Patent assignment

When patents change hands for good.

An assignment transfers patent ownership permanently. After assignment, the assigneeassigneeThe entity that owns the patent — usually the inventor's employer or a company.Read more → — not the original inventorinventorThe person who actually conceived the invention. Listed on the patent regardless of who owns it.Read more → — has the right to licenselicensePermission from the patent owner to make, use, or sell the invention — usually in exchange for payment. Doesn't transfer ownership.Read more →, enforce, sell, or abandon the patent. Different from a license, which is just permission to use.

Assignment vs license

Selling vs renting, basically

USPTO recording

Why you record the assignment

An assignment is valid between the parties the moment it's signed — but you must record it with the USPTO to defeat later claimsclaimsThe numbered statements at the end of a patent that legally define what the inventor owns.Read more →. Under 35 USC §261, an unrecorded assignment can be voided by a later good-faith purchaser who records first. Recording is cheap ($40 per patent online) and almost always worth it within 3 months of the transfer.

1. 01

   Sign a written assignment document.

   Must be in writing, must identify the patent (number + title), must show clear intent to transfer ownership. Attorney drafting strongly recommended.

2. 02

   File via the USPTO Patent Assignment Search system.

   Online filing through EPAS (Electronic Patent Assignment System). $40 per patent, immediate confirmation.

3. 03

   The recording becomes public.

   Searchable in the USPTO Assignment database. Subsequent buyers can verify clear chain of title before they pay.

4. 04

   Update inventor records if needed.

   If the assignment is part of an asset sale or merger, related corporate filings should match.

Employee inventions

The startup founder's gotcha

Most U.S. companies use a Confidential Information and Invention Assignment Agreement (CIIA / PIIA) as part of every employee onboarding. The agreement pre-assigns all inventions an employee creates in the scope of employment to the company. Without this signed in writing — at the start of employment — the inventorinventorThe person who actually conceived the invention. Listed on the patent regardless of who owns it.Read more →, not the company, owns the patent.

• Get every employee to sign on day one.

  Backdating doesn't work. If a key invention predates the signed CIIA, the company may not own it — Stanford v. Roche (2011) cost Stanford key patent rights for exactly this reason.

• Use 'hereby assigns' language.

  Magic words. 'Hereby assigns' is a present-tense conveyance. 'Agrees to assign' is just a promise to assign later — and Stanford v. Roche held that a mere promise wasn't enough to defeat a later actual assignment to a different party.

• Carve out pre-employment IP.

  Employees should list any patents or inventions they already own at the start. Otherwise, the agreement can sweep in inventions the employee actually made before joining.

• State law matters.

  California (Labor Code §2870), Delaware, and several other states restrict the scope of what employers can claimclaimA numbered sentence at the end of a patent that legally defines what the inventor owns. The most important section.Read more →. Inventions made on the employee's own time, on their own equipment, and unrelated to the employer's business often can't be assigned.

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