confirmatory assignment copyright

Copyright Assignment Agreement

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What is a copyright assignment agreement.

A copyright assignment agreement is a legal document transferring the ownership and rights of a specific creative work or works. A copyright assignment agreement protects the rights of parties involved by clarifying and providing a record of ownership of a work, especially in the event of a transfer.

Notarization of a copyright assignment agreement is not legally required, but it is always a good idea to get an agreement like this notarized. Copyright assignment agreements can cover works such as writing or artwork and are sometimes known as a sales agreement for copyright.

Common Sections in Copyright Assignment Agreements

Below is a list of common sections included in Copyright Assignment Agreements. These sections are linked to the below sample agreement for you to explore.

Copyright Assignment Agreement Sample

Reference : Security Exchange Commission - Edgar Database, EX-10.15 16 d437016dex1015.htm INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT , Viewed October 13, 2021, View Source on SEC .

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My career interests are to practice Transactional Corporate Law, including Business Start Up, and Mergers and Acquisitions, as well as Real Estate Law, Estate Planning Law, Tax, and Intellectual Property Law. I am currently licensed in Arizona, Pennsylvania and Utah, after having moved to Phoenix from Philadelphia in September 2019. I currently serve as General Counsel for a bioengineering company. I handle everything from their Mergers & Acquisitions, Private Placement Memorandums, and Corporate Structures to Intellectual Property Assignments, to Employment Law and Beach of Contract settlements. Responsibilities include writing and executing agreements, drafting court pleadings, court appearances, mergers and acquisitions, transactional documents, managing expert specialized legal counsel, legal research and anticipating unique legal issues that could impact the Company. Conducted an acquisition of an entire line of intellectual property from a competitor. In regards to other clients, I am primarily focused on transactional law for clients in a variety of industries including, but not limited to, real estate investment, property management, and e-commerce. Work is primarily centered around entity formation and corporate structure, corporate governance agreements, PPMs, opportunity zone tax incentives, and all kinds of business to business agreements. I have also recently gained experience with Estate Planning law, drafting numerous Estate Planning documents for people such as Wills, Powers of Attorney, Healthcare Directives, and Trusts. I was selected to the 2024 Super Lawyers Southwest Rising Stars list. Each year no more than 2.5% of the attorneys in Arizona and New Mexico are selected to the Rising Stars. I am looking to further gain legal experience in these fields of law as well as expand my legal experience assisting business start ups, mergers and acquisitions and also trademark registration and licensing.

I am a startup veteran with a demonstrated history of execution with companies from formation through growth stage and acquisition. A collaborative and data-driven manager, I love to build and lead successful teams, and enjoy working full-stack across all aspects of the business.

Benjamin E.

Benjamin is an attorney specializing in Business, Intellectual Property, Employment and Real Estate.

I grew up in Beaumont, Texas. I attended Baylor University for college and the The University of Texas School of Law for law school. I gained extensive experience in many areas of transactional law through my former position as corporate counsel at National Western Life Insurance Company and my current position as an Associate at Nance & Simpson, LLP.

As a lawyer of 27 years, I have a great deal of experience handling many different types of legal projects. Starting with a simple estate plan or the purchase of a personal residence, and moving all the way to complex estate plans and real estate transactions. I regularly advise small business owners and real estate investors.

Trusted contracts attorney specializing in real estate and business law. I handle leases, land purchase contracts, investment valuations, cease and desist letters, and operating agreements.

I am a Berkeley Law 2020 graduate. I have experience working in finance and operations, plaintiff and defense litigation, and have been involved in multiple start-ups.

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• Ten Questions about Confirmatory Assignments

1. Depending upon the applicable IP rights and related law of contract of the jurisdiction, to what extent can an unwritten agreement validly assign IP rights? 2. Assuming that an unwritten assigment is valid, what is the evidentiary showing that is required? 3. Can one record an unwritten assignment on, e.g., the appropriate patent or trade mark registry? If so, what proof is required? 4. Is the evidentiary showing different in connection with establishing the validity of the assignment in the context of a transaction? 5. How can a purchaser receive sufficient comfort about the validity of the assignment, or is it a matter of risk allocation depending upon the positon of the parties? 6. Does the standard of evidence to establish an unwritten assignment differ once again in the context of a court proceeding? 7. Does the standard of evidence to establish an unwritten assignment differ yet again iin the context of taxation? 8. Is a confirmatory assignment a form of ratification? 9. If it not a form of ratification, what is the proper legal characterization for the agreement? 10. In light of all of the foregoing, does the confirmatory assignment confer any benefit to the parties, other evidentiary or substantive?

