Do I Need a Patent Assignment? Episode 25

Why Discuss Assignments Before Filing?

The last episode and the ones that follow focus on forms and documents that you may need to file at the time you submit your patent application.

Not all of these forms are required, and whether you need them depends on your specific circumstances. However, I am covering them because they relate to the Application Data Sheet (ADS)—a form that includes essential information about your application.

Many sections in the ADS will not apply to you, and you may leave them blank, but you should understand them to know whether they are relevant.

Patent assignments are one of these sections.

• If you are a solo inventor, you likely won’t need an assignment right away.

• However, you might want to sell your invention later or form a company to commercialize it, in which case an assignment may be necessary.

What Is a Patent Assignment?

A patent assignment is a transfer of ownership of a patent to another party.

• The assignee (recipient) is usually a company but could also be another individual.

• Once assigned, the assignee—not the inventor—has the right to stop others from making, using, or selling the invention.

Why Assign a Patent Application Before Filing?

One of the forms you will fill out when filing your patent application asks:

• Is the application being filed under the inventor’s name or an applicant’s name?

By default, the inventor is the applicant.

However, if you want the application filed under a company’s name, then:

• The company is the applicant, not the inventor.

Important Clarifications:

• The inventor will still be listed on the patent when it is issued.

• The company’s name will be listed as the applicant.

• However, this does not automatically mean the company owns the patent—that is where an assignment is needed.

Who Owns the Patent?

By default, the inventor owns the patent, even if:

• The inventor works for a company.

• The inventor was hired to invent as part of their job.

For the company to own the rights, the inventor must assign the patent to the company.

Many employment contracts include a clause stating that:

• The company owns all intellectual property created by the employee related to their job.

• The employee is obligated to assign any patent rights.

However, even with an employer-employee agreement, the USPTO still requires a specific patent assignment document for each patent or patent application.

What Does a Patent Assignment Document Include?

A patent assignment is usually a one-page document containing:

1. Assignor’s (Inventor’s) Name

• The assignor (inventor) is transferring rights.

2. Patent Application Title

• The title of the patent application being assigned.

3. Patent Application Number (If Available)

• If the application has not yet been filed, the form may include a blank space for the application number, which can be filled in later.

4. Assignee’s (Company’s) Name and Address

• The company or individual receiving the patent rights.

5. Transfer Clause

• A statement that the assignor is transferring rights to the assignee.

• This usually states that the assignee has rights to any patent that issues from the application.

6. Consideration (Payment Clause)

• The assignment may specify a nominal amount, such as $1.

• Why include a payment?

• In the U.S., contracts require an exchange of value to be enforceable.

• Even though the amount is symbolic, it ensures the contract is legally valid.

7. Signatures

• The inventor must sign the assignment.

• Legally, a company officer’s signature is not required in the U.S., but it is recommended:

• Some foreign countries require the assignee (company) to sign.

• Including a company officer’s signature makes international enforcement easier.

Do You Need a Patent Assignment?

If You Work for a Company

• Your employer may require you to sign an assignment as part of your job.

• If so, you should be aware of how assignments work.

If You Started Your Own Company

• You may want to assign the invention to your company.

• This ensures that all business dealings and licensing agreements go through the company, not you personally.

It simplifies ownership and business transactions.

When to File a Patent Assignment

• You do not have to file the assignment at the time of application, but:

• It is easier to do it immediately.

• You can assign the invention before filing the application.

I will discuss this further in my upcoming Application Data Sheet (ADS) episode, where I will explain:

• Who is the applicant—the inventor or the company?

• How assignments affect the application process.

Next Episode: Power of Attorney

In the next episode, I will cover another optional document:

• The Power of Attorney

• Whether you need one when filing a patent application.

Need Help With Your Patent Application?

If you need help drafting your patent application, connect with me! I'm Adam Diament, and until next time—keep on inventing!