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Patent Assignment Must be in Writing; But Some Transfers are not Assignments

Yasumasa Akazawa was the inventor and owner of a patent covering a new way to change engine coolant. When he died intestate in 2001, his wife and daughters inhereted his entire estate. The daughters then transferred their interest to the mother, and the mother assigned the patent to Akira Akazawa. Akira Akazawa then sued New Link for infringement.

The question on appeal is whether Akira Akazawa properly holds title (because of the non-written intestate transfer).

35 USC §261 has been interpreted to require that patent assignments be in writing. “Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.” Thus, New Link questions whether the intestate transfer of rights satisfies the writing requirements of Section 261.

The CAFC rejected this argument — holding that although ASSIGNMENTS must be in writing, there are other means of transfering patent ownership that need not be in writing. In particular, transfer through “operation of law” need not be in writing under the statute.

On remand, the district court must determine whether, under Japanese intestate law, the title to the patent properly transferred as an operation of law – or whether an assignment was necessary.

If the district court concludes that the ‘716 patent was transferred to [the heirs] upon Yasumasa’s death, then the subsequent transfers between [the heirs] and Akira conveyed ownership of the ‘716 patent to Akira. If, however, the district court concludes that under Japanese law the ‘716 patent was transferred to the estate of Yasumasa which then fell under the control of an administrator or executor, a written assignment in accordance with § 261 may then be necessary to convey the patent from the estate to Yasumasa’s heirs.

Vacated and remanded.

10 thoughts on “ Patent Assignment Must be in Writing; But Some Transfers are not Assignments ”

After a little research, I found that in Japan, to the best of my understanding, title passes automatically. Therefore, title was vested in the heirs by operation of Japanese law.

“So, if Japanese law requires the administrator to transfer assets in writing on behalf of the decedent, then there is a true defect in the chain of title.”

I hadn’t considered this transfer. I thought it was the transfer of their rights by the daughters to their mother.

So – there are possibly TWO (duh!@) transfer issues here (?). Both may be settled by local law. But it seems getting a written document from the daughters to the mother would be easier than re-opening the estate (assuming all parties are still alive).

So – there are possibly to transfer issues here (?). Both may be settled by local law. But it seems getting a written document from the daughters to the mother would be easier than re-opening the estate (assuming all parties are still alive).

Not necessarily. Can it be cured? Most likely. Easily? That’s another matter (although if the plaintiff is fairly certain that infringement is occuring, then it is probably worth the expense.

In all likelihood, probate is closed, and the administrator is probably long gone. So, if Japanese law requires the administrator to transfer assets in writing on behalf of the decedent, then there is a true defect in the chain of title. I tell you honestly that I have no idea what the process is in Japan for re-opening probate, appointing an administrator etc… I assume it can be done, but you’d have to ask a bengoshi.

P.A. thank you for zeroing in on the issue and, by the way, nice article. In any case, it seems to me that whatever defect, if any, arose in Akira’s title by a lack of a written instrument can be easily cured by generating a curative Japanese instrument. Do you agree?

You might all be missing the forest for the trees. The CAFC did not say whether title passed by operation of law or not. It merely said that federal law does not PROHIBIT title passing by operation of law, if the LOCAL laws so provide.

This is a choice of law issue, and the district court applied the incorrect body of law (and quite possibly a ficticious body of law since 35 USC 261 does not say what the district court thought it said). Since this is a question of succession, the court should apply the law of domicile of the decedent. In this case, Japanese law controls, and if Japanese laws of intestacy provide that title was vested in the heirs without a documentary transfer, then Akira has good title.

See my earlier write-up of this case here: link to reading-the-patent-law.blogspot.com

Wha? The guy is dead so all his patents are now unenforceable? That sure is not right…did I miss something? Did the Judge?

transfer of the estate to an administrator does not sever the beneficial interest that flows to the heirs, therefore the property can be considered constructively transferred subject to any ministerial actions necessary by the executor such as an accounting, valuation or the like.

I retract my “duh” and suddenly find this to be a fascinating issue…

Better yet, Stoopid, the probate body’s decree transferring the intestate’s estate to the heirs could operate as a writing. However, its really not that complicated.

As for the case itself, the word “duh” comes to mind, however I understand counsel’s imperative to raise the issue out of a desire to zealously represent. At least I hope that’s the reason.

As any first year law student knows, Statute of Frauds general requires a transfer to be “by writing, or by act and operation of law” Title clearly passed by operation of law in Japan. Heck, there might even be some kind of paper in Japan that acts to officially transfer the right in lieu of an inter vivos transfer by written assignment.

Also 261 only says that a patent “shall be *assignable* at law by an instrument in writing.” 261 does not preclude other means of transfer of ownership. 261 clearly does not say that “the only way an interest in a patent can be transferred is by an assignment in writing”

The CAFC clearly believes, rightly, that title can pass by operation of law as is a customary attribute of personal property (also codified in 261 “Patents shall have the attributes of personal property”). However it would be very prudent for any transfer including an intestate transfer to be properly recorded.

Couldn’t the court merely have decided that the statute that governs intestate transfer is “an instrument in writing?” (i.e., does the instrument have to be specific to the patent rather than a general dispensation of property?)

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Assignment of Inventions/Patents Must Be in Writing; No Specific Format/Content Required

Manatt intellectual property protection and enforcement partner Irah Donner wrote an article for Law360 on the U.S. Court of Appeals for the Federal Circuit’s recent decision in Schwendimann v. Arkwright Advanced Coating Inc. , which held that a patent assignment must be documented in writing but that there are no specific requirements for the written document. In the article, Donner discussed the impact this decision might have on agreement drafters, assignors and assignees who are writing transfer or assignment documents for patents, saying, “there are many considerations when drafting transfer/assignment agreements, including specific contract language and applicable laws used for minimum requirements and interpretation. Due to this complexity, agreement drafters, assignors and assignees must be familiar with current requirements, as well as how the law may or will change in the future.”

Read the article here .

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29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

Intellectual Property
Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”).

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent.

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP, implement strong hiring policies that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an employment agreement that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

Advance assignment of any IP created while employed by your company, or using your company’s resources
An obligation to disclose any IP created while employed by your company, or using your company’s resources
An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

Independent contractors: Some inventors may be self-employed, or they may be employed by one of your service providers.
Joint collaborators: Some inventors may be employed by, say, a subsidiary or service company instead of your company.
Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

O btaining Written Assignments for New Patent Applications

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

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

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

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

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

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

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

Recording a Patent Assignment With the USPTO

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

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

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

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

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

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

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

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

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

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

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

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

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

N eed Help With Your Patent Assignments?

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

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

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

Michael K. Henry, Ph.D.