13 comments:

Confirmatory assignments are frequently used where a written assignment already exists, but the parties do not want to disclose that document because it contains sensitive information (e.g. payments, etc.). In addition, they are often used to confirm an 'automatic' assignment (e.g. from an employee to his/her employer). The latter may be useful, for example, when submitting a US application with UK inventors.

In the United States, this is a statutory question: "Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing." 35 USC Section 261. Your questions are far more interesting as applied to licenses or servitudes more generally. Based on hundreds of years of common law, one would imagine that all personal property, including patents, would require encumbrances to be publicly recorded for them to be enforceable on subsequent purchasers for value without actual notice. In fact, equitable servitudes on personal property were not enforceable at all at common law. As far as I can tell, patents present a unique exception to this history. For that reason I have wondered whether it is fair even to call patents property -- despite their being deemed so by statute. On my view, this is the most underappreciated obstacle to the emergence of a healthy market for patents. Lemley and Myhrvold suggested years ago a solution to the problem -- namely, of requiring the public disclosure of all assignments and licenses. That seems to have gone nowhere thanks to an incomplete understanding by current stakeholders of how such a transition would result in an entirely new market equilibrium, or at least to the general desire for incremental rather than radical changes to the status quo.

Confirmatory assignments are commonly used to record assignments in writing where the commercial terms of an assignment are to remain confidential. I cannot think of many instances where I would be happy to rely on a written confirmation of an unwritten assignment. It is my understanding that in most common law countries an assignment must be in writing for it to be legally effective, otherwise at best your unwritten assignment may only transfer an equitable interest in the relevant IP. A type of assignment document I have occasionally seen and used is the assignment that is both operative and confirmatory. In other words, "I confirm that I assigned, but if that assignment wasn't legally effective for any reason then I hereby assign". It isn't ideal, but sometimes it's the only way to fix a break in the chain of title when you really don’t think you can rely on that unwritten assignment.

3. Can one record an unwritten assignment on, e.g., the appropriate patent or trade mark registry? If so, what proof is required? Yes, that is possible in certain jurisdictions. At the most you would need a date of assignment and particulars of the assignee and the assignor. The relevant forms necessary to record the assignment are prepared by the agents and signed on behalf of the assignee. Example, Singapore

Rob hit the nail on the head. They are used to simplify matters in circumstances where the parties may have been better to have signed short-form agreemnts. A party will often not want to disclose a document with all of the juicy commercial terms, so a confirmatory assignment may be used. A final (arguably erroneous) use may be where a party has, to settle a matter, assigned a CTM under cover of a letter or unilateral agreement signed only by the owner. In the case of a CTM, the assignment has to be signed by both parties to be valid. Therefore, whilst the mark may be assigned in the head of the previous owner, something more needs to be done to validly assign. Arguably the follow-up is not confirmatory in those circumstances, but I've seen the document that followed described as confirmatory.

Associated with the issue of confirmatory assignments is the issue of assignment documents with a purported "effective date" earlier than the date of execution of the document. In jurisdictions where rights in an application can only be assigned in writing, the writing requirement was then not fulfilled as at the "effective date". This may be particularly important in relation to priority claims.

