partial assignment of patent rights

MPEP 301 Ownership/Assignability of Patents and Applications

Ninth Edition of the MPEP, Revision 07.2022, Last Revised in February 2023

MPEP Chapter Index Chapter 300 : Ownership and Assignment

| Next: §301.01

301    Ownership/Assignability of Patents and Applications [R-10.2019]

35 u.s.c. 261 ownership; assignment..

Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.

Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent.

An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

35 U.S.C. 262 Joint owners.

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

37 C.F.R. 3.1 Definitions.

For purposes of this part, the following definitions shall apply:

Application means a national application for patent, an international patent application that designates the United States of America, an international design application that designates the United States of America, or an application to register a trademark under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise indicated.

Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.

Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application, patent, or registration.

Office means the United States Patent and Trademark Office.

Recorded document means a document which has been recorded in the Office pursuant to § 3.11 .

Registration means a trademark registration issued by the Office.

I.    OWNERSHIP

Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1) . Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same (e.g., existence of another patent owner with a dominant patent, failure to obtain FDA approval of the patented invention, an injunction by a court against making the product of the invention, or a national security related issue).

For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a) . For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993). A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 .

II.    ASSIGNMENT

"Assignment," in general, is the act of transferring to another the ownership of one’s property, i.e., the interest and rights to the property. The U.S. Patent and Trademark Office cannot explain or interpret laws that govern assignments and related documents, nor can it act as counselor for individuals. Assignments and other documents are contracts that are governed by the relevant state or jurisdictional law.

In 37 CFR 3.1 , assignment of patent rights is defined as "a transfer by a party of all or part of its right, title and interest in a patent [or] patent application...." An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application. In order for an assignment to take place, the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inherent in the right, title and interest in the patent or patent application. 35 U.S.C. 261 requires transfer of ownership by an assignment to be in writing. See Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 859 (E.D. Va. 2016).

III.    LICENSING

As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use. A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.

An exclusive license may be granted by the patent owner to a licensee. The exclusive license prevents the patent owner (or any other party to whom the patent owner might wish to sell a license) from competing with the exclusive licensee, as to the geographic region, the length of time, and/or the field of use, set forth in the license agreement.

A license is not an assignment of the patent. Even if the license is an exclusive license, it is not an assignment of patent rights in the patent or application.

IV.    INDIVIDUAL AND JOINT OWNERSHIP

Individual ownership - An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property. Alternatively, it occurs where all parties having ownership interest (all inventors and assignees) assign the patent property to one party.

Joint ownership - Multiple parties may together own the entire right, title and interest of the patent property. This occurs when any of the following cases exist:

• (A) Multiple partial assignees of the patent property;
• (B) Multiple inventors who have not assigned their right, title and interest; or
• (C) A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest.

Each individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.

V.    MAKING THE ASSIGNMENT OF RECORD

An assignment can be made of record in the United States Patent and Trademark Office (Office) in two different ways, for two different purposes. The differences are important to note:

• (A) An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment. It should be noted that recording of the assignment is merely a ministerial act; it is not an Office determination of the validity of the assignment document or the effect of the assignment document on the ownership of the patent property. See 37 CFR 3.54 , MPEP § 317.03 , and Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 862-3 (E.D. Va. 2016). For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.11 . See 37 CFR 3.81(a) .
• (B) An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding). This step may be necessary to permit the assignee to "take action" in the application, patent, or other patent proceeding under the conditions set forth in 37 CFR 1.46 and 37 CFR 3.81(a) and MPEP § 325 (for applications filed on or after September 16, 2012) or under the conditions set forth in pre-AIA 37 CFR 3.73 and MPEP § 324 (for applications filed before September 16, 2012). Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.

Additionally, for applications filed under 35 U.S.C. 111(a) , 363 , or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration ("assignment-statement"), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration. See 35 U.S.C. 115(e) , 37 CFR 1.63(e) , and MPEP §§ 302.07 , 317 , and MPEP § 602.01(a) .

Procuring U.S. Patents without a Signed Assignment of Patent Rights

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights.  Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed.  This article summarizes the requirements for filing and prosecuting a U.S. patent application filed post-America Invents Act (AIA) without a patent assignment and identifies pitfalls when establishing ownership of patent rights for patent prosecution.  Inventors being unavailable may also complicate obtaining the declarations required for U.S. patent prosecution, but solutions are available as we previously discussed here .

Need for an Assignment

For a patent to issue to an assignee, the United States Patent and Trademark Office (the “USPTO”) must be made formally aware of the assignment so that the assignee is recognized as the patent applicant.  Filing an Application Data Sheet (ADS) for a patent application identifying the assignee as the applicant provides informal notice to the USPTO.   MPEP § 301 discusses ownership/assignability of patents and applications, including formal assignment recordation at the USPTO.  Recording an assignment may be necessary to permit the assignee to “take action” in the patent application during prosecution and for the patent to issue in the name of the assignee.   37 CFR 1.46 ; MPEP §§ 301 , 302 , 605 .  In other words, assignees may face obstacles prosecuting a patent without an executed assignment.  The assignment(s) must transfer the entirety of patent rights from each of the inventors to the assignee, e.g., corporation, partnership, university, government entity, etc.  There can be multiple assignees if different inventors assign their rights to different assignees, a situation that results in two or more partial assignees that must each be identified to the USPTO as an applicant.  MPEP § 301 .

As only one patent assignment is required per inventor per patent application, subsequent applications claiming priority may often rely on an earlier assignment (depending on the assignment’s particular language).  If new subject matter is introduced in the application being filed, such as in a continuation-in-part application, another assignment may be required.

Persons who may file a Patent Application without an Assignment

Fortunately, applicants may procure a patent even if an inventor is not available to sign an assignment before application filing or during prosecution before payment of the issue fee. 

