How to File a Patent Application Under the Name of a Corporation

Assignment of a patent can be done when filing the patent application.

While a patent is always filed under the name of the inventors, it is possible to assign a patent to a corporation. By making this assignment, the inventor gives the corporation a complete interest in the patent application. Often, hiring contracts will include assignment clauses in which the prospective employee agrees to assign all inventions to the employer. Don't worry if this was not taken care of at the time of hiring. As long as all the inventors are willing to assign a patent, the patent can be assigned.

Instructions

1. Determine if your invention was already invented. This determination is called a prior art search. Concentrate on inventions made by your competitors, because they will most likely be the source of much of the applicable prior art. Thoroughly examine the literature regarding inventions that are similar to yours. Search the database of the U.S. Patent and Trademark Office (PTO). Focus on how you will distinguish your invention from these inventions.

2. Draft your patent application. A patent application contains a specification, claims and (usually) one or more drawings. According to the Manual of Patent Examining Procedures, the specification must include everything that a person skilled in the art would require to make and use the invention. Just as patent drafting is a very stylized type of writing, patent drawings must conform to a long list of requirements. When you are done, draft the application and claims, and save your work as a text file, a PDF or a PCT ZIP file.

3. Log on to the PTO's electronic file service (EFS). This can be found by clicking on the link "Electronic Business Center," found on the left-hand side of the PTO's web page (see Resources). You will have a choice to file your patent as a registered or unregistered user. Filing as a registered user is preferred because you will be able to save work and return to it later.

   Download the necessary forms for obtaining your customer number and authorization code. It may take the PTO a few days to process these requests, but these numbers can be used again when you file future patents.

4. Return to the EFS portal and click on the "Registered User" tab. Enter your customer number and authorization code. Complete the application data sheet by entering all the information related to the inventors and patent application.

5. Click "Continue" and go to the "Attach Documents" tab. Continue clicking through the "Upload and Validate," "Calculate Fees" and "Confirm and Submit" tabs. Follow the instructions on every tab before proceeding to the next one. Be sure to click on "Continue" on the bottom of the page before moving between tabs. Returning to previous pages without clicking "Continue" will result in the loss of any information you have entered.

   After you have completed this process, you will be given a confirmation number for your records along with a U.S. Patent Application Serial Number. Print and keep this information in a save place.

6. Return to the main screen for the EFS portal and click on the link for the "Electronic Patent Assignment System." You will be requested to specify the type of conveyance. Click on "Assignment." Proceed to the next screen and enter contact information. You will receive a confirmation email from the PTO that you must respond to before continuing.

   Enter the U.S. Patent Application Serial Number and the name of the corporation. You will be given a confirmation code when you have finished filling out the screen correctly.

Tips & Warnings

• Working with a patent agent or an attorney can be very helpful when drafting the specification.

References

• USPTO: Assignments and Licenses
• USPTO: Form-Fillable PDFs
• USPTO: Guide to Filing a Utility Patent
• USPTO: Process for Obtaining a Utility Patent
• Metropolitan Corporate Counsel: Patent Assignments

Resources

• USPTO: Guidelines