I have seen such Confirmatory Assignments used as evidence supporting a transfer request before the EPO, but it wasn't my job to question them even though the whole procedure looked quite fishy to me. Once upon a time there was a nice little company A which got gobbled by company B. One year later, company B was in turn purchased lock, stock and barrel by company C. A, B and C were in three different countries. A's European representative kept prosecuting the EP cases, but only bothered to file a transfer request when a given application was just about to mature into a grant, providing in most cases a confirmatory assignment drafted by an US notary public as evidence. The document stated that A's IP was transferred to three entities Ca, Cb and Cc, which are all presumably 100% subsidiaries of C. I infer that the applications are jointly owned by all three companies. The assignment is signed by Ca, Cb and Cc's officers as well as the notary. The document couldn't have been signed by A's officers, since A did not exist anymore at that point. There is no mention whatsoever of company B either , so the document did not describe what actually happened, since A could never have dealt directly with C. The representative's cover letter only requests transfer to company Ca, leaving Cb and Cc out of the picture, and Ca is the only name entered in the EPO's register. I googled up a bit and I found out that B wrote in its ultimate annual that it now owned all of B's IP, and C later stated in its own annual report that B's IP was now located in yet another subsidiary Cd, different from Ca, Cb or Cc. In one case the Umschreibestelle questioned the confirmatory assignment in that in only bore the signature of one of the parties. The representative adamantly replied that the assignment should be taken at face value and that's it. The EPO did not insist, and took down the transfer - in Ca's name only. In one of the applications this examiner was bone-headed enough to be minded to consider a refusal, prompting the representative to file a "divisional" application in order to keep the show going. The weird thing was that the "divisional" was in A's name, even though it no longer existed for years. The new application was eventually abandoned, so all the interesting questions which arose did not need to be answered. From the preceding, I think I'd start kicking and yelling about who actually owns a patent (and thus entitled to initiate action) if I were ever dragged before court in an infringement action where a confirmatory assignment was involved. The standard for proving a transfer of rights appears to be much lower as to the right to transfer of an opposition. A confirmatory assignment may appear a practical shortcut, but it could be a false saving. As to the argument that a confirmatory assignment can keep details secret, I don't think they're worth the risk either. I've seen IP sale contracts accepted as evidence for a transfer before the EPO where more black ink was poured to obscure passages than the CIA ever used when declassifying a document. BTW, one of these contracts involved yet another of C's subsidiries transferring its IP to numbered entities conveniently located in tax flexible territories.

Thanks for all of your great comments. In one off-site communication on the topic yesterday, I suggested that confirmatory assignments are among the "dirty little secrets" of IP practice. She wrote back that in fact they are the "dity little not-so-secrets" of IP. I suspect that we are both right.

Something that does not appear to be widely appreciated is that the box for the date of agreement on EPO Form 1002 is provided for the convenience of the applicant only, there being no requirement in the EPC to provide a date. I have often filed forms with no date where the information was not available, and no objection has ever been raised. I have only seen this explicitly stated in the answer to question 80 in Dr. Günter Gall's classic book for EQE candidates "European & International patent applications: questions and answers" [ISBN 0-85121-555-6; 1989 edition]. Dr Günter Gall was a Director of the EPO and evidently wrote with authority. I have had more knowledgeable inventors query the appropriateness of signing any sort of assignment of rights that he doesn't own because the invention belongs to the employer by virtue of UK law, and have then had to explain the USA [for example] doesn't recognise this aspect of UK law. Such assignments made in respect of a first filing are certainly useful when subsequently filing in the USA if the inventor is no longer contactable or become uncooperative, eg due to imminent redundancy.

Anonymous' knowledgeable inventors have a point, and this has always been my rationale for obtaining confirmatory assignments. It must surely be a fundamental principle that one cannot assign what one does not own, so a written assignment from an employee to an employer that already owns the invention by terms of a contract of employment must surely be void. The problem is not solved by writing the employment contract in such a way as to place the employee under an obligation to assign, because a subsequent assignment to another party, while being a breach of contract, will not necessarily enable the invention to be reclaimed by the employer (see, eg Stanford v Roche 583 F.3d 832 (Fed. Cir. 2009). As I understand it, the US law relating to employee inventions is basically the common law. The issue is not that the USPTO will not recognise that the employer owns the invention, rather it is the specific requirement that the inventor assign the rights reflected in the particular patent application, ie that a suitable assignment cannot be completed until the inventor has the actual filed specification and claims before her. A general assignment of the invention, and all notional future rights, will not suffice for this purpose. However, an assignment of a PCT application designating the US is fine (although it may take a little effort to persuade the USPTO to accept a document that is not in its standard form). An unavailable or uncooperative inventor remains problematic even if you have a suitable assignment document, because the USPTO cannot accept the filed application until it has an inventor's declaration, or a petition has been granted to allow the application to be accepted without the signed declaration. Though not a US attorney, for my sins I have found myself with clients in this situation, and it can be a lot of work to resolve.