A person to whom the inventor is under the obligation to assign the invention may file a patent application and be identified as the applicant.  An assignment can then be subsequently executed and the USPTO notified as discussed above.  Alternatively, other documentary evidence of ownership, such as an employment agreement, invention disclosure form, or other documentation, can be recorded with the USPTO in lieu of a signed assignment document.  37 CFR 1.46 .  Employment agreements may contain language stating that the inventor assigns all rights, title, and interests in any invention developed while employed by the employer.  In some instances, the employment agreement may affirmatively state that the employee is under an obligation to assign the invention to the employer.  An invention disclosure form may contain language stating that the inventor’s signature on the form acknowledges the inventor’s assignment of and/or obligation to assign any rights, title, and interest in the invention disclosure to the employer.  If the invention disclosure form includes the inventor’s signature, this may be sufficient evidence that the employer is an obligated assignee.  37 C.F.R. 1.46(b)(1) .  It is important to examine any documentary evidence of ownership before recordation to identify any information (e.g., industry trend language, discussion of prior art, personal information of an employee, etc.) that may require redaction before recordation and/or may make public recording of the documentary evidence an undesirable option for the applicant.

Also, a person who shows sufficient proprietary interest in the matter may file a patent application and be identified as the applicant upon showing that such an action is appropriate, with the resulting patent being issuable in the applicant’s name.  37 CFR 1.46 .  If filing a national stage application, the applicant must have been identified in the international stage of the international application or as the applicant in the publication of the international registration. 

Showing Sufficient Proprietary Interest or Obligation to Assign

As provided in 37 CFR 1.46(b)(2) , “[i]f the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.”  Additionally, as stated in MPEP § 409.05 , “[t]he ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.”

Showing sufficient proprietary interest requires “proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”   37 CFR 1.46(a) ; 37 CFR 1.424 .  Showing sufficient proprietary interest is discussed in MPEP § 409.05 and may be established in various ways depending on the circumstances.  MPEP § 409.05 states that

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant.  The facts in support of any conclusion that a court would award title to the 37 CFR 1.46 applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same.  The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved.  A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

Remember that an applicant as a person who otherwise shows sufficient proprietary interest in the matter must submit the required petition, fee, and information prior to paying the issue fee as set forth in 37 CFR 1.46 .

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights even without execution of a signed assignment by an inventor.  Before doing so, however, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

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• October 27, 2020

Viewpoint Topics

• Intellectual Property
• Patent Prosecution & Strategic Counseling

Professionals

Christina sperry, mark d. hammond, related practices.

• Patent Prosecution

Assignment of Patent Rights

The potential value of patents, or patent applications, cannot be understated. Only the owner of a patent has the exclusive right to exploit its value to exclusion of all other parties. Therefore, securing ownership of a patent and its associated rights can be very important to a business; and the failure to exercise good practice in acquiring or transferring patent rights can materially impact a business’ bottom line.

This article will briefly set out some good practice guidelines to keep in mind when transferring rights in a patent, or patent application – whether acquiring or relinquishing patent rights.

What is a Patent, or Patent Application, Assignment?

The transfer of a patent, or patent application, places the assignee in the position of the assignor. This provides the assignee with the positive rights (such as the right to exploit the invention), as well as the negative rights (such as the right to prevent others from exploiting the invention).

The negative rights come with the right to seek remedies preventing unlicensed exploitation of the invention and even confiscation of infringing articles.

Once an assignment takes place, the assignor relinquishes its rights to the patent or patent application. The assignor is free to license the patent back from the assignee, but no longer has the ability to manage the patent. It is therefore important to note that a partial assignment of a patent, or patent application, is not possible – i.e. an assignor may not assign the right to use the invention to one party while it assigns the right to manufacture to another party. Dividing up patent rights can instead be effected by providing partial licenses to the patent.

When assigning the patent or patent application it is important to cover all aspects of the transfer in a written instrument, known as a Deed of Assignment. The Deed of Assignment should also ensure that the patent or patent application is transferred free of any encumbrances, such that the holder receiving the rights becomes the holder without potential exposure to third parties which may have a legal right to the patent.

A Deed of Assignment should be filed with the patent office in the country in which the patent or patent application has been filed. The assignment is then recorded in the patent office register and may be viewed by third parties. Failure to record the assignment may limit its effects against third parties.

Assignment of Patent applications

The first owner of any invention is usually the named inventors themselves. Once the invention is reduced to writing and filed as a patent application, the individual inventor may assign the application and its rights to any interested party or parties – both individuals and/or companies.

In most cases, for a Deed of Assignment to be effective, it needs to be made to writing, identify the invention, contain details of the patent application, set out the rights to be assigned, and duly executed by the assignor(s). Most jurisdictions in the MENA region will also require the document be notarised and/or legalised.

If the assignment is incomplete or unclear, by not expressly identifying the invention or application to be assigned, the assignor might not be able to receive the full ownership and title of the invention.

Assignment between Employees and Employers

While most patent and/or labour laws in the MENA region set out the cirumstances in which an employer will own an invention that was created by an employee during the ordinary course of their employment, the laws do not usually cater for all scenarios.

Accordingly, a good approach to ensuring that an employer is entitled to own an invention created by an employee is to include a robust assignment clause in an employment agreement. The employee, by signing their employment agreement, then agrees contractually to the assignment of any rights they may have in an invention created during the course of their employment.

The clause should specify under which circumstances the employee is entitled to retain ownership of an invention, and when the passing of those rights to the employer is expected. An example of passing rights is where the employee is employed to develop and create new products as part of its employment, or when the invention has been created using company resources. Instances where the assignment of rights may not be required would be when the invention is created outside of company time, and preferably is not concerned with the business of the company.

It is also advisable that universities, and other higher learning or research institutions, specifically point out the requirement to assign rights to inventions created using the institution’s resources.

By not clearly defining the obligation to assign rights from the outset, the company or institution runs the risk of losing any interest to the invention.

The same may be said for consultant-based or part-time contracts, where the employee is employed for a limited period of time, usually with the express intention to collaborate for the purpose of achieving some sort of future, finite goal. In such circumstances the collaboration between company and consultant may result in the creation of an invention, unique and different to the set-out goals. While some employment contracts may cover the assignment of inventions between employer and employee, many consultant contracts typically overlook the necessities of such clauses.

Using a clause which identifies inventions created using a company’s resources usually have the effect of covering most employment and collaboration situations.

