Patent Assignment Agreement
The United States' intellectual property laws define patents as a piece of property. The patent can be owned, typically by the inventor, given to someone, donated and even bequeathed to descendants. The U.S. Congress created a tool, called an assignment agreement, that the U.S. Patent and Trademark Office (USPTO) activates to transfer the ownership rights of a patent to another person or to an organization.
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Patent Assignment Agreement
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The agreement identifies the assignee, who may represent a person, several individuals or a corporation. The document specifies the patent number to be assigned and the geographical scope of the transferred rights. The assignment can be for all the states of the United States or a region of the U.S. The patent displays the name of the assignee below the name of the inventors.
Legal Meaning
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According to the USPTO, the assignment agreement gives the power to the recipient to block anyone or any corporation from using, manufacturing or offering for sale anything based on the intellectual property described in the patent. Someone needing to tap into the intellectual property must sign a business contract that grants financial returns to the assignee. Before an assignment agreement is approved, the recipient typically runs an investigation to ensure that the patent to be assigned is not superseded by a broader patent. Risk of infringement would diminish the value of the transferred intellectual property.
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Execution of the Agreement
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An "instrument in writing" formalizes the assignment, according to the USPTO Manual of Patent Examining Procedure. Any person in the United States with the power to administer an oath can legally write a certificate of acknowledgement of assignment marked with an official seal.
Recording of the Assignment Agreement
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In the patent application process, the inventor can indicate the name of the assignee just before filing with the USPTO, explains Mike Ervin, a former intellectual property officer and an executive at DTM Corporation. Alternatively, the USPTO accepts to add the assignee name later in the life of the patent, pending the payment of an assignment to the USPTO.
Complications
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Because a patent can have multiple inventors and several parties under the assignment, the ownership map can become complicated, Ervin says. Assignees can license their rights to others. Patent attorneys can best rationalize the conditions of assignments or licenses to ensure that all involved around the intellectual property can still operate successfully.
License vs. Assignment
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A license is more restrictive than an assignment. A license typically gives rights for a limited time. It may also apply to certain market segments or just a region of the U.S. The assignee has the freedom to license the intellectual property to more licensees as long as the transferred rights have not been given to another party.
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