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

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

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

November 16, 2021

By: Peter C. Lando and Thomas P. McNulty

With assistance from summer intern Tyler Gruttadauria

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

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

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

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

Failure to obtain an automatic assignment can have negative consequences

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

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

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

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

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

Other Considerations

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

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

Peter C. Lando
Thomas P. McNulty

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Introduction
Recent Case Highlights
Public Policies Limiting Patents
Under-Utilized Defenses
Who Decides What When?
a) general canons of construction
b) role of other claims
c) role of specification
d) role of prosecution history
e) role of prior art, experts, and extrinsic evidence
f) claim preamble
g) claim transition
h) method claims
i) non-method claims
j) particular claim language
Content And Form Of A Claim Construction
Relationship To Certain Defenses
a) whether sec. 112(6/f) treatment invoked
b) construction of sec. 112(6/f) claim element
c) relationship to claim differentiation
a) preamble
b) printed matter, instructions on use, mental steps
c) non-functional descriptive material
d) intended use
e) wherein and whereby clauses
f) intended result
g) process portion of product-by-process claim
h) source or process restrictions in product claim or product limitation
i) optional, conditional steps
j) input signals in a circuit
k) theory of operation
Non-Infringement
Expiration of Patent; Extension Of Term
Dedication to Public
a) sec. 112(6/f) element
b) product-by-process claim
c) reverse doctrine of equivalents
a) required evidence
b) matter of law restrictions
c) prosecution history estoppel
d) disclosure-dedication restriction
e) relationship to sec. 112(6/f)
Sec. 271(a) (Direct) Infringement Of Any Type Of Claim
a) "use" of claimed method
b) "offer to sell" a method
a) “makes” claimed invention
b) “uses” claimed invention
c) “sells” or "imports" claimed invention
d) “offers to sell” claimed invention
Sec. 271(a) (Direct) Multi-Actor (Divided; Joint) Infringement
Sec. 271(a) (Direct) Infringement To Support Indirect Infringement
Indirect Infringement Requires Knowledge Of Patent
a) communication to direct infringer
b) knowledge of infringement
c) relevance of litigation defenses
d) relevance of clearance opinion
e) relevance of non-infringing uses
f) relevance of instructions to users
g) relevance of efforts to avoid infringement
a) knowledge of infringement
b) “offers to sell or sells”
c) “component,” “material or apparatus”
d) “material part of the invention”
e) substantial non-infringing use
Sec. 271(e)(2) Infringement (e.g., ANDA)
Sec. 271(e)(1) “Safe Haven”
a) “component”
b) sec. 271(f)(1)
c) sec. 271(f)(2)
a) “a product”
b) “made by a patented process”
c) sec. 295 shifting burden of proof
d) sec. 287(b) restriction on damages
a) abatement
b) intervening rights
c) “substantially identical” claim scope
d) relationship to pending litigation
Presumptions And Burdens
Assignor And Licensee Estoppel
Person Having Ordinary Skill In The Art (“PHOSITA”)
a) Alice step one
b) Athena Diagnostics En Banc Rehearing Denial
c) improvement to computer or machine functionality
d) categories of patent-ineligible subject matter
f) Alice step two
g) idea’s breadth immaterial
h) idea’s novelty immaterial
i) idea’s utility immaterial
j) preemption of idea
k) machine-or-transformation “test”
l) non-method claims
m) when decided?
Utility (Sec. 101)
Regards As The Invention (Sec. 112(2/b))
a) post-Nautilus decisions
b) ambiguous claims
c) unclear how to test for compliance
d) requiring forward-looking assessments of likely future results
e) terms of degree
f) functional (and result) claims
g) coined terms
h) hybrid claims
i) “consisting essentially of” claims
j) impossibility in claim
k) correction of errors in claim
l) who decides what when?
Particular And Distinct Claims (aka Indefiniteness) (Sec. 112(2/b) + Sec. 112(6/f))
a) which disclosure governs
b) support “full scope” of claim
c) omission of non-optional element
d) original claims
e) functional claims
f) genus claims
g) relationship to enablement
b) enable “full scope” of claim
c) undue/unreasonable experimentation
d) teaching away
Best Mode (Sec. 112(1/a))
a) "filed before"
b) patent owner’s burden
“Invention” Date (Sec. 102(g))
(FITF) U.S. Patents/Published Apps Qualifying As Prior Art (Sec. 102(a)(2) (AIA))
(FITF) Other Prior Art (Sec. 102(a)(1) (AIA))
a) ready for patenting
b) commercial offer for sale
c) may be secret
d) method claims
Public Use Bar
Experimental Sale Or Use
a) third-party on sale/public use
b) “printed publication” (sec. 102(a), (b))
c) sec. 102(e) prior art
d) applicants’ “publications”/disclosures
e) patent owner’s other patents
f) prior invention (sec. 102(g)) [by one of the co-inventors]
g) prior invention (sec. 102(g)) [by third party]
h) derivation from others; derived knowledge (sec. 102(f))
i) “known or used by others” in U.S. (sec. 102(a))
j) applicant admitted prior art and knowledge
k) overcoming putative prior art
a) inherent disclosure
b) genus - species
c) method claims
d) apparatus claims
e) reference enabling
f) single reference
g) expert testimony
h) relationship to written description support
a) analogous art
b) what a reference teaches
c) teaching away
d) motivation to combine or modify art
e) reasonable expectation of success
f) the manner in which the invention was made
g) objective indicia of non-obviousness (secondary considerations)
h) nexus to claimed invention
i) objective indicia of obviousness
j) admissions and omissions supporting obviousness
k) genus – species
l) method claims
m) obvious as a matter of law
Sec. 135 Repose
a) same invention
b) obviousness-type (non-statutory)
c) terminal disclaimer
d) safe harbor for “divisionals”
Broadening Reissue, Reexam, IPR Or PGR (Secs. 251, 305, 314, 316, 326)
Inventorship (Secs. 101, 102(f), 116, 256)
Abandonment Of Invention (Sec. 102(c))
Disclaimer Of Claim (Sec. 253(a))
Oath Defect
Other Defects
Unclean Hands
Likely Survives Therasense
Pleading Requirements
Effect Of Finding Inequitable Conduct
Ownership/Standing

