, that one-time payment is all that you will ever receive for your property. You will no longer have the right to control anyone else’s use of your creation.

By using it yourself or offering a temporary license, you retain the potential for future income. However, such income isn’t certain, and your opportunities are paralleled by risk.

Before selling all of your rights in a patent or patent application, ensure this is the best (and most lucrative) approach for you and your company.

Is it necessary to do due diligence before buying a patent?

Provide valuable consideration to due diligence, and don’t agree without completing it. If you purchase a patent,  conduct searches  with the patent office on the patents issued and online directories to ensure the seller has complete and unique rights in the offered property. Look for these:

• Has an application already been filed by another person or company?
• What are the chances that this is a patentable item?

Although your findings won’t be guaranteed, you may be protected as an “innocent purchaser” if disputes arise.

You might also find critical information about the value of the patent. Consider hiring a patent attorney to help in your investigation. Comparing patents and applications often requires a specialized and technical understanding to know how useful and unique each one is.

What should I consider while selling a patent?

If you sell an invention or patent, ensure you own it. Although this may seem obvious, intellectual property ownership sometimes must be clarified. This may be the case if, for example, the invention was created as part of your employment or if it was sold or otherwise transferred to somebody else. A thorough search of the USPTO website for the publication number should be conducted before you attempt to sell your property.

Is reviewing and signing the patent necessary?

Review the assignment carefully to ensure all relevant deal points are included. Don't assume certain terms are agreed upon if not stated in the document.

Once the document is ready, sign two copies of the assignment, one for you and one for the other party.

Get the assignment notarized by the notary public to reduce the challenges to the validity of a party’s signature or the transfer itself.

If you’re dealing with a  complex agreement for a patent assignment , contact an attorney to help draft an assignment that meets your needs.

Key components to include in patent assignments

The following provisions will help you understand the terms of your assignment. Please review the entire document before starting your step-by-step process.

Introduction of parties

This section identifies the document as a patent assignment. Add the assignment effective date, parties involved, and what type of organization(s) they are. The “assignor” is the party giving their ownership interest, and the “assignee” is the party receiving it.

The “whereas” clauses, or recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the patent. Remember that the assignor can transfer all or part of its interest in the patents.

Assignment of patents

This section constitutes the assignment and acceptance of patents and inventions. Be as complete and clear as possible in your description of the property being transferred.

Consideration

In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the assignee gives money (sometimes called “consideration”) to receive the assignor’s property. Enter the amount to be paid, and indicate how long the assignee has to make that payment after the agreement is signed.

Authorization to a director

This section is the assignor’s authorization to issue patents in the assignee’s name. In other words, this tells the head of the patent and trademark office that the transfer is valid and that ownership is changing hands by the assignment.

If the assignment is being recorded after the USPTO has issued a patent number, add the patent application number here.

Assignor’s representations and warranties

In this section, the assignor is agreeing to the following terms:

• They’re the sole owner of the inventions and the patents. If there are other owners who aren’t transferring their interests, this means that the only part being transferred is the assignor’s part.
• They haven’t sold or transferred the inventions and the patents to any third party.
• They have the authority to enter the agreement.
• They don’t believe that the inventions and the patents have been taken from any third party without authorization (e.g., a knowing copy of another company’s invention).
• They don’t know if any permissions must be obtained for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
• The patents weren’t created while a third party employed the creator. In many cases, if a company employs an individual and comes up with a product, the company will own that product. This section offers assurance to the assignee that there are no companies that will make that claim about the patents being sold.

If you and the other party want to include additional representations and warranties, you can do so here.

Assignee’s representations and warranties

In this section, the assignee is agreeing to the following terms:

• They have the authority to enter into the agreement
• They have enough funds to pay for the assignment

No early assignment

This section prevents the assignee from re-transferring the inventions or patents or using any of them as collateral for loans until it has completely paid the money due under the agreement.

Documentation

This clause is the assignor’s promise to help with any paperwork needed to complete an assignment, such as filing information about the assignment with the USPTO, transferring document titles, transferring paperwork for filing to foreign countries, etc.

No further use of inventions or patents

This section indicates that after the agreement’s filing date, the assignor will stop using all the inventions and patents being transferred and won’t challenge the assignee’s use of those inventions or patents.

