the patent rights, a search through the uspto database may be required. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp. A patent is only as valuable as it is enforceable, and ownership is a key element of enforceability. Assignments must: Be in writing unlike some other contracts, oral assignments or oral agreements to assign patent rights are rarely enforceable; Clearly identify all parties recite names, addresses, and relationship of the assignor(s) and assignee; Identify the property clearly state patent or patent application number. Although proof of the assignment is not required at the time of filing, the assignment document must be filed by the time that the issue fee is due for the application.
For this reason, each assignment should be reported to the uspto. When the inventor assigns his patent rights to a third party, he gives up his patent rights in their entirety to the third party. (Assignments can also be recorded electronically.) You can learn more about recording assignments at the uspto website. Patent ownership assignments have several formal requirements to be considered valid. . Patents can provide important commercial benefits (discussed in detail in our companion piece. For example, if an assignor were to subsequently improperly assign to another purchaser that is unaware of the previous assignment and state essays the prior assignment had not been recorded with the uspto, the subsequent purchaser may be able to successfully claim ownership. In contrast, a license only grants another person or entity a portion of the patent rights for a limited period of time. What Every Inventor Needs to Know About Business Taxes by Attorney Stephen Fishman. In this way, there is only one entity that can control the licensing and assignment of the patent without conflict. Now, as a result of passage of the America Invents Act (AIA the assignee (the person or company to whom the inventor assigned rights) can now be listed as a the patent applicant (the obligated assignee). Often times, inventors are obligated under their Employment Agreement to assign their patent rights to their employer.