Assignments

Bona Fide Purchaser (Sec. 261)
Constitutional And Statutory (fka “Prudential”) Standing
Co-Ownership Of Patent
License/Exhaustion
Exhaustion; First Sale Doctrine
Implied License
Acquiescence
Legal Estoppel
Equitable Estoppel
Increased Damages; Non-Willfullness- Basics
Willfulness
Pre- Halo Willfulness And Increased Damages
Opinion Of Counsel
Waiver Of Privilege
Who Decides Willfulness Or Misconduct?
Enhancement of Damages
Damages and Other Monetary Remedies – Basics
a) time limitation on damages
b) sec. 287 marking; notice of claim; impact on damages
c) indirect-infringement damages limited to extent of direct infringement
d) apportionment
e) limits re: extraterritorial reach (foreign activities)
f) failure to mitigate damages
g) “benefit rule” in mitigation of damages
a) lost sales
b) reduced prices/price erosion
Lost Royalties
Established Royalty
a) Georgia-Pacific factors
b) hypothetical negotiation
c) royalty base; entire market value rule
d) royalty rate
e) rejected reasonable royalties methodologies
f) FRAND standard essential patents
Supplemental Damages
Prejudgment Interest
Provisional Rights; Pre-Issuance Reasonable Royalty (Sec. 154(d))
Post-Judgment (“Ongoing”) Royalties
Equitable Principles Governing Injunction
Irreparable Harm
Legal Remedies Inadequate
Balance of Hardships
Serves Public Interest
Preliminary Injunction
Scope Of Injunction
Contempt Of Injunction
ITC Remedies
Court Of Federal Claims
Claim Preclusion
Issue Preclusion
Kessler Doctrine
Judicial Estoppel
AIA Trial-Based Estoppel
Prosecution Laches
Reissue Recapture Rule
Reissue/Reexamination Defects
Improper Claim Structure Under Sec. 112(4/d)
Improper Adjustment Or Extension Of Patent Term
Cross-Appeal Rule
Scope Of Issues Limited After Appeal
Sovereign Immunity
Medical Practitioner Immunity
Lack Of Personal Jurisdiction
Improper Venue
Sanctions and Fees Against Patent Owner- Basics
Cases Awarding Fees
Cases Denying Fees
“Exceptional Case”: Factors For And Against
Prevailing Party
Amount Of Fees Award
Rule 11 Sanctions
Counter-Attacks
BASICS : Although an assignment must be in writing, 35 U.S.C. § 261 , ownership can be transferred by other means not requiring a writing, such as through intestate succession laws. Sky Tech. (Fed. Cir. 08/20/09); see Vapor Point (Fed. Cir. 08/10/16) (O’Malley, J., Concurring) (recommending court overrule precedent suggesting in-writing requirement can be superseded under state law). Exclusive license with right to sue need not be in writing. Bard Peripheral III (Fed. Cir. 01/13/15). Written assignment or document memorializing prior assignment must be made pre-suit. Bard Peripheral III (Fed. Cir. 01/13/15). Post-complaint “nunc pro tunc assignments are not sufficient to confer retroactive standing” under Sec. 281, even if preceded supplemental or amended complaint. Alps South (Fed. Cir. 06/05/15) (although patent owner can be added post-complaint to cure standing defect); but see Sealant (Fed. Cir. 06/11/15) (non-precedential) (standing is claim-by-claim and need exist at time claim first made in the action).
Must Convey Undivided Interest Or Exclusive Patent Right To Constitute Assignment : “‘To create an assignment, a contract must transfer: (1) the entire exclusive patent right, (2) an undivided interest in the patent rights, or (3) the entire exclusive right within any geographical region of the United States.’” Diamond Coating (Fed. Cir. 05/17/16) (no assignment of all substantial rights where original patent owner retains a right to make, use and sell patented products, plaintiff’s rights to license or enforce are restricted, and plaintiff did not obtain right to practice the patent).
“Hereby Grants” (Present Tense Active Verbs) Conveys Legal Title; “Agrees To Assign” (Passive Verbs In Indefinite Or Future Tense) Conveys Only Equitable Title : A party with legal title to a patent has standing to sue even if it may not have equitable title and, conversely, a party with equitable title but no legal title lacks standing. The issue normally arises where someone agrees to assign patent rights in future inventions, but fails to actually assign them. If one uses “does hereby grant [or “assign”]” (rights in any future inventions to the assignee) language, then legal title will pass by operation of law once the invention comes into existence. See Stanford (Fed. Cir. 09/30/09) (where inventor first entered an “agree to assign” contract with Stanford giving it equitable rights in future inventions, but then inventor entered a “hereby assign” contract with defendant’s predecessor in interest, and then made invention and application was filed, legal title automatically transferred to that predecessor upon filing of the application, so legal title was in defendant when inventor later assigned rights to Stanford; and Stanford not “bona fide purchaser as it had constructive notice of the “hereby assign” contract), aff’d on other grounds , Bd. of Tr. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. (U.S. 06/06/2011) (but two Justices question Fed. Cir. distinction between “agree to assign” and “hereby assign”); Omni Medsci (Fed. Cir. 08/02/21) (2-1) (aff’g denial of R. 12(b)(1) mtn. for lack of standing; bylaws’ provision that certain patents “shall be the property of the University” did not “automatically and presently assign[] legal title” to the inventions, in part because does not use present-tense active verbs); Preston (Fed. Cir. 07/10/12) (aff’g Summ. J. of no standing because plaintiff employee’s employment agreement automatically assigned (“does hereby assign” any invention conceived or made while employed) patent rights to employer (the defendant)); Advanced Video II (Fed. Cir. 01/11/18) (2-1) (aff’g dismissal of complaint for lack of standing: “will assign” provision in employment agreement was a mere promise to assign to employer (putative predecessor in interest to plaintiff)); Filmtec (Fed. Cir. 07/22/91) (vacating preliminary injunction in view of serious doubts re who has title to patent; an assignment of rights in an invention made prior to the existence of the invention is an assignment of an expectant interest conveying equitable title to the assignee which, “once the invention is made and an application for patent is filed,” conveys legal title to the assignee and the assignor has nothing left to assign). But “will be assigned” or “agree to assign” language transfers only equitable title, not legal title. Speedplay (Fed. Cir. 03/01/00) (aff’g plaintiff obtained substantially all rights in patent from the inventor via a “hereby … assigns” provision); SiRF Tech. (Fed. Cir. 04/12/10) (aff’g that petitioner in ITC had standing, because respondent failed to show that invention fell within scope of one inventor’s automatic assignment to another company; recording in PTO an assignment from inventor to the plaintiff shifts burden of proof (production?) to challenger to challenge that assignment by, e.g., proving earlier assignment by inventor to another company); Abraxis (Fed. Cir. 11/09/10) (plaintiff lacked standing when complaint was filed because promise to assign was not present assignment, and attempt to cure retroactively failed), rehearing en banc denied (Fed. Cir. 03/14/11); Gellman (Fed. Cir. 11/30/11) (non-precedential) (“this court has consistently required that present assignments of future rights expressly undertake the assigning act at the time of the agreement, and not leave it to some future date”).
Transfer Of Ownership Of Software Developed Does Not Necessarily Assign Patent Rights : A software development contract giving company exclusive rights to the software does not necessarily grant ownership rights in any patentable methods or systems invented in creating such software. James (Fed. Cir. 04/20/18) (rev’g dismissal of suit for correction of inventorship for lack of standing; if plaintiff proves sole inventorship then he may own the patents).
Bayh-Dole Act Does Not Assign Inventors’ Rights To Their Federally Funded Employers : It is a “basic principle of patent law that inventors own their inventions.” Bayh-Dole Act does not deprive inventors of their interest in federally funded inventions. 201(e)’s “any invention of the contractor” does not refer to all inventions of the contractor’s employees, but rather to “those owned by or belonging to the contractor.” “The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have.” Bd. of Tr. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. (U.S. 06/06/2011).
State Law Governs Interpretation Of Contract Purportedly Assigning Invention, But Federal Law Governs Whether Automatic Assignment : Abbott Point (Fed. Cir. 01/13/12) (2-1) (aff’g plaintiff did not own patent or have standing); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (aff’g dismissal for lack of standing; “whether a patent assignment clause creates an automatic assignment or merely an obligation to assign” is a question of federal law); Schwendimann (Fed. Cir. 05/13/20) (2-1) (aff’g assignment valid, and properly reformed under state law, despite misnaming assignee, in view of other writings showing correct intended assignee; “by virtue of the reformation, the written instrument was corrected nunc pro tunc , to the point of the assignment”).
Termination Upon Failure Of Condition Subsequent Does Not Necessarily Defeat Transfer Being Deemed An Assignment : “An assignment of a patent ‘may be either absolute, or by way of mortgage and liable to be defeated by non-performance of a condition subsequent.” Vaupel (Fed. Cir. 09/13/91) (transfer granted all substantial rights, despite retaining “1) a veto right on sublicensing by Vaupel; 2) the right to obtain patents on the invention in other countries; 3) a reversionary right to the patent in the event of bankruptcy or termination of production by Vaupel; and 4) a right to receive infringement damages.”) But see Propat (Fed. Cir. 01/04/07) (grant did not transfer all substantial rights; the power “to terminate the agreement and end all of Propat’s rights in the patent if Propat fails to perform up to the specified benchmarks, although not dispositive, is yet another indication that Authentix retains a significant ownership interest in the patent”).