"This and the related topic of failure to agree or document assignment of IPRs arise all too frequently. I have been faced with the challenge of "I paid, so I own" throughout my career. Here are 10 thoughts on this topic: 1. No one should believe that the law will come to their rescue if they do not document a written assignment and have it signed by the assignor and the assignee. 2. Assignments of IPRs are a perfect example of lack of global harmonisation. There is huge discrepancy between national laws as to what formalities are required - few require more than a written assignment signed by both parties. 3. The greatest density of disputes is between consultants and the corporations who hire them. The expectation is that IPRs in the "work product" automatically transfer. Big mistake. 4. English law enjoys equity, and can be persuaded to find an intention to assign (aka an equitable assignment). Hoping for this result is a lottery. In other parts of Europe, the odds are worse. 5. The position is not as random within an employee/employer relationship, because generally the first owner is the employer. However, at the edges ("course of employment") it is well worth documenting the position. In this context, do not assume that ownership is the end of the matter. Always think about attribution issues (such as moral rights) and economic reward (for exceptional contribution). 6. Failure to document the IPR position is statistically likely to create a significant commercial issue downstream. I have personally seen IPOs delayed, joint ventures stall and tens of disputes that frustrate and delay commercial exploitation. 7. The consolation prize in an ownership dispute is typically a licence. Within this one word, is a world of pain as the parties debate scope (field of use), term (for a project to perpetual), ambit (exclusive to non-exclusive), not to mention royalty. So whilst ownership is undoubtedly first place, bottom of the class will not get much at all. 8. Banks and investors still struggle to understand and value IPRs in the same way as tangible assets such as property and stock, so they scare easily. If chain of title and ownership is not clear, expect them to have significant concerns in all other areas such as validity and infringement. 9. Joint ownership looks like a good compromise. Normally it isn't. There is no global uniformity on the rights conferred on joint owners - and even within a jurisdiction it's different between the various IPRs. 10. Which means that I'm normally just so relieved to receive a confirmatory assignment, that I seldom have the energy to think about Neil's 10 questions - but now I will!"

Many interesting comments on assignments. Here is a further related issue, perhaps basic compared to a confirmatory assignment under the original fact pattern. Assume the inventor has executed an assignment to her employer for a US provisional patent application that includes assignment of all later applications, using standard language regarding assigning international applications, US, non-US applications. The assignment properly assigns the right to claim priority. Then a PCT application is timely filed that claims priority to this provisional. The PCT application includes new disclosure in the specification, including new examples, and new claims. Is a second assignment needed or does the assignment of the provisional suffice? For all jurisdictions? If a new assignment is needed, how is it worded to avoid the issue of 're-assigning' what has already been assigned in the provisional assignment? Seems one can only assign rights one has not already assigned away.

In answer to the last comment, yes, a new assignment is needed. An assignment has to relate to an invention, and if that invention is new, it cannot have been previously assigned. Equitably, yes, but then we argue over whether the new invention is actually covered.

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• Practical Law

Transferring intellectual property rights: avoiding the pitfalls

Practical law uk articles 2-504-4154  (approx. 11 pages).

• What IPR are from a legal perspective.
• The practicalities and consequences of the registration of registrable IPR transactions, and the due diligence to be conducted.
• How to identify the relevant IPR to be transferred.
• How to document the transfer.
• Some important issues concerning liability arising on the transfer of IPR.

Legal nature of IPR

Confidential information, community rights, registering assignments of ipr, administrative and costs issues.

• It was not practicable to register the assignment within the six-month time limit.
• The assignment was registered as soon as practicable thereafter.

Protecting mortgages and charges

Registered rights due diligence.

• Carry out an initial search of the register to check that the seller is the registered proprietor. Check for any earlier assignments to that seller and investigate thoroughly any such assignments and the circumstances surrounding them. If there are any such assignments, consider taking an assignment of the seller's causes of action for failure to deliver good title against his own seller (if any still remain).
• Carry out a second search on the morning of completion as the IPO/OHIM update their registers at midnight following each working day.
• Register the transaction on the day it completes, wherever possible, or as soon as possible thereafter.
• Require the seller to assign with full title guarantee (see " Liability " below).