However, it is always a good idea to have the parties consent to the completion of additional assignment documents at the time filing patent applications. Attempting to assign rights from ex-employees may prove difficult and expensive, especially when the employee has moved away or becomes unreachable. Additionally, the passing of an inventor prior to adequate assignment also raises issues. In order to avoid these complications, providing assignments in addition to clauses in employment contracts, is always advisable.

Companies, especially those dealing in research and development, should take care to investigate whether a new employee is still under an existing obligation with a previous employer to assign any inventions they may create, even while not directly under their employment. Certain employment contracts may include enduring clauses which relate to inventions created using the knowledge and experience they have gained with the previous employer. If a presumption may not be rebutted that the invention was created as a result of the previous employer’s influence, the new company may not be entitled to the invention.

Assignment of Patents

An assignee of a patent would usually expect to be able to litigate for acts of infringement which took place prior to taking ownership of the patent. However, it should not be assumed that such a right is part and parcel of the assignment. The terms as to who is entitled to bring an infringement action under the patent should be expressly contained in the Deed of Assignment. If such a clause does not exist, an assignee could find themselves having fewer rights than they intended, as well has an inability to litigate for past or continuing infringers.

Further, an assignor should provide a warranty to the assignee that it is not aware of any acts of infringement and that no infringement matters in relation to the patent are currently pending. Further, it is also advisable to include a clause indemnifying the assignee against any potential matters which may arise after the transfer of the patent.

It is important to ensure that all the requirements are properly met when preparing, executing and recording an assignment of a patent or Patent application. Failure to do so could result in the loss of rights and potential exposure to third parties.

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29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

• Intellectual Property
• Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”). 

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent. 

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But  under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP,  implement strong hiring policies  that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an  employment agreement  that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

• Advance assignment of any IP created while employed by your company, or using your company’s resources
• An obligation to disclose any IP created while employed by your company, or using your company’s resources
• An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
• An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing  invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include  incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

• Independent contractors:  Some inventors may be self-employed, or they may be employed by one of your service providers.
• Joint collaborators:  Some inventors may be employed by, say, a subsidiary or service company instead of your company.
• Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should  also  get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

• The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
• Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you  can  execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

• Be in writing:  Oral agreements to assign patent rights are typically not enforceable in the United States
• Clearly identify all parties:  Include the names, addresses, and relationship of the assignor(s) and assignee
• Clearly identify the patent being assigned:  State the patent or patent application number, title, inventors, and filing date
• Be signed by the assignors
• Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases. 

So the patent owner (the Assignee) should should record the assignment through the  USPTO’s Assignment Recordation Branch . They can use the  Electronic Patent Assignment System (EPAS)  to file a  Recordation Cover Sheet  along with a copy of the actual patent assignment agreement.

They should submit this paperwork  within three months  of the assignment’s date. If it’s recorded electronically, the USPTO  won’t charge a recordation fee .

Need to check who owns a patent?  The USPTO website  publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a  continuation-in-part , or in a non-provisional application that adds new matter to a  provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an   employee agreement ,  company policy ,  invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation. 

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An  experienced patent professional  can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments —  contact us now  to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

Don't miss a new article. Henry Patent Law's Patent Law News + Insights blog is designed to help people like you build smart, scalable patent strategies that protect your intellectual property as your business grows. Subscribe to receive email updates every time we publish a new article — don't miss out on key tips to help your business be more successful.

Patent Ownership in the United States - Best Practices to Preserve Your Rights

Written by: andrew berks.

The issue of who actually owns a patent or pending patent application is obviously very important. This blog post will briefly explain how patent ownership works under US patent law, so inventors, managers, and other non-experts can better understand this important topic when working with a patent attorney.  

Ownership Overview

Patents are a form of intellectual property. All property (including patents) has an owner, which may be an individual (i.e., a person), or a group of people, or a corporate owner. A corporate entity can be a limited liability company (LLC), a corporation (S corp or C corp), a partnership, or any other corporate entity allowed by the law of any state.   Much of patent ownership is analogous to the ownership of real property or ownership of things like cars. Just like with any property, patents can be bought, sold, and licensed (analogous to renting a property). Of course, there are differences – mainly because patents are intangible. You can’t put a patent in your garage. So lets discuss how patent ownership works and best practices.  

Default – Patents are Owned by the Inventors

By default, US patents are owned by the inventors if no other action regarding ownership is taken. All patents and patent applications require at least one inventor, so this requirement is always met from the time of filing.   Leaving patents in the name of the inventors is not necessarily a problem, but a best practice is to transfer the ownership to a corporate entity (see discussion of patent assignments below). Here are some issues with leaving patents in the name of the inventors:

• For a single inventor, if the inventor dies or becomes disabled, the ownership of the patent becomes questionable. The patent may become subject to a probate proceeding.
• For a group of inventors, each person owns an undivided equal share of the patent. That means that if there are, say, four inventors, each inventor owns 25% of the patent, and each inventor can do whatever they want with that share. For example, one inventor/owner could start producing a product covered by the patent that the other inventors don’t like. The others may think the price is too low or the quality is poor. With the default ownership, the other inventors have no basis to stop a rogue co-inventor from causing mischief.
• Another group inventor problem is that if the inventors have a falling out, one inventor can assign their interest, complicating the ownership of the patent.
• Potential licensees, business partners, or investors typically want to do business with another corporate entity, not an individual or group of individuals. In the case of a group of inventors, each inventor must agree to sell or license the patent. If one inventor/owner objects, a deal that other owner/inventors want could be ruined.

  By transferring the ownership to a corporate entity such as an LLC, S-corporation, or C-corporation, many of these issues go away or become contractual issues between owners of the corporate entity, which are easier to deal with.  

Alternative – Patents Owned by an Applicant

Alternatively, patents can now be filed by a corporate entity (called an “Applicant”). Note however, that naming an Applicant at the time of patent filing is not a substitute for a patent assignment. A patent application naming an applicant should also have an assignment from the inventors, even if a corporate owner is provided at the time of filing.  