Patent Defenses is a research tool maintained by Klarquist since 2004. Visit klarquist.com to learn more about us.

Privacy Overview

Who Owns What Assignment and Ownership of Patents and Applications

Why does ownership of a patent/patent application matter.

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

So who owns a patent/patent application?

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

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

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

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

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

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

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

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

You’re the new owner!

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

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Who Owns What: Assignment and Ownership of Patents and Applications

Why does ownership of a patent/patent application matter?

So who owns a patent/patent application?

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

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

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

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

You’re the new owner!

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

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The basics of patent assignments

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

Find out more about Patents

by Cindy DeRuyter, Esq.

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

Defining Patent Assignment

Requirements to assign a patent, searching for patent assignments.

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

Young coworkers looking at laptops and paperwork on a desk

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

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

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

A patent assignment agreement documents the transfer and arrangement between the parties. If you are considering entering into one, know that you need it to be written—a verbal agreement alone is insufficient.

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

Here are the requirements for a valid written assignment:

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

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

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

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

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Patent Assignment Agreement

This Patent Assignment Agreement is a comprehensive document designed to facilitate the transfer of patent ownership from the original patent owner, known as the assignor, to another party, known as the assignee .

A patent is a legal grant issued by the United States Patent and Trademark Office (USPTO) to an inventor, providing exclusive rights to make, use, and sell their invention for a limited period , typically 20 years from the filing date. This protection is granted in exchange for the public disclosure of the invention. This system encourages innovation and lets inventors benefit from their creations for a specified period of time.

An assignment is the legal transfer of ownership or rights of a patent from one party (assignor) to another (assignee) . Using a Patent Assignment Agreement, the assignor forever relinquishes their rights to the patent, and the assignee assumes control and ownership of those rights for the duration of the patent.

This assignment can be made either before or after a patent application has been issued as a patent. By law, a patent is considered personal property and, so, can be sold or transferred in the same way one could sell a car or a piece of furniture. This document formally initiates the transfer process, providing clarity and protection for both parties involved. This agreement is particularly useful when inventors, companies, or individuals who wish to transfer their patent rights, whether for financial considerations, strategic partnerships, or other business transactions.

This document is different from a Trademark Assignment Agreement, which is used for the transfer of a different kind of intellectual property, known as a trademark. A trademark is usually a brand name or logo, unlike a patent, which is usually an invention of some sort. This is also slightly different from an Intellectual Property Release . Although that form could be used for a patent, it is generally used for copyrighted material, like works of art or pieces of music. In that case, payment is not made and, instead, the copyrighted works are simply "released," or given to another party. This document can also be distinguished from an Intellectual Property Permission Letter, as there, one party is writing to request permission to use the intellectual property of another. The Patent Assignment Agreement would then come after the letter, but the letter is not the formal legal document that initiates the transfer.

How to use this document

This document includes all the information necessary to transfer the ownership of a patent from one party to another. This document should be used when the transfer will be permanent, usually for a one-time fee , and no royalties will be due after the assignment. This document allows the parties to fill in details of the patent to be transferred, such as the patent name, original recordation number, and date the patent was initially issued . This ensures that everything needed for new recordation with the United States Patent and Trademark Office (USPTO) is present.

Once the document has been completed, both parties should sign the document in front of a notary and have the notary complete the notary page. The document must then be recorded with the USPTO within three months of its signing, or it becomes void. The current cost for filing an assignment with the USPTO is $40 per patent. The assignment can be filed either online or by mail.

Applicable law

In the United States, specific federal laws govern patent assignments, primarily under Title 35 of the United States Code , which pertains to the country's patent system. Section 261 of Title 35 outlines the general provisions related to patent ownership and transfers. According to this statute, patent assignments must be in writing to be valid, and they require the signature of the owner of the patent or their authorized representative. The law also specifies that the assignment must be recorded with the USPTO to establish priority and provide notice to the public.

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IP Law Bulletin

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

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

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

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

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

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

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

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Kenneth R. Berman
Patrick J. Concannon
Emmanuel D. Filandrianos
Micah W. Miller
Thomas J. Tuytschaevers

A license is a grant (assignment) to the licensee of various licensed rights. The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another. Thus, the first recordation of a license may be recorded as a “license,” while the assignment of those same licensed rights to another entity may be recorded as an “assignment.” The only way to really understand the situation is to review the actual documents, which are all readily available from the recordation branch of the patent office.

Note that the patent office sometimes refers to licenses as a species of assignment. That is correct, because one is assigning license rights.

Not necessarily. Assignments are only needed if you are contractually obligated, by employment or otherwise, to make the assignment.