Indemnification

This clause describes each party’s future obligations if the patent or any application is found to infringe on a third party’s rights. Either the assignor agrees to take all responsibility for infringement, promising to pay all expenses and costs relating to the claim, or the assignor makes its responsibilities conditional, significantly limiting its obligations if a claim is brought.

Successors and assigns

This section states that the parties’ rights and obligations will be passed on to successor organizations (if any) or organizations to which rights and obligations have been permissibly assigned.

No implied waiver

This clause explains that even if one party allows the other to ignore or break an obligation under the agreement, it doesn’t mean that the party waives any future rights to require the other to fulfill those (or any other) obligations.

Provide the assignor and assignee’s address where all the official or legal correspondence should be delivered.

Governing law

This provision lets the parties choose the state laws used to interpret the document.

Counterparts; electronic signatures

This section explains that if the parties sign the agreement in different locations, physically or electronically, all the separate pieces will be considered part of the same agreement.

Severability

This clause protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it won’t undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.

Entire agreement

This section indicates the parties’ agreement that the document they’re signing is “the agreement” about transferring the issued patent.

This clarifies that the headings at the beginning of each section are meant to organize the document and shouldn’t be considered operational parts of the note. 

Frequently asked questions

What is a patent assignment.

If you want to buy patents, the first step is to ensure the seller (original owner) owns the patent rights. The second step is the transfer of the patent owner's rights to the buyer. Patent assignments are agreements that cover both steps, helping the buyer and the seller with ownership records and quickly enabling transfer.

What are the requirements for patent assignment?

Here's the information you'll require to complete a patent assignment:

• Who the assignor is : Have their name and contact information ready
• Who the assignee is : Have their information available
• Invention info : Know the inventor's name, invention's registration number, and filing date

Related categories

Related templates.

Assignment of Agreement

Transfer work responsibilities efficiently with an assignment of agreement. Facilitate a smooth transition from one party to another.

Copyright Assignment

Protect your intellectual property with a copyright assignment form. Securely transfer your copyright to another party, clearly defining ownership terms while preserving your rights effectively.

Intellectual Property Assignment Agreement

Safeguard the sale or purchase of assets with an intellectual property assignment agreement. Transfer the ownership of patents, trademarks, software, and other critical assets easily.

Patent Application Assignment

Transfer the ownership rights or interests in a patent application. A patent application agreement defines the terms of transfer, promotes collaboration, and mitigates risks.

Trademark Assignment

Simplify the buying and selling of trademarks with a trademark assignment agreement. Transfer intellectual property rights and ensure a fair and smooth transaction.

Trademark License Agreement

Ensure fair use of intellectual property with a trademark license agreement. Outline the terms of usage and compensation.

Free Patent Assignment Agreement Template for Microsoft Word

Download this free Patent Assignment Agreement template as a Word document to help you assign the rights in an existing patent to a third party

Patent Assignment Agreement

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

[Insert Assignor Name] [Insert Assignor Address]

(the “Assignor”)

[Insert Assignee Name] [Insert Assignee Address]

(the “Assignee”)

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

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

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

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

1. ASSIGNMENT.

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

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

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

2. WARRANTY.

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

3. GOVERNING LAW.

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

4. ENTIRE AGREEMENT.

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

5. SEVERABILITY.

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

6. ADVICE OF COUNSEL.

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

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

________________________________________________________________

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

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

List of Patents

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

Related Documents

Advertising agreement, arbitration agreement, barter agreement, business sale agreement.

Intellectual Property Law Blog 

Our Intellectual Property Law Blog delivers insights and updates on the latest developments in IP law.

The vast majority of patent litigation involves a patent or a patent portfolio that has been assigned at least once during its life. Yet seemingly simple and ubiquitous patent assignment documents are blundered by even experienced counsel. Failed patent assignments present a conspicuous procedural trap for unwary patent owners and creates an opportunity for a Federal Rule of Civil Procedure 12(b)(1) “lack of standing” challenge. [1] To name a few potential pitfalls, U.S. patent law is clear that patent assignments must be in “present tense” language (“assigns” not “will assign” or “shall assign”), [2] and if assigned after a patent’s issuance, must include an express provision conveying the right to sue for past infringement. [3]

What is the German Act on Employee Invention (GAEI)?