Patent Assignments

In patents, selling a patent (or a partial ownership in a patent) is called an assignment . Inventors of patents or any current owner can assign their interest in a patent or patent application to another party, such as a corporate owner or another person, at any time during the life of the patent. With an assignment, ownership and all rights that go with the patent are transferred from an a ssignor (i.e., the seller) to an assignee (i.e., a buyer).   Assigning a patent or patent application is analogous to selling an asset, such as a house or a car. With an assignment, the patent is effectively sold to someone else.   Partial interests can be sold, so for example, one inventor in a group of inventors can assign their individual interest, which could be a serious problem and tie up the ownership and value of the patent. This is a reason why an assignment to a single corporate entity for a group inventorship patent may be important.  

Assignment of Patent Applications

Patent applications not yet granted can also be assigned, and there are good reasons for doing so.

• For a group of inventors, getting an assignment very early in the process can avoid the problem of a disagreement among inventors. By assigning to a corporate entity promptly after the patent application is filed, the ownership picture is secure from the patent application filing.
• For both individual and group inventors, an assignment to a corporate entity makes the patent more attractive to investors, potential buyers, or licensees. Investors, potential buyers or licensees typically would much rather deal with a corporate entity rather than an individual investor.

Obligations to assign

Many inventions are made by employees, such as scientists or engineers working for a company. This discussion also applies to consultants. A best practice is for employers to insist on an obligation to assign any invention made by an employee or consultant inventor to the employer. There is case law that an invention made by an employee or consultant using company time and resources, without an express obligation to assign, belongs to the employer. However, these rights are weak and can lead to costly litigation, delays, and loss of rights. By including an obligation of any employee-inventor to assign their patent to a corporate entity, this problem is avoided. This provision should be added to employment or consulting agreements if patentable subject matter is a likely to be developed. Even if an employee and employer have a disagreement or falling out, the employer can still assert ownership over a patent if there is an obligation to assign on file. Special language is required under the case law to perfect an obligation to assign future rights, so this should be discussed with a patent attorney.   Any compensation due to an employee-inventor is a separate question. That issue should be negotiated in advance of any work assignment.  

Patent Licenses

Many inventors and companies are not interested in commercializing a patented invention and may desire instead to license the invention to another party that has the capability of manufacturing or marketing a patented product. A patent license is analogous to renting a house. The owner gives another party the right to use the property in exchange for payments (rent). So a license is a transfer of some, but not all, rights in a patent or patent application.   Patent licensing is a big discussion beyond the scope of this blog post. The main point for this discussion is that patent licenses can be classified as exclusive or non-exclusive . In an exclusive license , the licensor (the party that owns the patent) does not license the patent to any other licensees. In a non-exclusive license , the licensor makes licenses to multiple licensees.   An exclusive licensee has special rights in terms of enforcement. An exclusive licensee may bring a patent infringement suit without involving the patent assignee.  

Enforcement

A key feature in patent law is that only a patent assignee or exclusive licensee has standing to bring a lawsuit for patent infringement. A non-exclusive licensee or some other third party, even if they have some kind of interest in the patent, cannot bring a suit for infringement on their own. Ultimately, this may be the most critical factor in this discussion. The ability to bring a suit for patent infringement to protect the patent right is what makes patents valuable assets. Consequently, it is important to understand which parties have this right.  

Ensuring the correct party has rights to a patent or patent application is a critical aspect of managing a patent portfolio. Properly addressing ownership issues at an early stage is a best practice. Contact us for assistance with this important aspect of patent ownership.

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Assignment of patent rights

Introduction

Patent licensing

Patent assignment

Mexican legal context

A patent owner has the exclusive right to exploit its patent, or authorise a third party to do so, for a set period. Therefore, the value of patent rights is unquestionable as they constitute property rights and can therefore be totally or partially assigned from one owner to another.

Owning a patent provides value in two ways:

• a patent owner can rely on having exclusivity over the use and exploitation of the products relating to the invention; and
• the rights over a patent can be sold, bought, licensed or the subject of a lien to guarantee the fulfilment of an obligation.

In this regard, patent rights not only enable businesses to protect their innovations and gain an advantage over their competitors, but also create value as important assets, which in some cases may function as the basis of a decision on selling or acquiring a company or part thereof.

Despite licence grants determining use and exploitation rights over a patent, notable limitations exist regarding decisions which are reserved for the owner of the patent, either due to the proper nature and characteristics of ownership rights or for specific restrictions that may be regulated in licence agreements.

There are several legal implications that patent owners must bear in mind when a business project involves an assignment of patent rights. Consequently, parties should follow a well-organised plan when acquiring or transferring patent rights.

In this regard, keeping the ownership of patents in order guarantees easy access to the management and control of the associated rights. The assignment of patents plays an important role in facilitating the maintenance, defence and enforcement of owners' rights.

While patent licensing involves providing limited permission to use a patent, a patent assignment represents a total and permanent transfer of the patent from its owner (the 'assignor') to another party (the 'assignee'). Thus, a patent assignment enables the assignee to:

• allow other parties to use the patent;
• file litigation proceedings for any infringements of the patent; and
• seeking remedies; and
• requesting the confiscation of infringing products.

As a legal solution, a patent assignment constitutes the renouncement of the assignor to the rights over the patent. While the assignor could obtain a new permission to use the patent, it no longer holds control or disposal over it. The assignee replaces the assignor as the owner of the patent, and consequently acquires the rights and obligations associated therewith.

In Mexico, an assignment of rights compels the parties from the execution of the agreement. However, for the transfer of rights to be binding on third parties, it must be registered with the Mexican Patent Office (MPO).

According to the IP Law, there is no specific deadline after the assignment to register the transferred rights. However, the sooner the better – this enables the MPO to update the patent records with the accurate owner information and the new owner to properly act with regard to the maintenance, defence and enforcement of its patent rights. For defence and enforcement purposes, it is necessary to act on behalf of the recorded owner. Therefore, the change in ownership must be duly recorded before the MPO to file litigation actions against third parties or act on behalf of the new owner (the assignee) in proceedings such as granting use licences.

