Patent Assignment Database: Everything You Need to Know
The Patent Assignment Database has all recorded patent information from August 1980 until now, added by the United States Patent and Trademark Office (USPTO).8 min read
What Is the Patent Assignment Database?
The Patent Assignment Database has all recorded patent information from August 1980 until now. Any time someone adds information to one of the patent records, the United States Patent and Trademark Office (USPTO) adds it to the database. However, it doesn't check to make sure that the new information is correct.
How Do Patent Assignments Work?
Assignments offer flexibility. Different people can acquire different rights to a patent. One person could have the patent assignment, but a prior owner could keep a license to use the technology for free.
An interested party could only look at these documents at the USPTO. They're not available online. The best practice is for the owner of a patent to show all current and previous assignments. This is a chain of title that starts with the inventor. The most recent entry should be the current owner.
Each license agreement should also have a record. If the current owner lacks this information, they should contact previous owners. Most assignments come from the patent attorneys of startups.
One ongoing issue is that many assignments are years or even decades old. Patent law could have changed in the interim. The owner should try to keep an assignment as current as possible.
The most likely omission to an assignment is the right to causes of action. It's important because this right gives someone the ability to sue for past damages. Inventors don't have to worry about the right to causes of action since prior infringement is impossible. Once patents change hands, it's a key concern.
Interested parties should also check assignments to see if any security interests exist. In rare instances, inventors do put patents up for collateral, generally in bank transactions. The assignments database will show this information.
What Happens If No Assignments Exist?
First time inventors and new startups often have no assignments. A potential investor should wait three months in such situations. That's because a person has three months to file an assignment. It's a rate/notice policy. An assignment that was filed sooner has priority.
The danger is that someone else earned the patent assignment during those three months. They simply haven't filed with the USPTO yet.
An older patent application without an assignment also has a requirement. The owner must file an assignment and wait three months to see if anyone else files an assignment. Assuming they don't, the assignment becomes valid.
A solid chain of title is important. It prevents infringement claims or questions of ownership.
What Are Inventorship Issues?
Probably the worst thing that can happen with a patent claim is that someone isn't listed correctly. These situations can lead to long, expensive legal battles. An attorney can defeat a patent by proving an incorrect listing of the inventors.
There are two types of inventorship issues. Sometimes people are left off the document. One or more people could be listed as inventors even if they had nothing to do with the actual invention. The other issue is that an inventor could exclude people from the listing who deserve inventor status.
Which Issues Arise From Having Too Many or Too Few Inventors Listed?
Inventor listings include some degree of politics. The owner of a company might expect an inventor listing for anything his employees create.
The opposite is also true. Some leaders are so generous that they credit a lot of employees as inventors, even if these workers added little to the project.
Problems arise when someone buys the company or acquires rights to the patent. The owner of the patent has to get approval from every inventor listed.
If this happens a long time after the invention, several of these employees might work for different companies now. An investigator must contact each of them to get approval. If a single person refuses, an affadavit could negate the entire patent.
Having too few inventors isn't as big a concern in most instances. The glaring exception is a startup accelerator company. These patents have only half the value. Many of these businesses work in tight quarters.
An employee from one startup could easily give advice to someone from a different firm. This advice could lead to a patent. The person from the second company would expect listing on the patent.
Whether the person is right or not doesn't matter. The fact that they believe it is enough to cause issues. Investors aren't interested in such patents since they appreciate the risk. The second person's claim could invalidate the patent, making it worthless.
Do Any Legal Issues Come Into Play?
Yes. For inventor claims, the safest tactic is to require employee agreements. These agreements are for patents and proprietary information. The contracts generally give the company ownership of an invention. This happens the moment the worker signs the contract.
The USPTO will accept this document as a an assignment, too. It's a preventative measure against inventors trying to take patent claims with them when they leave the company.
How Does the Patent Assignment Database Work?
The Patent Assignment Database has a search button that lets people find information about patents. The site shows assignments, which work almost the same way as a deed that shows the transfer of real estate. A person or business receives an assignment. This document lists the transfer of a patent.
Under the latest update, version 1.4, a person can search and download almost all patent information. A user can also download the original patent assignment and cover sheets. Before this update, people had to buy copies from the USPTO.
The current available searches on the Patent Assignment Database include:
- Assignee name
- Frame/reel number: The government stores patent assignment documents on microfiche. The reel number and frame number show the numbers for the specific reel and frame of the real documents.