When assigning a global patent portfolio, the potential pitfalls increase exponentially and doing thorough due diligence is critical to transfer patent rights correctly. For example, the German Act on Employee Invention, or GAEI (Gesetz über Arbeitnehmererfindungen), has significant impact on the assignment of German patents. The GAEI regulates the rights and obligations of both employees and employers in Germany. Failure to properly comply with the GAEI may result in ineffective transfers of inventions from employee to employer causing all invention rights to remain with the employee. [4]

For example, in Auvesy GmbH & Co v. Rockwell Automation, Inc. , Case No. 14-cv-1258 (E.D. Wis. June 30, 2015), the plaintiff Auvesy, a German corporation, sought a declaration of non-infringement of Rockwell’s patents. Auvesy’s principal, a man named Werner Schnaebele, had worked for a German corporation that was later acquired by defendant Rockwell. Mr. Schnaebele has signed an employment contract with Rockwell’s German predecessor, but Auvesy argued that the GAEI applied such that Schnaebele retained ownership of his invention and the patents thereon. The district court agreed that there was at least a 12(b)(6) basis for Auvesy’s allegations.

Under the GAEI, the Employee Inventor Initially Owns the Rights in an Invention

Under the GAEI, the employee inventor initially owns the rights in an invention, and there is a formal process to transfer the employee’s right to said invention to their employer. Because of the GAEI, standard patent assignment clauses in employment agreements commonly found in the US, which are designed to capture all intellectual property created in the course of employment, are inadequate. In fact, the GAEI prohibits all contractual agreements which deviate from the Act in favor of the employer, if these agreements are related to future employee inventions. Future employee inventions cannot be pre-assigned via the employment contract.

How does the GAEI work?

Let’s say Employee invents an Invention in the course of their employment for Employer. Once the Invention is completed, Employee must immediately report the Invention to Employer in writing. The Employer must confirm to Employee that the report of the Invention is received in writing. Email is sufficient to comply with the writing requirement. Employer has the right to claim the Invention within a period of four months. Following the 2009 amendments, the transfer of the Invention from Employee to Employer occurs automatically unless Employer expressly rejects the Invention within the four month period.

Once Employee notifies Employer of the Invention in writing, Employer has an obligation to claim the Invention and file for patent rights, protect the Invention as trade secret, or expressly reject the Invention. If an Employer claims the Invention, Employer is also obligated to pay Employee some type of remuneration for the Invention. Employer and Employee can mutually agree to an appropriate remuneration such as lump sum or payment installments. If no agreement exists, remuneration can be determined by a legal framework that provides a calculation based on the invention value.

If Employer chooses to abandon a patent application related to Employee’s Invention, Employee must be informed so that Employee may pursue protection of the Invention at Employee’s own cost.

Employer may also pursue patent protection for the Invention abroad in Employer’s choice of countries, including the U.S. If Employer does not intend to file for patent protection in certain countries, Employer must release the Invention to Employee as to those countries to pursue protection of the Invention at Employee’s own cost.

Patent Families with U.S. and German Patents

Ownership of any U.S. patents that are related to German patents obtained under the GAEI can also be impacted by the application of the GAEI. For example, Minebea Co., Ltd. v. Papst , 444 F. Supp.2d 68 (D.D.C. Aug. 17, 2006), involved a dispute over patent ownership of five U.S. patents following the conclusion of a German joint venture. Papst argued that inventions developed by the German employees of Papst Motoren during the period of the joint venture were properly assigned to Papst Motoren under Section 6 of the German Employee Invention Act. Minebea, however, argued that Papst was obligated to assign the patents to a joint venture entity (“PMDM”) pursuant to a related “Agreement for the Sale of Intangible Assets” and that Papst’s actions breached the Agreement. Ultimately, the Court concluded that Minebea’s claims to patent rights in the U.S. patents failed because “Papst Motoren’s acquisition of inventions developed by its employees and the subsequent registration of patents on those inventions was authorized by Section 6 of the German Employee Invention Act, even if it was in contravention of the terms of the Agreement for the Sale of Intangible Assets.”