For the peace of mind of the parties involved and to ensure that the transfer of rights has been effected correctly, it is important to cover all legal aspects under the provisions and requirements of the law and local practice when drafting, executing and registering an assignment agreement. This will ensure that the patent or patent application is assigned without any unnecessary risks or potential contingencies.

In this regard, practitioners must consider various relevant factors to facilitate the creation of the best strategy and the implementation of a proper solution which ensures that the correct conditions are in place for a transfer of rights project.

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Preventing and solving intellectual property problems

Joint Patent Ownership: Who Owns What

By Venjuris

In a previous post, we discussed difference between inventorship and ownership in regards to patents. To recap, only inventors (i.e., someone who contributed to creating the invention) can be an “inventor,” but anyone can become a patent owner. A non-inventor typically becomes a patent owner by a written agreement signed by the inventor, that transfers ownership (e.g., an assignment). This situation is more complicated when you have multiple inventors or multiple owners.

Here are the basic differences between individual patent ownership and joint patent ownership:

1. Individual Ownership – An individual person or single entity may own the entire patent.  For example, if there is only one inventor, and that inventor has not assigned the patent, that inventor owns the entire patent. Individual ownership, however, ca

n also occur when all parties having an ownership interest (all inventors and assignees) assign the patent to one person or entity.

2. Joint Ownership – Multiple parties can share ownership in a patent.  For example, joint ownership occurs when there are:

• Multiple inventors who have not assigned their patent rights;
• Multiple parties who have been assigned patent rights; or
• A combination of assignee(s), and inventor(s) who have not assigned their patent rights.

Each joint inventor may only assign the interest he or she holds. Thus, an assignment by one joint inventor means that the assignee, is only a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. See how fast it can get complicated?!

Rights of Co-Owners or Joint Owners

Unless the co-inventors have an agreement to the contrary, each co-inventor shares full patent rights with any other co-inventor(s). That is, each co-inventor can make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States without the consent of and without accounting to the other co-inventors.

Joint ownership has some inherent limitations. For one thing, because each joint owner can exercise rights without having to account to other joint owners, each joint owner can grant licenses to third parties without the consent of the other joint owners. While this sounds good at first, it also means that no single joint owner has the power to grant an exclusive license given that the other joint owners can grant licenses to third parties, too.

Additionally, in order to bring a lawsuit for patent infringement against a third-party, all joint owners must be named plaintiffs.  If one joint inventor refuses to join the action as a plaintiff, this can end the lawsuit and effectively stop the other patent owners from pursuing infringers.

If you need more information about patent ownership, please send us a message . We have lawyers licensed in Arizona, Connecticut, and New York, and we can handle federal intellectual property matters in any U.S. state and assist with international matters. For even more information, sure to connect with us on Facebook .

Post by  patent attorney Joseph Meaney , edited by  social media attorney Ruth Carter .

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Out-law / your daily need-to-know.

Out-Law Guide 1 min. read

Assigning patent rights to others

17 Aug 2018, 3:32 pm

This guide is based on UK law. It was last updated in August 2018.

Requirements or restrictions for assignment of intellectual property rights

An assignment of a patent or patent application is void unless it is in writing.

Post 1 January 2005, the need for assignments to be signed by both assignees and assignors was removed for assignments of UK patents. This change was effected via the Regulatory Reform (Patents) Order 2004.  Nevertheless, it is still common for both parties and not just the assignor to sign a UK patent assignment.

Assignments of EU patent applications do need to be signed by the assignee and assignor and must be in writing, under Article 72 of the European Patent Convention.

There are specific provisions which may be implied into UK patent assignments.

Under UK law set out in section 30(7) of the Patents Act 1977, patent assignments should include the right to bring proceedings for any previous infringements.

The public have a right to inspect the register of patents maintained by the Comptroller General of Patents, Designs and Trade Marks, who leads the UK's Intellectual Property Office (IPO). There is no obligation to register the assignment or licence with the IPO. That said, it is advisable to register the assignment or licence as soon as possible.

Registration gives priority to the registered rights which can defeat earlier claims of unregistered rights.  Additionally, if the patent owner fails to register the transaction within six months its rights to claim costs for litigating an infringement that occurred before registration are diminished, unless the patent owner can prove to the court it was not reasonable or practicable to register it in that period.

Procedure for  registration

It is a simple process to register a patent application or patent assignment or licence in the UK.

An application to the IPO is made using Patent Form 21 and a small fee is payable. It must include evidence establishing the transaction; however, this does not need to be a copy of the assignment itself. A redacted photocopy of the licence or assignment is sufficient.

To register a licence or assignment in the European Patent Office (EPO), the request must be in writing and accompanied by documents satisfying the EPO that the licence or assignment has been granted. A statement signed by the assignor/licensor that the assignment or licence has been granted is also sufficient.

There is no requirement for a licence, exclusive or non-exclusive, to be in writing; however, it is advisable for it to be so. This is to ensure certainty of terms, allow the parties to secure the benefits and rights of the registration and to designate the law and jurisdiction which governs the licence.

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Kluwer Patent Blog

A cautionary tale for assignment of rights in u.s. patents.

In Omni MedSci, Inc. v. Apple Inc. , ___ F.4th ___, Nos. 2020-1715, -1716 (Fed. Cir. Aug. 2, 2021), the U.S. Court of Appeals for the Federal Circuit held that the University of Michigan’s technology transfer bylaws did not constitute an automatic assignment of a professor’s patent rights. This decision has important implications for the drafting of employee agreements as they relate to the ownership of inventions, which in the U.S. vest initially in the inventors.

In 2012, Dr. Islam, a tenured professor at University of Michigan (“UM”), took an unpaid leave-of-absence in order to start a new company, Omni. During his leave, Dr. Islam filed several provisional patent applications that he expected to form the backbone of the IP portfolio for the new company. In 2013, after resuming work at UM, Dr. Islam assigned the issued patents to Omni.

Omni subsequently brought suit against Apple for infringement of two patents descended from the provisional applications filed by Dr. Islam during his leave. Apple moved to dismiss alleging that Omni lacked standing because UM was the real patent owner. Apple argued that UM’s bylaws automatically transferred legal title to the patents to UM, leaving Dr. Islam with no rights to assign to Omni. The district court rejected Apple’s arguments and denied the motion; in a split decision, the Federal Circuit affirmed.

