Key Takeaways

  • A patent assignment permanently transfers ownership of a patent or patent application from the original owner to another party.
  • There are multiple types of assignments: for issued patents, pending applications, or inventions with no application filed.
  • Assignments differ from licenses: an assignment is permanent, while a license grants temporary rights.
  • Proper documentation, accurate inventor information, and USPTO filing are crucial to making a patent assignment valid.
  • Common mistakes include not recording the assignment, errors in legal names, and overlooking existing security interests.
  • Deadlines matter: assignments must typically be filed with the USPTO within three months of signing to be enforceable against third parties.
  • A patent application assignment allows an assignee to become the official applicant and ultimately own the issued patent if granted.

Patent Assignment: What Is It?

A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue others for making or selling the invention or design.

There are four types of patent assignments:

  • Assignment of Rights - Patent Issued: This is for patents that have already been issued.
  • Assignment of Rights - Patent Application: This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.
  • Assignment of Intellectual Property Rights - No Patent Issued or Application Filed: This is for unregistered inventions with no patent.
  • Exclusive Rights

Understanding Patent Application Assignment

A patent application assignment specifically covers the transfer of rights to an invention that is still pending at the United States Patent and Trademark Office (USPTO). Unlike an issued patent, a pending application does not guarantee enforceable rights until granted, so its value can vary depending on the likelihood of approval. Still, assignments of applications are common in corporate transactions, acquisitions, and employment-related transfers where the invention has strong commercial potential.

Under the America Invents Act (AIA), an assignee can be listed as the patent applicant rather than the individual inventor. This simplifies ownership issues for companies, ensuring the entity, rather than the employee-inventor, holds rights to the application and any resulting patents.

Advantages of a Patent Assignment

Assignees don't create a unique invention or design. They also don't go through the lengthy patent process. They simply assume exclusive rights to intellectual property.

  • Profit Potential

Many patents cover intellectual property that can earn the owner money. A patent owner can charge a lump sum sale price for a patent assignment. After the transfer, the assignee can start to earn profits from the patent. Both original owners and assignees can benefit from this business arrangement.

Disadvantages of a Patent Assignment

  • Too Many or Not Enough Inventors

Patents can have multiple owners who invented the product or design. Sometimes patents list too many or not enough inventors. When this happens, owners can argue about an incorrect filing. This kind of dispute can make a patent assignment impossible.

  • Limited Recourse

Older patents may already have many infringements. Not all patent assignments include the right to sue for past infringements. This is known as the right to causes of action. This can cost the assignee a lot of potential profit.

When to Use a Patent Assignment

Patent assignments are often used in scenarios where:

  • Business acquisitions or mergers require transferring entire IP portfolios.
  • Employee inventions must be assigned to the company under employment agreements.
  • Investors or buyers seek full control of the intellectual property for commercialization.
  • Collaborative research leads to inventions that need centralized ownership for licensing or enforcement.

For startups, using a patent application assignment early ensures the company—not individual inventors—owns the intellectual property, which strengthens fundraising efforts and avoids ownership disputes later.

Examples of What Happens When You File a Patent Assignment vs. When You File a Patent License

  • When You File a Patent Assignment

The patent owner changes permanently. You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public.

Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits.

  • When You File a Patent License

The patent owner doesn't change permanently. Most licenses have a time limit. At the end of the period, the original owner takes control again. Licensing information isn't always available through an online USPTO search. Contact the recordation office directly to get information about patent licenses.

The licensee can assign rights to another person or company. This adds another layer of ownership over the intellectual property.

Many owners charge royalties for a patent license. The licensee pays royalty fees throughout the license period. If the royalty fees are high and the license period is long, a patent assignment may be a better choice for earning the new owner more money.

Common Mistakes

  • Not Filing an Assignment Document

A verbal agreement is not official. File a patent assignment to change patent ownership.

  • Taking Action Before Filing

The assignee shouldn't make or sell the invention before the patent assignment is official. If an error or another problem happens, this could be patent infringement.

  • Making a Filing Error

Patent assignments are official documents. The assignee's name must be legal and correct. Before filing, check the spelling of the assignee name. If the assignee is a business, confirm the legal name. Many patents have more than one owner. List all names on the assignment.

  • Misidentifying the Patent

Include as much information about the patent as you can. List the patent number and title. Describe the intellectual property completely.

  • Not Searching for Security Interests

Patents can be collateral. A bank or another party can file a security interest in a patent, and this can limit how much an assignee can earn from a patent. Check for security interests before filing a patent assignment.

Many businesses file patents, as this is part of a business plan, and it's especially common for startup businesses. Inventorship problems can happen if employees file patents instead of the business.

Often, employees have an obligation to assign inventions to a company. This is true if they developed the invention on the job.

To avoid confusion, require employees to sign a proprietary information agreement. This automatically assigns inventions and designs to the business. Other options include signing an automatic assignment or an explicit assignment. These all clarify patent ownership.