Things to Watch Out For When Acquiring German Patents

Ultimately, if patents originating in Germany are part of a patent portfolio that you seek to acquire and/or enforce, it is critical to confirm:

• a complete listing of any German patents and applications as well as any related foreign patents and applications;
• whether said intellectual property assets were claimed in writing;
• whether the invention was created in the course of a German employee’s duties;
• whether assignment documents exist with any such German employee(s);
• whether the German employee was provided proper remuneration for the invention(s);
• whether the German employee was informed of the patent filings; and
• whether the German employee was offered an opportunity to pursue additional foreign patents or pay patent maintenance fees/taxes themselves, and did so.

Failure to confirm compliance with the GAEI can jeopardize a patent assignment.

[1] See, e.g. , Schwendimann v. Arkwright Advanced Coating, Inc. , 959 F.3d 1065 (Fed. Cir. 2020 ) ; Lone Star Silicon Innovations LLC v. Nanya Tech. Corp. , 925 F.3d 1225 (Fed. Cir. 2019) ; Abraxis Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359 (Fed. Cir. 2010) (the Federal Circuit found that the plaintiff, Abraxis Bioscience, did not have standing to file a lawsuit for patent infringement because the language used in an asset purchase agreement did not transfer legal title in the patents-in-suit before Abraxis filed the initial complaint).

[2] Advanced Video Tech. LLC v. HTC Corp. , Case No. 2016-2309 (Fed. Cir. Jan. 11, 2018); Windy City Innovations, LLC v. Facebook, Inc. , No. 16-cv-1730 YGR, 2019 WL 4645414, at *3 (N.D. Cal. Sept. 24, 2019) ; Omni MedSci, Inc. v. Apple Inc. , Case No. 19-cv-05673 (ND Cal. Nov. 25, 2019) .

[3] See, e.g. , Total Rebuild v. PHC Fluid Power, LLC , Case No. 15-cv-01855 (M.D. La. Aug. 14, 2018) (“Courts have repeatedly held that absent explicit language conveying the right to sue for past infringement, the assignee lacks standing to sue for past infringement”) citing Minco, Inc. v. Combustion Eng’g, Inc. , 95 F.3d 1109, 1117 (Fed. Cir. 1996) .

[4] The German legislature addressed this potential issue with an amendment of the GAEI. A 2009 amendment to the GAEI states that the employer’s claim to the invention is automatic if the employer has not expressly released the invention to the employee within a period of 4 months after receiving the invention report. In other words, if the employer does not explicitly waive its claim to the invention within 4 months of receiving the report, the invention and all the rights and obligations associated with it belong to the employer. This is the opposite of the principle which applied hitherto, whereby the employer was required to explicitly claim the invention, and replaces it with the fiction that a claim is made if the invention has not been explicitly released.

Megan Luh represents public and private companies in various matters including mergers and acquisitions, debt and equity financing, private equity transactions, corporate governance, SEC compliance, and other general ...

Search This Blog

Recent Posts

• Is More Big Change Afoot in the Western District of Texas’ Patent Docket?
• NFTs: The Future of Managing Patent Assets?
• There Won’t Always Be a Stark in Delaware
• How the Shift to a Permanent Remote Workforce Can Impact Venue for Patent Infringement Lawsuits
• What’s Really Going on with Fintiv at the Patent Trial and Appeal Board?
• Anticipating President Biden’s Intellectual Property Policy in an Historical Context
• Famous Black Inventors
• Seemingly Simple Things that Are Often Done Wrong: Patent Assignments and the German Act on Employee Inventions

Archives Select Month

• December 2022
• December 2021
• October 2021
• February 2021

Patent and Trademark Assignment Sample Clauses

Related to Patent and Trademark Assignment

Trademark Assignment Upon the request of Theravance, GSK shall prepare a global assignment to Theravance of any Trademark extensively and publicly used by GSK and Theravance in connection with the Terminated Respiratory Commercialized Alliance Product. If Theravance elects to record the Assignment, Theravance shall undertake such recordal tasks and shall bear the costs and fees associated with the recordal, including but not limited to all filing fees, agent fees, and costs of notarization and legalizations. GSK shall cooperate with Theravance as reasonably necessary. Notwithstanding the foregoing, in the event that any Trademark is used by GSK on any other product, GSK shall not assign such Trademark as contemplated in the preceding sentence but shall license such Trademark to Theravance on a non-exclusive basis and subject to any further license terms to be agreed by the Parties in good faith at the time.