Did UM’s Bylaws Effectuate an Automatic Assignment?

Like all professors at UM, Dr. Islam signed an employment agreement when he was first hired in 1995 in which he agreed to abide by UM’s bylaws.  Those bylaws provided that patents “resulting from activities which have received no support … from the University shall be the property of the inventor,” whereas patents based on activities supported by the University “shall be the property of the University.” The question for the court was whether the bylaws created an obligation to assign or constituted an automatic assignment of the patents at issue, which would have automatically transferred title to UM and left Dr. Islam with no rights in the invention to assign to Omni.

The distinction between automatic assignments and obligations to assign is nicely illustrated by the Stanford v. Roche case. There, Professor Holodniy, a Stanford professor, conducted research at Cetus pursuant to a confidentiality agreement. After his return to Stanford, Professor Holodniy assigned the resulting patent applications to Stanford. When Stanford subsequently sued Roche, Roche raised an ownership defense based on the language in the confidentiality agreement with Cetus. The Cetus agreement stated that Holodniy “will assign and do[es] hereby assign” his rights to Cetus for inventions made “as a consequence of [his] access” to Cetus. By contrast, Holodiny’s employment agreement with Stanford stated that he “agree[d] to assign” rights in inventions resulting from his employment. The Federal Circuit held that the Cetus contract, by virtue of its present-tense “do[es] hereby assign” language, automatically assigned rights to Cetus, but the Stanford contract’s future-tense language did not.

In Omni , the Federal Circuit observed that UM’s bylaws did “not unambiguously constitute either a present automatic assignment or a promise to assign in the future.” The express purpose of the bylaws was, however, to determine under which conditions employees were obliged to assign their inventions to UM and when they would own it themselves. Moreover, after disclosing an invention to the Office of Technology Transfer, employees at UM were asked to sign an Invention Report, which referenced the bylaws and provided: “As required, I/we hereby assign.” The Federal Circuit contrasted the “unambiguous present assignment” in the Invention Report with the language in the bylaws, noting that “[e]ach case in which [the] court found a present automatic assignment examined contractual language with a present tense executing verb. Such present-tense active verbs effectuate a present action.” Thus, the Federal Circuit concluded that the bylaws were “most naturally read as a statement of intended disposition and a promise of a potential future assignment, not as a present automatic transfer.”

Takeaways: How to Play it Safe

While the Federal Circuit noted that there are no “magic words,” the following language has been held to constitute an automatic assignment: “the Employee assigns all of his or her right, interest, or title in any invention to the Employer” ( SiRF Tech v. Int’l Trade Comm’n ); “agrees to and does hereby grant and assign” ( DDB Techs. ); “hereby conveys, transfers, and assigns” ( Speedplay v. Bebop ); and “agrees to grant and does hereby grant” ( FilmTec Corp. v. Allied-Signal ). By contrast, passive verbs in indefinite or future tense are less likely to effectuate a present assignment.  Indeed, agreements providing that an invention “shall be the property of … and all rights thereto will be assigned” to an employer have been held not to be an automatic assignment, but rather, an obligation to assign in the future. By following the language of these precedents, employers and employees can ensure their agreements provide for the desired ownership of inventions.

Concluding Remarks

In dissent, Judge Newman argued that the holding “overturns decades of unchallenged understanding and implementation of the University’s employment agreement and policy documents.” Whether or not this is true, institutions and corporations would be well-advised to review the language used in their employment agreements to ensure it achieves the intended purpose.

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• When Partial IP Assignments Become Murky

"In some cases ... the owner of the IPR may be persuaded to assign a partial interest in the IPR even if it is unwilling to assign its entire interest. Many countries (e.g., Canada) recognize assignments of certain IPR that are limited to a specific field of use or territory. Accordingly, in place of a field of use-limited exclusive license (e.g., an exclusive license in the optical networking field), the parties could agree that the owner of the IPR will assign all IPR within a particular field, while retaining all other rights (e.g., an assignment of all rights in the IPR in the optical networking field only). Note, however, that not all countries recognize field of use-limited assignments with respect to each of the major categories of IPR (e.g., patents, copyrights, and trade secrets). For example, Canada recognizes such partial assignments of patents, but not trade secrets; in such case this approach would work for the patents, but another approach would be necessary for the trade secrets.”

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• Practical Law

Intellectual Property: Assignments and Transfers

Practical law practice note w-005-5845  (approx. 23 pages), get full access to this document with a free trial.

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• Trade Marks

Partial Assignment of Contract: Everything You Need to Know

A partial assignment of contract occurs when the assignor of a contract is assigning a portion of his or her contractual right. 3 min read updated on January 01, 2024

A partial assignment of contract occurs when the assignor of a contract is assigning a portion of his or her contractual right. This can only occur if the other involved party can perform that portion of the contractual obligation separately from the rest of the obligations.

Under a legally enforceable contract, an assignment is the transfer of rights to receive a specific performance in return. When a contract is assigned, the obligee, or the party who holds the right to receive a benefit from a contract, chooses to transfer his or her right to receive that benefit from the obligor, or the party who has the duty to perform on the action. This right is transferred to the assignee, who is a third party in the arrangement. By doing so, the obligee then becomes an assignor, or someone who is issuing an assignment.

Any and all rights are assignable, except:

• Those that alter the material obligations or risks of the other contracted party.
• Those under a contract that prohibits assignment. If this occurs, the resulting action is a breach not a nullification of the contract.
• Those in which the obligor has an interest in transferring the performance to the party holding the right to receive the benefit, rather than a third party.

Assignments can be made in any form and do not require consideration for validation. An oral or written act or statement indicating the intention to transfer a right can act as an assignment. However, in some cases, those involved in a contract cannot go through the process of assignment.

Method of Assignment: Manifesting Assent

To make an assignment, the assignor must understand it clearly and intend to make the assignment at that exact time. The assignor cannot promise to make an assignment at a future date. Additionally, the assignor must express his or her intention to make the transfer of rights to the third party. This action puts the assignment into effect. The intention of an assignor must indicate an effective assignment that doesn't require any further manifestation of intention or further action.