Identifying the relevant IPR

• Identify the relevant registered IPR which are to be transferred.
• Produce a conceptual definition of the non-registered IPR which are to be included in the sale, such as "all the company's know-how (whether recorded or not) and documentation relating to the process of manufacturing xyz".
• Identify which (if any) of the IPR being transferred will still need to be used by the seller or its group after the transaction has taken place, and determine how such access is to be secured (this will usually require some form of licence back).
• Identify which IPR are not going to be transferred to the buyer, and consider whether or not to write to the buyer explaining precisely which IPR are not going to be included in such a sale and why. This can stop arguments occurring later as to what was meant to be included or excluded, and should also make an action for rectification (correction) of the assignment agreement much more difficult for the buyer to win.
• Properly instruct the seller's negotiating team and lawyers as to the matters above.

Documenting the transaction

Assigning by deed, method of assignment in a sale and purchase agreement, what should be assigned in an spa, country-specific agreements, patent attorney files.

• The person disposing of the IPR has the right to dispose of them.
• The person disposing of the IPR will do all he reasonably can do, at his own cost, to give the assignee the title he purports to give ( section 2(1), 1994 Act ).
• Charged or encumbered the IPR with any charge or encumbrance, which still exists at the time of the present disposition.
• Granted any third party rights in relation to the IPR, which still subsist at the time of the present disposition.
• Allowed anyone else to do so.

Excluding liability

Sale of goods act 1979, mortgages and charges of ipr.

• An outright assignment of the legal title in the IPR to the lender.
• A right of redemption; that is, the right to have the legal title transferred back to the borrower once repayment and other obligations have been fulfilled.
• Pending exercise of the right of redemption by the borrower, some form of licence back from the lender to the borrower to enable the borrower to use the IPR in its business.
• The charging clause.
• A transfer mechanism to allow the transfer of the IPR in the event of default.
• A range of negative obligations on the borrower not to grant conflicting security or other interests in the charged IPR.

Practicalities of assignment: an overview

Problems with the ipr registration system.

• Trade Marks
• Confidentiality
• United Kingdom

IP Assignments: Nunc Pro Tunc Assignments in Patent, Trademark, and Copyright Law

March 22, 2023 By John DiGiacomo

Like any valuable business asset, patents, trademarks and copyrights can be sold, assigned and licensed. Indeed, assignment and licensing is common with respect to intellectual property. In legal terms, an “assignment” is a transfer of ownership, either full ownership or partial. In basic terms, a nunc pro tunc is a type of assignment that is backdated. Nunc pro tunc is Latin meaning “now for then.”A nunc pro tunc assignment will be signed on a particular date, but parties will deem the assignment to have been granted on some earlier date.

For a Trademark registered on May 1, 2017, an example of how a nunc pro tunc assignment provision might look like this:

Now, therefore, for good and valuable consideration, ASSIGNOR agrees that ASSIGNOR hereby assigned unto ASSIGNEE nunc pro tunc effective as of October 1, 2020, all right, title and interest in and to the May 1, 2017 trademark described herein … In testimony whereof, ASSIGNOR, has signed this instrument this 1st day of October 2020.”

In this example, the assignment is deemed to have been granted on May 1, 2017, but has an effective date of October 1, 2020.

In business terms, nunc pro tunc assignments are often used where past IP assignments are made verbally or via conduct. In the rush to get IP “to market,” it is not uncommon for assignments to be granted, but not reduced to writing. Nunc pro tunc assignments are also commonly used to bridge gaps in the “chain of title” for IP. This can happen when corporations and/or assets are sold, but proper paperwork is missing. Purchasers believe that they have ownership to certain patents, trademarks, or copyrights, but the missing documents cause “gaps” in the chain of title. These “gaps” can be cured by obtaining a nunc pro tunc assignment from the original owner of the IP. In the same manner, nunc pro tunc assignments are often used as part of settlements for litigation involving claims of patent, trademark and/or copyright infringement or disputes over ownership

For litigation purposes, nunc pro tunc assignments are often used to give a party legal standing to initiate litigation. To have “standing” to initiate litigation, a party must have some ownership interest in the patent, trademark or copyright. However, for courts, “standing” is based on the effective date of the assignment, not the earlier date listed in the nunc pro tunc assignment.

However, for other purposes, the earlier assignment date listed in the nunc pro tunc assignment is the credited date. For example, an assignment of a registered trademark must be recorded with the US Patent & Trademark Office (“USPTO”). This is done electronically. The assignment must be uploaded along with the proper recordation form and applicable fee. For the USPTO, the trademark assignment is based on the date designated for the assignment rather than the date of execution of the nunc pro tunc assignment.