- Patent number
The newest search features in version 1.4 include:
- Quick look-up: The user can enter one or more of the search terms above to find the exact document they want to read.
- Quick nav links
- Favorite views: A person can research Legacy Assignments on the Web (AOTW) to see Assignor and Assignee summaries and details.
The USPTO has changed the way it shows information on the Patent Assignment Database website. The earlier version showed ownership information. The updated version shows PDF images of the recorded documents. These include executed assignment documents. The new system is better since the public instead of the USPTO verifies ownership information. The USPTO simply displays the cover sheet record.
How Does a User Search the Patent Assignment Database?
The Patent Assignment Database is easy to search. It has an ordered setup that lets the user look up intellectual property (IP) assets.
The search engine lets users:
- Search for patents: Specific searches are possible. A user can find basically anything they want if they know how to look for it.
- Set mail alerts: A person can ask for email notifications when the system finds a certain patent listing or update. This immediate alert helps people in the patent industry become the first ones to know about a change that affects their industry.
- Receive alerts about patent assignment updates: A person may want to know when the status of a patent changes. Since the system records every update, a person can ask for alerts about any patents that they're watching.
- Research legal issues: One of the updates that the Patent Assignment Database tracks is lawsuits. When a lawsuit impacts a patent, the database updates the file. Someone researching a specific patent can view all of this information.
What Are the Benefits of Tracking the Patent Assignment Database?
A person who monitors the Patent Assignment Database can benefit greatly. Potential benefits include:
- Seeing technology trends: When a person notices several patent claims in the same industry, they can study it for potential growth. New advances in a field generally lead to economic growth.
For example, a discovery in digital advertising rules allowed Facebook to become one of the most valuable companies in the world. Someone studying the company's patent filings could have bought shares in Facebook at a low cost, making a lot of money over time. They also could have invested in other companies that would benefit from the sales growth of digital advertising.
- Ability to acquire IP and/or company: Patent filings hint at future developments in an industry. A business or investor with extra money can track the Patent Assignment Database to find the next big thing in a field.
Facebook, for example, saw Oculus Rift filings and decided to buy the company for roughly $2 billion. It now owns many of the most important virtual reality patents in the world. Had Facebook waited until later to buy, it might have had to pay a lot more for the same intellectual property.
- Understand company portfolio in greater detail: The various copyrights that a company owns are important to its business standing. By studying current patents and any additions, a person will have a greater understanding of a company's current and future financial positions.
Is Any Information Not Listed in the Patent Assignment Database?
The database records few patent licenses. While a person might want to know the names of every business that licenses a patent, the government doesn't deem this information important. So, no rule requires a person or company to list licensing usages.
This decision is good for businesses. Many licensing deals are confidential. A company would have to break that agreement to register the licensing agreement on the patent record. Some web search engines allow users to search every listed licensing instance, though.
How Does a User Find the Current Owner Information of a Patent?
The Public Pair link at the Patent Assignment Database has information about the current owner of a patent. The user can search for this information using any of the Application Number, Patent Number, or Publication Number.
One note about the process is that it's not always correct. The reporting of an assignment isn't always immediate. Until this happens, the database won't record changes on the patent record. As a safety measure, check a paid database. Otherwise, your best bet is to do a search in Google News.
How Does a User Search the Patent Assignment Database More Effectively?
The system isn't user-friendly. A person will need a lot of practice to master searches. A few tips for searching more effectively include:
- Remove employer assignments: Some employers have contracts that require patent assignments. These lead to pointless results when you do a search. You can remove these assignments with a single click. The results will seem less cluttered.
- Name changes: Corporations change their names from time to time. When this happens, they file the change with the USPTO. The outcome is that all of their patents will show misleading ownership changes. Do a search for "Change of Name" to remove those results from your search.
- Merges and acquisitions: The same issue occurs with these transactions. The patent technically changes hands but not in a meaningful way. Use the Conveyance button to remove "Change of Name" and "Merger" from your results.
- Security agreements: These transactions give the least useful results. Some companies use patents to secure loans. Until they pay the amount owed, the patent's ownership status lists with the wrong company, the money lender. In some cases, thousands of transactions display incorrectly. Remove "Security" from your results to avoid this information overload.
The patent assignment database underscores the difficulty of the patent process. Your best buy is to hire a top attorney to guide you through the process. Post your job on Upcounsel to find the best lawyer for your needs.