Partial Assignments

The assignor of a contract can legally assign a portion of a contractual right . However, this action can only be taken if the contract obligor is able to perform that portion of the obligation separately from the other obligations included in the agreement.

Assignor's Warranties

Additionally, if an assignment is created in exchange for value, the assignor is making three implied warranties, according to the Restatement (Second) of Contracts. These implied warranties are:

• The assignor will not take action to impair or impact the assignment's value and has no knowledge of any information that would impair or impact the value.
• The right being assigned is not subject to any defenses or limitations against the assignor and actually exists.
• Any documentation shown or given as evidence to the assignee is genuine, accurate, and what it promises to be.

An assignor of a contract does not guarantee any type of payment. The action of assignment doesn't provide any type of warranty on its own that the obligor is agreeing to perform.

Method of Assignment: Notice

When going through the process of assignment, it is not required to provide notice to the obligor. However, if an obligor renders performance to an assignor without notifying the involved parties of that assignment, it can be discharged. In this case, the performance of that contract would be transferred to the assignee.

Effect of Assignment: Exceptions

In some cases, defenses may be asserted. These allowed defenses are called real defenses and include fraud in the execution, duress, infancy, and others.

When Are Assignments Ineffective: Material Change in Duties of the Obligor

If an assignment effectively changes the obligor's required duties, it is ruled ineffective.

When Are Assignments Ineffective: Assignment of Personal Rights

When an obligor receives the benefit of the duty to perform as assigned under a contract, receiving that benefit becomes a personal right that no one can assign.

When Are Assignments Ineffective: Future Contracts

Contract laws distinguish between assigning rights arising from a future contract and assigning future rights from a current contract.

Successive Assignments

An exception to the assignment rules relates to making successive assignments. If a subsequent assignee in good faith provides consideration for that assignment and holds to prior knowledge, the assignee takes precedence for obtaining payment, judgment, or performance from the assignor.

If you need help with a partial assignment of contract, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

• Assignment of Rights and Obligations Under a Contract
• Assignment of Rights Example
• Assignment Contract Law
• What Is the Definition of Assigns
• Assignment Of Contracts
• Assignment Law
• Legal Assignment
• Assignment of Contract Rights
• Delegation vs Assignment
• Assignment and Novation Agreement: What You Need to Know

IP Assignment and Licensing

IP rights have essentially transformed intangibles (knowledge, creativity) into valuable assets that you can put to strategic use in your business. You can do this by directly integrating the IP in the production or marketing of your products and services, thereby strengthening their competitiveness. With IP assignement and IP licensing, IP owners can also use your IP rights to create additional revenue streams by selling them out, giving others a permission to use them, and establishing joint ventures or other collaboration agreements with others who have complementary assets.

  Expert tip: Assignment, license and franchising agreements are flexible documents that can be adapted to the needs of the parties. Nevertheless, most countries establish specific requirements for these agreements, e.g. written form, registration with a national IP office or other authority, etc. For more information, consult your IP office .

IP rights assignment

You can sell your IP asset to another person or legal entity.

When all the exclusive rights to a patented invention, registered trademark, design or copyrighted work are transferred by the owner to another person or legal entity, it is said that an assignment of such rights has taken place.

Assignment is the sale of an IP asset. It means that you transfer ownership of an IP asset to another person or legal entity.

IP for Business Guides

Learn more about the commercialization of patents, trademarks, industrial designs, copyright.

Read IP for Business Guides

IP licensing

You can authorize someone else to use your IP, while maintaining your ownership, by granting a license in exchange for something of value, such as a monetary lump sum, recurrent payments (royalties), or a combination of these.

Licensing provides you with the valuable opportunity to expand into new markets, add revenue streams through royalties, develop partnerships etc.

If you own a patent, know-how, or other IP assets, but cannot or do not want to be involved in all the commercialization activities (e.g. technology development, manufacturing, market expansion, etc.) you can benefit from the licensing of your IP assets by relying on the capacity, know-how, and management expertise of your partner.

  Expert tip: Licensing can generally be sole, exclusive or non-exclusive, depending on whether the IP owner retains some rights, or on whether the IP rights can be licensed to one or multiple parties.

Technology licensing agreements

Trademark licensing agreements, copyright licensing agreements, franchising agreements, merchande licensing, joint venture agreements, find out more.

• Learn more about Technology Transfer .

• Patent Laws, Regulations, Policies & Procedures
• Manual of Patent Examining Procedure
• Chapter 0300
• Section 302

302 Recording of Assignment Documents [R-07.2015]

37 cfr 3.11  documents which will be recorded..

• (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
• (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
• (c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.

37 CFR 3.58  Governmental registers.

• (a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12 .
• (b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.

37 CFR Part 3 sets forth Office rules on recording assignments and other documents relating to interests in patent applications and patents and the rights of an assignee.

37 CFR 3.11(c) provides that the Office will record a joint research agreement or an excerpt of a joint research agreement.

302.01 Assignment Document Must Be Copy for Recording [R-08.2012]

37 cfr 3.24  requirements for documents and cover sheets relating to patents and patent applications..

• (a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
• (b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.

The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317 . The document submitted for recordation will not be returned to the submitter. If the copy submitted for recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.

302.02 Translation of Assignment Document [R-08.2012]

37 cfr 3.26  english language requirement..

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.

302.03 Identifying Patent or Application [R-07.2015]

37 cfr 3.21  identification of patents and patent applications..

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.

The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:

“I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.”

302.04 Foreign Assignee May Designate Domestic Representative [R-10.2019]

35 u.s.c. 293   nonresident patentee; service and notice..

Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.

37 CFR 3.61  Domestic representative.

If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document. The designation of a domestic representative should be clearly labeled “Designation of Domestic Representative” and it will be entered into the record of the appropriate application or patent file. The designation must be signed in accordance with 37 CFR 1.33(b) .

302.05 Address of Assignee [R-08.2012]

The address of the assignee may be recited in the assignment document and must be given in the required cover sheet. See MPEP § 302.07 .

