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Illinois, Ivy Patent Law .com, STEVEN IVY P.C., law firm, patent, patent interference, patent opinion, patent license, patent assignment, trademark assignment, copyright assignment, patent assignment, IP assignment

Assignments are used

to transfer ownership

of various IP assets.

To be fully effective,

IP assignments

must be recorded

with the USPTO.

FAQ Assigning Your Patent
...recording patent assignment with the PTO
What is the difference between patent assignment and patent license?

Assignments are utilized to transfer some form of intellectual property ownership between the parties. Thus, you can transfer, in part or in its entirety, an existing patent, provisional patent application, regular patent applications, and even reissue application. Licenses, on the other hand, are temporary in nature and as such could be viewed as leasing agreements. Licenses are utilized by inventors that want to give another party permission to manufacture and sell their invention, but without transfer of ownership.

Do I have to assign my invention to my employer?

It depends on whether you are obligated contractually to do so. Under the law, every patent application must be filed in the name of the true inventor. Accordingly, companies that engage in research and development ensure that their employees execute an assignment. Typically, the requirement to execute an assignment on behalf of your employer, would be included in preceding employment agreement. If such agreement doesn't exit, you can try to negotiate a licensing agreement with your employer.

Can I assign a patent after issuance?

Yes. Although many assignments involve patent applications, assignment of an existing patent is a perfectly acceptable practice. As mentioned above, you can transfer, in part or in its entirety, an existing patent, or a provisional patent application, a regular patent application, and even a reissue application.

Should assignments be recorded with the PTO?

Yes. To be fully effective an assignment must be recorded with the Patent and Trademark Office. In fact, when it comes to recording assignments, time is of the essence because the first person to assign wins. The recording process is relatively simple and can be completed online.

Do I need inventor's signature to record an assignment?

No. Although the signature will not be required, it most certainly will not be ignored. The Patent and Trademark Office will proceed with the process of assignment, but only you establish to their satisfaction that the inventor could not have been reached.

Is U.S. assignment applicable abroad?

Not likely. First and foremost, there are many loopholes and unique assignment requirements applicable to each developed country. Although an argument can always be made, at the formal hearing or in court, assignment in the U.S. will probably not be effective abroad. Accordingly, the best choice of action would be to record your assignment in a foreign country of your choice in accordance with the applicable laws.  

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