An important corollary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name. Investors are usually unhappy with that arrangement, but there can be significant advantages. One major advantage is that the patent holder is a “necessary and indispensable” to any litigation over patent validity. Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.

Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications. See the previous FAQ.

Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications. That is a dangerous strategy. In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company, or divorce.

It is not technically necessary to re-file assignments for divisional or straight continuation applications. A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications. Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee.

Absolutely. Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues.

Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office.

Note that the office charges US$ 40 for each patent or patent application listed on the recordation form. Thus, if an assignment references a family of 5 patent applications, the recordation fee is US$ 200. Of course paralegal charges would also apply, and possibly attorney time.

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment. The statute is similar to recording statutes used for recording real property. Thus, although there is no requirement to record an assignment, it is foolish not to do so.

Note that absent some unusual circumstance, patent assignments do not have to be notarized for use within the United States.

Preparing assignments is usually a simple matter of filling in the blanks of a form. Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in Strategic Patenting .

Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document. The recording branch does not generally read the documents to verify the content.

The Patent office will proceed as if the signature had been procured from the inventor, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached. Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights.

In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished. Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact.

One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form.

In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees).

It depends on the wording of the assignment and the recordation laws of the foreign countries. Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications. Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country.

Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments.

Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office. Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages.

The main disadvantage to recording assignments is that many countries (including most or all of Europe) consider assignment of a patent or application to be a taxable transfer, and charge VAT (Value Added Tax) on the estimated value of the application or patent. Since the value is often low in the early days, and can rise considerably during the life of the patent, the disadvantage of recordation can be mitigated by registering early.

Assignments records at the USPTO are available for public inspection , but only for patents and published applications. One can search by reel/frame number, patent or publication number, and assignor or assignee name.

The underlying documents are not available for download, but can be ordered from the assignment branch. Paper mail requests can take months, but faxed requests are usually filled within a day or two.

No. One should never rely upon the designation of “assignee” as set forth on the face of a patent. First, the patent office obtains the “assignment” information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct. The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment. Second, the patent is never altered after it is published. Information that was correct at one point in time may well be superseded down the road. Third, even if the “assignee” information is correct, one cannot know from the face of the patent what rights were assigned. It might well be that only licensed rights were assigned, or that such rights are subject to a reversion.

Yes. But there can be real problems with multiple owners of a patent. Unless there is some other agreement restricting what an entity can do with its ownership interest, a co-owner of any portion of a patent, (whether 99% or 1% or .0001%), can make use of the patent however they want. For example, a .0001% owner of a patent could license out its rights, and keep 100% of the license fee. Absent an agreement to the contrary, there is no duty of a co-owner of the patent to share license fees with any of the other co-owners.

One of the big problems with two entities owning portions of a given patent is that the two entities can compete with each other with respect to license fees. For example, if co-owner A offers to license the patent rights for 7%, co-owner B might choose to undercut the previous offer by offering to license the same rights for 5%. But then co-owner A comes back and offers to license the rights for 2%. Pretty soon the value of the license rights goes to zero. Also, if co-owner A gets upset with co-owner B, co-owner A could unilaterally abandon the patent, which would make it worthless to everyone.

Even if co-owners agree to share license fees 50-50, there can be problems. For example, co-owner A could decide to license out its patent rights for one dollar a year to a licensee that co-owner A owns, has an interest in, or perhaps has a relative with an interest in. Of course co-owner A would be happy to share $0.50 of its annual license fee with co-owner B, but co-owner B would be pretty upset.

Still further, if there is a chain of patents, for example with a parent and a child patent in the same family, the ownership of both patents has to remain to the same at all times. If, for example, both a parent patent and a child patent are 100% owned by A, assignment of some or all of the child patent to B will immediately invalidate the child patent. Even if such an assignment is made, and the parties realize the mistake, reassigning the child patent back A would not cure the mistake. The child patent would remain abandoned.

Bottom line, co-ownership of a patent is really problematic.

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35 U.S. Code § 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 a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

Based on Title 35, U.S.C., 1946 ed., § 47 (R.S. 4898, amended (1) Mar. 3, 1897, ch. 391, § 5, 29 Stat. 93 [ 29 Stat. 693 ], (2) Feb. 18, 1922, ch. 58, § 6, 42 Stat. 391 , (3) Aug. 18, 1941, ch. 370, 55 Stat. 634 ).

The first paragraph is new but is declaratory only. The second paragraph is the same as in the corresponding section of existing statute. The third paragraph is from the existing statute, a specific reference to another statute is omitted. The fourth paragraph is the same as the existing statute but language has been changed.

2012— Pub. L. 112–211 inserted “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.” at end of first par. and substituted “An interest that constitutes an assignment” for “An assignment” in fourth par.

1982— Pub. L. 97–247 inserted “, 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”.

1975— Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.

Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012 , applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effective date, see section 203 of Pub. L. 112–211 , set out as an Effective Date note under section 27 of this title .

Amendment by Pub. L. 97–247 effective Aug. 27, 1982 , see section 17(a) of Pub. L. 97–247 , set out as a note under section 41 of this title .

Amendment by Pub. L. 93–596 effective Jan. 2, 1975 , see section 4 of Pub. L. 93–596 , set out as a note under section 1111 of Title 15 , Commerce and Trade.

The basics of patent law - assignment and licensing

The articles cover, respectively: Types of intellectual property protection for inventions and granting procedure ; Initiating proceedings ; Infringement and related actions ; Revocation, non-infringement and clearing the way ; Trial, appeal and settlement ; Remedies and costs ; Assignment and Licensing and the Unified Patent Court and Unitary Patent system .

The articles underpin Gowling WLG's contribution to Chambers' Global Practice Guide on Patent Litigation 2017, for which Gordon Harris and Ailsa Carter wrote the UK chapter.

Introduction

Any patent, patent application or any right in a patent or patent application may be assigned (Patents Act 1977 (also referred to as "PA") s.30(2)) and licences and sub-licences may be granted under any patent or any patent application (PA s.30(4)).

The key difference between an assignment and a licence is that an assignment is a transfer of ownership and title, whereas a licence is a contractual right to do something that would otherwise be an infringement of the relevant patent rights. Following an assignment, the assignor generally has no further rights in relation to the relevant patent rights. On the granting of a licence, the licensor retains ownership of the licensed rights and generally has some continuing obligations and rights in relation to them (as set out in the relevant licence).

Formalities

Any assignment of a UK patent or application, or a UK designation of a European patent, must be in writing and signed by, or on behalf of, the assignor. For an assignment by a body corporate governed by the law of England and Wales, the signature or seal of the body corporate is required (PA s.30-31). With regards the assignment of a European patent application however, such assignment must be in writing and signed not just by the assignor but by both parties to the contract (Article 72 EPC).