302.06 Fee for Recording [R-10.2019]

37 cfr 3.41  recording fees..

• (a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
• (1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
• (2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27 .

The recording fee set in 37 CFR 1.21(h) is charged for each patent application and patent identified in the required cover sheet except as provided in 37 CFR 3.41(b) . If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1) , currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2) . Customers should check the current fee schedule on the Office website before submitting documents for recordation. See MPEP §§ 302.08 - 302.10 for additional information regarding the acceptable ways to submit documents for recordation.

302.07 Assignment Document Must Be Accompanied by a Cover Sheet  [R-10.2019]

37 cfr 3.28  requests for recording..

Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31 ) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.

37 CFR 3.31  Cover sheet content.

• (1) The name of the party conveying the interest;
• (2) The name and address of the party receiving the interest;
• (3) A description of the interest conveyed or transaction to be recorded;
• (i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
• (ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
• (5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
• (6) The date the document was executed;
• (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
• (ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
• (8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.
• (b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
• (1) Indicate that the document relates to a Government interest; and
• (2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see §  3.41(b) ).
• (d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
• (e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
• (f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
• (1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
• (2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
• (3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
• (4) Indicate the date the joint research agreement was executed.
• (h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.

Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28 . The cover sheet for patents or patent applications must contain:

• (A) The name of the party conveying the interest;
• (B) The name and address of the party receiving the interest;
• (C) A description of the interest conveyed or transaction to be recorded;
• (D) Each patent application number or patent number against which the document is to be recorded, or an indication that the document is filed together with a patent application;
• (E) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
• (F) The date the document was executed; and
• (G) The signature of the party submitting the document.

For applications filed on or after September 16, 2012, if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under 37 CFR 1.63 . See 37 CFR 3.31(h) .

If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a "joint research agreement" (in the space provided for the description of the interest conveyed if using Form PTO-1595). The date the joint research agreement was executed must also be identified. The cover sheet must also identify the name(s) of the owner(s) of the application or patent (in the space provided for the name and address of the party receiving the interest if using Form PTO-1595). The name(s) of every other party(ies) to the joint research agreement must also be identified (in the space provided for the name of the party conveying the interest if using Form PTO-1595).

Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.

Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:

• (A) assignment;
• (B) security agreement;
• (C) merger;
• (D) change of name;
• (E) license;
• (F) foreclosure;
• (H) contract; and
• (I) joint research agreement.

Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.

A patent cover sheet may not refer to trademark applications or registrations.

Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

302.08 Mailing Address for Submitting Assignment Documents [R-08.2012]

37 cfr 3.27  mailing address for submitting documents to be recorded..

Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.

37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications. Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

302.09 Facsimile Submission of Assignment Documents [R-11.2013]

Assignments and other documents affecting title may be submitted to the Office via facsimile (fax). See the USPTO website or MPEP § 1730 for the facsimile number. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine. The customer’s fax machine should be connected to a dedicated line because recordation notices will be returned automatically to the sending fax number through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”

Any assignment-related document for patent matters submitted by facsimile must include:

• (A) an identified application or patent number;
• (B) one cover sheet to record a single transaction; and
• (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509 ), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.

The following documents cannot be submitted via facsimile:

• (A) Assignments submitted concurrently with newly filed patent applications;
• (B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same property); and
• (C) Requests for “at cost” recordation services.

The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office. See MPEP § 502.01 . The benefits of a certificate of transmission under 37 CFR 1.8 are available.

If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office “Notice of Non-Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.

302.10 Electronic Submission of Assignment Documents [R-10.2019]

• (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’ Malley III/) in the signature block on the electronic submission; or

37 CFR 1.4  Nature of correspondence and signature requirements.

• (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
• (ii) A patent practitioner (§ 1.32(a)(1) ), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) , must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
• (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
• (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
• (3) Electronically submitted correspondence . Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
• (i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
• (ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
• (5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms ( e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.

Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://epas.uspto.gov for additional information regarding EPAS.

Any assignment related document submitted by EPAS must include:

• (A) an identified application or patent number; and
• (B) one cover sheet to record a single transaction which cover sheet is to be completed on-line.

The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation. If a recordation fee is required, see MPEP § 509 for detailed information pertaining to the payment of fees.

For an assignment document filed electronically, the signature of the person who signs the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2) .

The date of receipt accorded to an assignment document sent to the Office by EPAS is the date the complete transmission is received in the Office.

If a document submitted by EPAS is determined not to be recordable, the entire document, with its associated cover sheet, and the Office "Notice of Non-Recordation" will be transmitted via fax back to the sender if possible. Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .

• 301.01-Accessibility of Assignment Records
• 302.01-Assignment Document Must Be Copy for Recording
• 302.02-Translation of Assignment Document
• 302.03-Identifying Patent or Application
• 302.04-Foreign Assignee May Designate Domestic Representative
• 302.05-Address of Assignee
• 302.06-Fee for Recording
• 302.07-Assignment Document Must Be Accompanied by a Cover Sheet 
• 302.08-Mailing Address for Submitting Assignment Documents
• 302.09-Facsimile Submission of Assignment Documents
• 302.10-Electronic Submission of Assignment Documents
• 303-Assignment Documents Not Endorsed on Pending Applications
• 304‑305-[Reserved]
• 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
• 307-Issue to Non-Applicant Assignee
• 308-Issue to Applicant
• 309-Restrictions Upon Employees of U.S. Patent and Trademark Office
• 310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
• 311-Filing of Notice of Arbitration Awards
• 312-[Reserved]
• 313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
• 314-Certificates of Change of Name or of Merger
• 315-Indexing Against a Recorded Certificate
• 316-[Reserved]
• 317.01-Recording Date
• 317.02-Correction of Unrecorded Returned Documents and Cover Sheets
• 317.03-Effect of Recording
• 318-Documents Not to be Placed in Files
• 319-[Reserved]
• 320-Title Reports
• 321‑322-[Reserved]
• 323.01(a)-Typographical Errors in Cover Sheet
• 323.01(b)-Typographical Errors in Recorded Assignment Document
• 323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
• 323.01(d)-Expungement of Assignment Records
• 324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
• 325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

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