Patent Assignment Evidence of recording in US Patent Office of ----------------- Patent Assignment from Xxxxxxx X. Xxxxxxx to Borrower regarding United States Letters Patent Number 5,834,150 entitled "Solvent Vapor Fixing Methods and Process Color Toners for Use in Same".

Patent and Trademark Disputes Notwithstanding Section 16.2, any dispute, controversy or claim relating to the inventorship, scope, validity, enforceability or infringement of any Patents or Marks Covering the manufacture, use, importation, offer for sale or sale of Products shall be submitted to a court of competent jurisdiction in the country in which such patent or trademark rights were granted or arose.

Patent, Trademark, Copyright Security Agreements The provisions of the Copyright Security Agreements, Trademark Security Agreements, and Patent Security Agreements are supplemental to the provisions of this Agreement, and nothing contained in the Copyright Security Agreements, Trademark Security Agreements, or the Patent Security Agreements shall limit any of the rights or remedies of Agent hereunder. In the event of any conflict between any provision in this Agreement and a provision in a Copyright Security Agreement, Trademark Security Agreement or Patent Security Agreement, such provision of this Agreement shall control.

Copyrights, Patents and Trademarks (i) To the best of each Obligor’s knowledge, each Copyright, Patent and Trademark of such Obligor is valid, subsisting, unexpired, enforceable and has not been abandoned.

Assignment of Patents Seller hereby sells, assigns, transfers and conveys to Purchaser all right, title and interest in and to the Assigned Patent Rights and at Closing will provide Purchaser with the Executed Assignment for the Assigned Patent Rights.

Patents and Trademarks The Company and the Subsidiaries have, or have rights to use, all patents, patent applications, trademarks, trademark applications, service marks, trade names, trade secrets, inventions, copyrights, licenses and other intellectual property rights and similar rights necessary or material for use in connection with their respective businesses as described in the SEC Reports and which the failure to so have could have a Material Adverse Effect (collectively, the “Intellectual Property Rights”). Neither the Company nor any Subsidiary has received a notice (written or otherwise) that any of the Intellectual Property Rights used by the Company or any Subsidiary violates or infringes upon the rights of any Person. To the knowledge of the Company, all such Intellectual Property Rights are enforceable and there is no existing infringement by another Person of any of the Intellectual Property Rights. The Company and its Subsidiaries have taken reasonable security measures to protect the secrecy, confidentiality and value of all of their intellectual properties, except where failure to do so could not, individually or in the aggregate, reasonably be expected to have a Material Adverse Effect.

Trademark Security Agreement The Trademark Collateral Security and Pledge Agreement, dated or to be dated on or prior to the Closing Date, between the Borrower and the Collateral Agent and in form and substance satisfactory to the Banks, the Collateral Agent and the Agents.

Covenants Regarding Patent, Trademark and Copyright Collateral (a) Each Grantor agrees that it will not, nor will it permit any of its licensees to, do any act, or omit to do any act, whereby any Patent which is material to the conduct of such Grantor's business may become invalidated or dedicated to the public, and agrees that it shall continue to xxxx any products covered by a Patent with the relevant patent number as necessary and sufficient to establish and preserve its maximum rights under applicable patent laws.

Patents, Copyrights and Trademarks Schedule 5 lists all material Trademarks, material Copyrights and material Patents, in each case, registered in the United States Patent and Trademark Office or the United States Copyright Office, as applicable, and owned by such Grantor in its own name as of the date hereof, and all material Trademark Licenses, all material Copyright Licenses and all material Patent Licenses (including, without limitation, material Trademark Licenses for registered Trademarks, material Copyright Licenses for registered Copyrights and material Patent Licenses for registered Patents) owned by such Grantor in its own name as of the date hereof, in each case, that is solely United States Intellectual Property.