  • Not Being Notarized

Make sure all official documents concerning your patent are notarized. There is a huge legal advantage to being notarized. It makes it so that your documents will be accepted as correct until it is proven otherwise. If you can't get your documents notarized, gather two witnesses. Have them attest to the signatures.

Requirements for a Valid Patent Assignment

For a patent application assignment to be legally valid and enforceable, several requirements must be met:

  1. Written Agreement – The assignment must be in writing and signed by the assignor.
  2. Clear Identification – The agreement must reference the specific patent or application by number, title, and filing date.
  3. Consideration – Some form of compensation or value exchange should be documented, even if nominal.
  4. Execution Formalities – Signatures should be notarized or witnessed to strengthen legal enforceability.
  5. USPTO Recordation – The assignment must be recorded with the USPTO within three months, or else it may not be enforceable against subsequent purchasers.

Failure to meet these requirements can leave ownership rights vulnerable, potentially invalidating the transfer.

Deadline

You have to file a patent assignment within three months of signing the form. If you don't, the assignee could lose ownership rights.

Where Do I Record a Patent Assignment?

If you own a U.S. patent, you must record your patent assignment with the United States Patent and Trademark Office (USPTO). For patents granted outside the United States, the assignment should be filed with the appropriate national patent office in that country.

What Happens If I Can't Get a Signature from the Inventor?

If you are unable to obtain the inventor’s signature, the patent office requires proof that the person pursuing the application has the legal right to do so and that the inventor cannot be reached. To establish this, you may need to provide documents such as the employee agreement, the original assignment, and any other evidence of ownership rights.

If the inventor has passed away, the patent office will contact the executor of the estate or an heir. If the inventor refuses to sign or cannot be located, the office will require a declaration from the individual attempting contact. Evidence of communication attempts—such as letters, emails, or faxes—may also be reviewed before the application can proceed.

Do I Need to File a Patent Assignment if the Owner's Name Has Changed?

A new patent assignment is not required if the owner’s name has changed due to a simple name change of a person or a business. However, if the change results from a corporate merger or acquisition, you may need to file a new assignment to properly reflect the transfer of ownership.

What If I Make a Mistake on My Patent Assignment?

Errors in a patent assignment cannot be corrected directly. Instead, the assignment must be reassigned back to the original owner. Once ownership is restored, a corrected assignment can then be properly filed to reflect the accurate information.

How Much Does a Patent Assignment Cost?

The USPTO charges a $25 fee to record a patent assignment. Filing electronically does not add extra cost, but submitting the assignment on paper carries an additional $40 fee.

Should I Hire a Lawyer for a Patent Assignment?

It is strongly recommended to hire a lawyer to assist with patent assignments. An attorney can ensure that all documents are prepared and filed correctly, reducing the risk of costly errors. A properly drafted and recorded assignment not only strengthens the enforceability of your patent rights but also helps avoid future disputes that could limit profits or create legal liabilities.

Steps to File a Patent Assignment

1. Fill Out a Recordation Form Cover Sheet

The Recordation Form Cover Sheet is an official USPTO document. This includes the names of the assignor(s) and the assignee(s). It also includes the patent title and number.

2. Complete a Patent Assignment Agreement

The patent assignment agreement should list the assignor(s) and the assignee(s). It should state that the assignor has the right to assign the patent. It should also describe the intellectual property clearly and completely. It should also explain any financial or other transactions that have to take place. This includes a description of the lump sum payment.

3. Sign the Patent Assignment Agreement

All patent owners and assignees must sign the patent assignment agreement.

4. Submit the Patent Assignment

Finally, submit the patent assignment with the USPTO. You have to pay the assignment fee at this time.

Practical Tips for Filing Patent Assignments

To avoid costly errors during the assignment process, keep the following in mind:

  • Check for Existing Interests – Ensure no liens, licenses, or security interests are already tied to the patent.
  • Use USPTO’s Electronic Filing System – Electronic submissions are faster, reduce clerical errors, and provide immediate confirmation.
  • Coordinate with Employment Agreements – If employees are inventors, verify their contracts include obligations to assign inventions to the company.
  • International Considerations – If filing globally, additional assignments may be required to comply with foreign patent office rules.
  • Maintain Internal Records – Beyond USPTO filing, businesses should keep detailed internal records of assignments for audits, due diligence, or litigation.

These practical steps can prevent disputes and ensure the assignment is recognized both legally and commercially.

Frequently Asked Questions

1. What is the difference between a patent license and a patent assignment?

A license grants temporary rights to use an invention, while an assignment permanently transfers ownership.

2. Can a company be the applicant for a patent application?

Yes. Under the America Invents Act, an assignee can be listed as the patent applicant if rights have been assigned.

3. Do I need to record a patent assignment with the USPTO?

Yes. Recording within three months ensures the assignment is enforceable against third parties.

4. Can partial rights in a patent be assigned?

Yes. An assignor may transfer a percentage of ownership interests, but these must be clearly defined in the agreement.

5. What happens if a mistake is made on a recorded assignment?

Corrections require a new assignment—first back to the original owner, then reassigned with corrected information.

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