Patent Assignee Definition
The United States' intellectual property laws treat patents as properties that can be owned, sold or passed on to others. The owner can bequeath his patent to his descendants. The U.S. Congress developed a mechanism, called an assignment, that the U.S. Patent and Trademark Office (USPTO) can exercise to transfer the rights of an inventor to a second person or to a company.
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Patent Assignee
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The patent assignee is a person, a group of persons, or an organization that receives ownership rights of the intellectual property, according to the U.S. Patent and Trademark Office. The formal and legal transfer can be for rights covering the whole United States or for partial assignment to an area of the country. The name of the assignee appears below the name of the inventor on a patent.
Legal Power
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The assignment grants the power to legally block anyone from using, manufacturing or selling a product consisting of intellectual property covered by the patent, unless a contractual agreement is in place to compensate the assignee for access to the patent rights, the USPTO says. Frequently, someone interested in becoming an assignee will conduct an investigation to ensure that the patent is not superseded by another, dominant patent or presents legal issues such as a risk of infringement.
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Transfer Mechanism
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U.S. patent laws reauire the presence of an "instrument in writing" to formalize the assignment. The USPTO Manual of Patent Examining Procedure (35 USC § 261) explains that anyone in the United States who is authorized to administer an oath has the legal power to transfer a patent to an assignee by writing a certificate of acknowledgement of the assignment and apposing an official seal.
Assignment Record
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Two paths will trigger the recording of the assignment. You can document the transfer and insert the assignee name in the patent description, after an assignment fee is paid to the USPTO and the appropriate formal documentation has been submitted. The second route comes early in the patent application process, when the applicant can submit an assignee name just before filing the intellectual property with the USPTO, says Mike Ervin, an executive and a former intellectual property officer at DTM Corporation.
Complications
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The ownership landscape becomes complicated in the presence of multiple inventors and multiple partial owners, Ervin says. One of the inventors can assign her rights to an assignee, who then will have partial ownership, sharing it with the other inventors. In another scenario, an assignee can further transfer ownership to a third party, but is limited to the intellectual property rights that he acquired previously. Hiring the services of patent lawyers can protect the rights of every party involved.
Assignee vs. Licensee
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A license to a patent gives some rights that may give access for a limited time, restrict the usage to a set of applications, or open the door to a smaller geographical area, the USPTO says. The patent owner agrees to not sue the licensee for using, manufacturing or selling the patented idea as long as the licensee honors the contractual obligation of the licensing contract. In the case of an exclusive license, the owner cannot compete with the licensee within the territory defined in the contract.
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