There is no particular statutory provision regarding the form of a licence or sub-licence (exclusive or otherwise). However, in view of the advisability of registration (discussed below) and legal certainty, it is sensible that any licence be in writing. In addition, normal contractual formalities apply, such as intention to create legal relations, consideration and certainty of terms, etc.

Registration

Registration (with the UKIPO) of an assignment or licence is not mandatory. However, if the registered proprietor or licensor enters into a later, inconsistent transaction, the person claiming under the later transaction shall be entitled to the property if the earlier transaction was not registered (PA s.33). Registration is therefore advisable. Failure to register an assignment or an exclusive licence within six months will also impact the ability of a party to litigation to claim costs and expenses (PA s.68) and might, potentially, enable an infringer to defend a claim for monetary relief on the basis of innocent infringement (PA s.62).

The procedure for registration is governed by the Patents Rules 2007. The application should be made on the appropriate form, should include evidence establishing the transaction, instrument or event, and should be signed by or on behalf of the assignor or licensor. Documents containing an agreement should be complete and of such a nature that they could be enforced. A translation must be supplied for any documentary evidence not in English.

In practice (particularly in the context of a larger corporate transaction in which many different asset classes are being transferred, not just intellectual property), parties sometimes agree short form documents evidencing the transfer of the relevant patent rights and will submit these for registration. This can enable parties to save submitting full documents for the whole transaction, which may include sensitive commercial information that is not relevant to the transfer of the patent rights themselves.

Types of licence

A licensee may take a non-exclusive or exclusive licence from the licensor. The distinction between such licences is both legally and commercially significant.

On a basic level an exclusive licence means that no other person or company can exploit the rights under the patent and this means the licensor is also excluded from exploiting such rights. Exclusivity may be total or divided up by reference to, for example, territory, field of technology, channel, or product type. The extent of exclusivity generally goes to the value of the rights being licensed and will feed into the agreed financials. It is worth noting that the term "exclusive licence" does not have a statutory definition under English law, so it is very important to define the contractual scope of exclusivity in the relevant licence agreement.

In the event a licensor wants to retain the ability to exploit the rights in some way (for example an academic licensor may want the ability to continue research activities) then appropriate carve outs from the exclusivity should be expressly stated in the licence agreement.

A non-exclusive licensee has the right to exploit rights within the patent as determined by the licence agreement. However, the licensor may also exploit such rights as well as granting multiple other licences to third parties (which may include competitors of the original licensee).

Much less common is a sole licence, by which the patent proprietor agrees not to grant any other licences but gives the licensee the right to use the technology and may also still operate the licenced technology itself.

Compulsory licences

A compulsory licence provides for an individual or company to seek a licence to use another's patent rights without seeking the proprietor's consent. Compulsory licences under patents may be granted in circumstances where there has been an abuse of monopoly rights, but are very rarely granted in the UK.

An application for a compulsory licence can be made by any person (even a current licensee of the patent) to the Comptroller of Patents at any time after three years from the date of grant of the patent. In respect of a patent whose proprietor is a national of, or is domiciled in, or which has a real and effective industrial or commercial establishment in, a country which is a member of the World Trade Organisation, the applicant must establish one of the three specified grounds for relief. If satisfied, the Comptroller has discretion as to whether a licence is granted and if so upon what terms. The grounds are:

demand for a patented product in the UK is not being met on reasonable terms;
the exploitation in the UK of another patented invention that represents an important technical advance of considerable economic significance in relation to the invention claimed in the patentee's patent is prevented or hindered provided that the Comptroller is satisfied that the patent proprietor for the other invention is able and willing to grant the patent proprietor and his licensees a licence under the patent for the other invention on reasonable terms;
the establishment or development of commercial or industrial activities in the UK is unfairly prejudiced;
by conditions imposed by the patentee, unpatented activities are unfairly prejudiced.

The terms of the licence shall be decided by the Comptroller but are subject to certain restrictions on what type of licence can be granted, namely the licence: cannot be exclusive; can only be assigned to someone who has been assigned the part of the applicant's business that enjoys use of the patented invention; will be for supply to the UK market; will include conditions allowing the patentee to adequate remuneration; and must be limited in scope and duration to the purpose for which the licence is granted.

Infringement

The type of licence is also significant when it comes to tackling infringement. Under statute, an exclusive licensee has the same right as the proprietor of a patent to bring proceedings with respect to infringement committed after the date of the licence and such proceedings may be brought in the licensee's name (PA 67(1)). An exclusive licensee of a patent application may also bring proceedings in its own name (PA ss. 67(1) & 69). In practice, however, these statutory provisions are often excluded or varied by parties negotiating complex licensing transactions. A licensee may also have a right under a licence to bring proceedings for an infringement occurring before the licence came into effect.

A non-exclusive licensee does not have any right under statute to bring proceedings in its own name. However, this could be negotiated into a licence agreement, though it may be difficult for a licensor to agree this point if it has multiple non-exclusive licensees.

Effect of non-registration on infringement proceedings

There is no requirement that a licence must be registered before proceedings can be commenced by an exclusive licensee. However, non-registration can affect a licensee's ability to recover its costs in relation to such proceedings.

Implied terms

Established rules of construction apply to assignment and licence agreements. Parties should ensure that important terms are included as express terms. There is no implied warranty that any assigned or licensed patent will be valid, or that an assignee or licensee will work the invention (for example, that they will exploit the rights and manufacture products). In certain very limited circumstances a court will order 'rectification' of an assignment or licence agreement, namely a court will order a change in the assignment or licence agreement to reflect what the agreement ought to have said in the first place. Regardless of this, all key terms should be included expressly in all assignment and licence agreements.

Termination of licences

Except where there is express contractual provision or where a licence has been wrongly terminated and damages sought, under English law there is no compensation payable to licensees on termination of a licencing agreement. The licence agreement should be clear as to what circumstances may give rise to termination, for example the non-payment of royalties, material breach or insolvency. The agreement should also make clear what happens in the event of termination in relation to, for example, existing stock of licensed products or work in progress.

Next in our 'The basics of patent law' series, we will be discussing the Unified Patent Court and Unitary Patent system.

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Protecting IP Ownership and Rights in Poland: 6 Things Employers Need to Know

Jun 8, 2023

Doug Murray

Table of contents.

Your company's competitive edge lies in its intellectual property, but navigating the complexities of IP law can be a formidable task, especially when it comes to international jurisdictions.

When expanding your team or hiring in Poland , it’s essential to protect your company's inventions, designs, trademarks, copyrights, creative activities, and trade secrets from unauthorized claims or exploitation by others. However, safeguarding your intellectual property (IP) rights in Poland can be a daunting task, as they are regulated by both Polish law and European Union (EU) regulations. Neglecting to secure your company's IP rights and ownership can lead to costly legal disputes, a decrease in market share, and even damage to your brand reputation.

Read our primer for valuable insights on protecting your company's IP. Please note that while our guide aims to provide information, it isn’t intended to provide legal advice.

1. In Poland, NDAs are enforceable

Non-disclosure agreements (NDAs) are legally binding contracts in Poland. While common, it’s important that they’re prepared correctly and provide the scope of protection you need. Here are some caveats to be aware of:

NDAs need to meet legal requirements for being specific, reasonable, and not outside the public interest.
Certain information can't be covered by an NDA. For example, a company can't make employees sign an NDA to stop them from exposing criminal activity by the company.

2. Polish employers have the right to obtain employee patents—unless an agreement states otherwise

Polish Industrial Property Law—which regulates industrial property rights—states that for inventions created by an employee or contractor, the employer has the right to obtain the patent, unless there is an agreement stating otherwise. To protect information the employee or contractor helps create during their employment or contract, an IP assignment agreement may be required.

There are different versions of these contracts in different jurisdictions. If executed correctly, IP assignment agreements are legally binding contracts that also protect confidentiality. Note that errors may cause the agreement to be declared invalid.

Are you correctly classifying your Polish employees and contractors?

3. IP assignment agreements can be legally enforced

Legal protection of your IP rights in Poland are covered by a myriad of regulations and treaties. Poland’s IP regulations are based on those of the EU. The Polish Patent Office regulates inventions and patent applications, trademarks, integrated circuits topographies, geographical indications, and industrial design. Copyright protection falls under the purview of the Ministry of Culture and National Heritage. Poland is also a member of the World Trade Organization and the World Intellectual Property Organization (WIPO).

While IP assignment agreements are enforceable in Poland, there are some types of IP that can affect the implementation/requirements of an assignment agreement. For copyrights:

In Poland, copyright begins when the work is created—even if it is not complete. The author is granted moral rights (for example, the right to be identified as the author and the right to protect the integrity of the work) and economic rights (financial benefits). Moral rights cannot be assigned or transferred, while economic rights can, even to a third party. Moral rights can be limited by mutual agreement.
In most cases, the employer assumes IP rights within the framework of an employment contract.
The transfer of an author’s economic rights must be in writing for it to be legally binding.
Material must be created under the author’s work obligations.
The transfer of rights must be fully specified and include time frame (default is five years), geographic area, and the planned use of the IP including modifications. Termination conditions must be defined as well. Parties are free to define their own general rules.
Copyright terms apply to the author’s work, scientific work, or computer programs.

For patent rights and industrial designs:

In Poland a patent serves as the legal protection for an invention, granting exclusive rights to either the creator or their employer, if created under contractual arrangements. The duration of the protection period can extend up to 20 years from the date of registration. In the case of industrial designs, the protection rights cover a period of 25 years. Poland follows EU directives regarding patent rights. This means:

The patent can be filed by either party.
The right to a patent is determined by the employment (or stand-alone) contact between the employer and the worker.
The inventor is entitled to remuneration for use of the design. This can be included in a contract, otherwise it may be subject to a proportionality test that weighs criteria such as profits and employee contributions to the creation of the invention.

4. By default, contractors own the copyright to their work unless specified otherwise

Economic copyright refers to the financial benefit from the use of one’s work. In Poland, a written contract specifying the transfer of economic copyright is necessary. The contract must be in writing and cover usage. If the copyright is not transferred in this way, the contractor retains economic copyright.

5. You have to localize IP ownership clauses to Poland

Polish and EU IP laws are different from those in other countries, including the US. For example, international agreements protect most copyrighted works created in the US. But, because Poland doesn't employ the "work for hire" concept, in most cases intellectual property created in Poland is owned by the creator—unless there is a binding agreement (such as an employment contract that includes ownership provisions). Trademarks, designs, and patents need protection specific to Poland and the European Union.

Our team of experts can help you navigate the complexity of Polish IP law

6. Unlike in some countries, moral rights of an author cannot be transferred or waived

In Poland, creators of works are granted moral rights, which includes the right to preserve the integrity of their work and be acknowledged as its author. Moral rights cannot be transferred. However, these rights can be limited or partially waved by with a legally binding contract.

Frequently asked questions about IP law in Poland

Who owns ip in poland: employee or employer.

In Poland, employees or contractors are the rights holders of the IP if no agreement covering rights exists. However a work contract or assignment of rights agreement normally transfers economic rights to the employer. Moral rights remain with the worker, though these can be limited in an agreement. The transfer of economic rights does not include related rights, like derivative rights (works derived from the original work), unless such rights are specified.

What is an IP assignment agreement?

An IP assignment agreement entails the transfer of an owner's rights, title, and interest in specific intellectual property rights. The party transferring the rights gives up their ownership of IP rights, such as patents, trademarks, industrial designs, and copyrights to the party receiving them. Poland follows European IP protection regulations regarding these areas of intellectual property.

Which Polish and EU agencies deal with IP?

These are some of the agencies that oversee IP in Poland:

The Patent Office of the Republic of Poland : For matters regarding patent law and the protection of industrial property in Poland (located in Warsaw).
The European Patent Office : For applying for patents across multiple EU member states (headquartered in Munich, Germany).
Ministry of Culture and National Heritage : For copyright matters (located in Warsaw).
European Union Intellectual Property Office (EUIPO) : For EU-wide trademark protection (located in Alicante, Spain).

International treaties like the Patent Cooperation Treaty (patents) and the Madrid Protocol (trademarks) also help with the protection of IP in Poland.

Are IP regulations in Poland the same as in the US?

No. While there are general similarities—both countries are signatories to several World Intellectual Property Organization (WIPO) treaties and agreements—IP is protected differently in Poland. If you’re hiring contractors or employees in Poland, you need to protect your IP assets under Polish law. Some US copyrighted works are protected in Poland by international copyright agreements.

Can I protect my trademark in Poland?

You can apply to register your trademark at the Patent Office of the Republic of Poland. The application may be filed by a natural person (an individual) or a legal person (an entity such as a corporation) and all documentation must be in Polish. The process can take up to nine months to verify and approve the application. In addition, there is a three-month period for other parties to challenge the application. Upon approval, the trademark is protected from the filing date. Trademarks are approved for 10-year periods and can be renewed. It’s a good idea to retain a Polish law firm and use their local know-how to assist in trademark protection.

What’s the difference between an invention and a utility model?

An invention is new, innovative, and has the potential to be made or used in an industry. A patent grants the right to safeguard an invention to either the inventor or an assignee that holds the rights to the invention.

A utility model (also known as a minor or small patent) provides protection for improvements or adaptations of existing products. Utility models are usually utilized for advancements in mechanical technology. The principles governing the right to protection for a utility model are similar to those for an invention.

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Rippling allows you to manage HR, IT, and Finance in one unified system—and automate your global compliance work. See Rippling .

Looking to hire in Poland?

Rippling and its affiliates do not provide tax, accounting or legal advice. This material has been prepared for informational purposes only, and is not intended to provide, and should not be relied on for, tax, legal or accounting advice. You should consult your own tax, legal and accounting advisors before engaging in any related activities or transactions.

A Vancouver-based B2B and business trends writer, Doug is a charter member of the global workforce, having lived and worked out of Scotland, Ireland, Mexico, Guatemala, Ghana and, of course, Canada.

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COMMENTS

Patent Assignment Must be in Writing; But Some Transfers are not
35 USC §261 has been interpreted to require that patent assignments be in writing. "Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.". Thus, New Link questions whether the intestate transfer of rights satisfies the writing requirements of Section 261.
PDF Chapter 300 Ownership and Assignment
37 CFR 3.73(b) submission establishing that the assignee is the appropriate assignee to take such action, can be combined in one paper. The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. Pre-AIA 37 CFR 3.73(c).
Assignment of Inventions/Patents Must Be in Writing; No ...
Arkwright Advanced Coating Inc., which held that a patent assignment must be documented in writing but that there are no specific requirements for the written document. In the article, Donner discussed the impact this decision might have on agreement drafters, assignors and assignees who are writing transfer or assignment documents for patents ...
Patent Assignment: How to Transfer Ownership of a Patent
Be in writing: Oral agreements to assign patent rights are typically not enforceable in the United States. Clearly identify all parties: Include the names, addresses, and relationship of the assignor (s) and assignee. Clearly identify the patent being assigned: State the patent or patent application number, title, inventors, and filing date.
Patent Assignments in Employment Agreements
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 ...
Assignments
BASICS: Although an assignment must be in writing, 35 U.S.C. § 261, ownership can be transferred by other means not requiring a writing, such as through intestate succession laws. Sky Tech. (Fed. Cir. 08/20/09); see Vapor Point (Fed. Cir. 08/10/16) (O'Malley, J., Concurring) (recommending court overrule precedent suggesting in-writing requirement can be superseded under state law).
Who Owns What Assignment and Ownership of Patents and Applications
Assignments must: Be in writing - unlike some other contracts, oral assignments or oral agreements to assign patent/patent application rights are rarely enforceable; ... Finally, make sure that any assignment in a patent/patent application is recorded with the US Patent and Trademark Office (USPTO) as soon as possible after execution. ...
Who Owns What: Patent Assignment and Ownership
Assignments must: Be in writing - unlike some other contracts, oral assignments or oral agreements to assign patent/patent application rights are rarely enforceable; ... Finally, make sure that any assignment in a patent/patent application is recorded with the US Patent and Trademark Office as soon as possible after execution. If an ...
301-Ownership/Assignability of Patents and Applications
A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee (s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 . II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ...
The basics of patent law
With regards the assignment of a European patent application however, such assignment must be in writing and signed not just by the assignor but by both parties to the contract (Article 72 EPC). ...
What is a patent assignment?
The patent assignment must be in writing. Patent rights cannot be transferred from one party to another verbally. There is no such thing as a verbal patent assignment. Confirm that the party assigning the patent rights has the right to transfer the patent to the receiving party. You can do this by looking up all of the previous patent ...
The basics of patent assignments
Here are the requirements for a valid written assignment: Confirm that the assignor has the full, legal right to make the assignment and that the assignee can legally assume the rights and obligations. Clearly identify both the assignor and assignee using legal names. If more than one company owns the patent, identify all owners.
Patent Assignment Agreement
According to this statute, patent assignments must be in writing to be valid, and they require the signature of the owner of the patent or their authorized representative. The law also specifies that the assignment must be recorded with the USPTO to establish priority and provide notice to the public. How to modify the template. You fill out a ...
302-Recording of Assignment Documents
Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28. The cover sheet for patents or patent applications must contain: (A) The name of the party conveying the interest; (B) The name and address of the party receiving the interest;
Assignments in the United States Do Not Always Pass Muster in Europe
In Europe, an assignment of a patent application must be in writing and "shall require the signature of the parties to the contract." (Emphasis added.) Thus, according to European law, which was highlighted in a Board of Appeals of the European Patent Office (EPO) on November 14, 2006, both the assignor and the assignee must sign the assignment document.
Frequently Asked Questions about Patent Assignment
A license is a grant (assignment) to the licensee of various licensed rights. The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another. Thus, the first recordation of a license may be recorded as a "license," while the assignment of those same licensed rights to another entity may ...
35 U.S. Code § 261
35 U.S. Code § 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.
Basics of patent law: assignment and licensing
Any assignment of a UK patent or application, or a UK designation of a European patent, must be in writing and signed by, or on behalf of, the assignor. For an assignment by a body corporate governed by the law of England and Wales, the signature or seal of the body corporate is required (PA s.30-31). With regards the assignment of a European ...
Assigning patent rights to others
An assignment of a patent or patent application is void unless it is in writing. Post 1 January 2005, the need for assignments to be signed by both assignees and assignors was removed for assignments of UK patents. This change was effected via the Regulatory Reform (Patents) Order 2004. Nevertheless, it is still common for both parties and not ...
2
2.1 Assignments of Intellectual Property, Generally . Once it is in existence, an item of IP may be bought, sold, transferred and assigned much as any other form of property. Like real and personal property, IP can be conveyed through contract, bankruptcy sale, will or intestate succession, and can change hands through any number of corporate transactions such as mergers, asset sales, spinoffs ...
PDF Avoiding Common Mistakes in Patent and Technology Licensing
I. TYPES OF GRANT (USING PATENT LAW PRECEDENT) A. Labels are not determinative B. Assignment 1. Must be in writing. 35 USC 261. 1. Courts will correct inappropriate usage 2. May not be what parties intended 2. Forms: a. Transfer of "entire right, title and interest"
PDF Path to a Patent, Part IV: Learn
The specification, including the abstract and claims, must have lines that are 1.5 or double-spaced in a single column of text. Written on only one side in portrait orientation. 8.5 by 11 inches with all margins of at least 3⁄4 inches except for a left side margin of at least 1 inch. The application pages must be numbered consecutively ...
Assignment (law)
An assignment does not necessarily have to be made in writing; however, the assignment agreement must show an intent to transfer rights. The effect of a valid assignment is to extinguish privity (in other words, contractual relationship, including right to sue) between the assignor and the third-party obligor and create privity between the ...
IP Protection in Poland: 6 Key Tips for Employers
2. Polish employers have the right to obtain employee patents—unless an agreement states otherwise. 3. IP assignment agreements can be legally enforced. 4. By default, contractors own the copyright to their work unless specified otherwise. 5. You have to localize IP ownership clauses to Poland. 6.