So, when should you use a nunc pro tunc assignment for a trademark? The most common situations include:

• When a trademark was previously assigned but not recorded – Sometimes, an assignment of trademark ownership may occur but the paperwork is not properly filed or recorded with the United States Patent and Trademark Office (USPTO). In this case, a nunc pro tunc assignment can be used to correct the oversight and retroactively assign the trademark to the new owner.
• When the original assignment was not effective – A nunc pro tunc assignment can also be used to correct a defective assignment. For example, if the original assignment was not properly executed or lacked essential terms, the nunc pro tunc assignment can be used to correct those issues and make the assignment retroactively effective.
• When there is a change in business structure – A nunc pro tunc assignment may be necessary when there is a change in the business structure of the trademark owner, such as a merger or acquisition. In this case, the new owner may need to retroactively assign the trademark to themselves to ensure that they have proper ownership and control over the trademark.
• When there is a dispute over ownership – If there is a dispute over the ownership of a trademark, a nunc pro tunc assignment may be used to resolve the issue. This can occur when multiple parties claim ownership of a trademark, or when there is confusion over who actually owns the trademark.
• When the trademark was abandoned – In some cases, a trademark may have been abandoned by the previous owner. If this occurs, a nunc pro tunc assignment may be used to assign ownership to the new owner retroactively. However, it is important to note that there are strict time limits for filing a nunc pro tunc assignment in these cases.

It is important to note that a nunc pro tunc assignment should only be used when there is a genuine need to correct an error or oversight in the assignment of a trademark ownership. It is not a tool to be used to cover up illegal or unethical behavior.

In addition, a nunc pro tunc assignment can be a complex legal process that requires the assistance of an experienced trademark attorney. The attorney can help ensure that the assignment is executed properly and in compliance with all legal requirements.

Contact Revision Legal

For more information, contact the IP and  business lawyers at Revision Legal at 231-714-0100.

Put Revision Legal on your side

Understanding a deed of assignment for intellectual property

A deed of transfer is used to change the ownership of intellectual property, a common occurrence in business. Explore how and when to use one.

Find out more about intellectual property basics

by   Brette Sember, J.D.

Brette is a former attorney and has been a writer and editor for more than 25 years. She is the author of more than 4...

Read more...

Updated on: November 24, 2023 · 3 min read

Understanding intellectual property in business

How to transfer intellectual property rights in business, what to include in a deed of assignment, registering new ownership, restrictions on intellectual property transfers.

Most companies have intellectual property as part of their assets, including software, product design, or copyright to white papers. Buying or selling such property is done using a document called a deed of assignment.

A large part of what a business consists of may be tied to intellectual property . It's easy to see physical property a company owns, such as a building, office furniture, or inventory, but intellectual property can be more challenging to identify.

Most businesses have intellectual property, or works created by human minds or, in some cases, by computers. Some examples of intellectual property include architectural drawings, ad campaigns, company or product names, inventions, and source code.

Examples of when transfers of intellectual property might happen include when a company is buying another company, when you are setting up an LLC and want to transfer your intellectual property into the company, or when a business buys product rights from another company or individual.

A deed of assignment can be done in one transaction, instead of one transaction for each item of intellectual property, by transferring all ownership rights of all intellectual property detailed in the deed. The document is signed by both the buyer and seller. No payment is required for it to be valid.

A deed of assignment must be in writing and should include:

• The names and addresses of the assignor and assignee
• A description of the program or product for which the rights are being transferred
• A statement that all intellectual property rights to the property are being transferred
• Signatures of the parties and the date of the agreement execution

The deed could also include the following sections, where applicable:

• Consideration, or payment, to be made to the original owner.
• Warranties, or promises that the intellectual property rights being assigned don't infringe on anyone else's intellectual property rights . For example, in a deed regarding the transfer of a copyright, this section could state that the copyrighted work is original and not owned by someone else.
• Indemnification, or promise by the seller to reimburse the assignee if there is some problem with title to the property.
• Future assignments. For example, the agreement could be ongoing, so that anything the assignor creates in the future for this product or program is also transferred to the buyer.

Although a deed of assignment transfers ownership in intellectual property , it does not change the registration of the ownership. The assignee is responsible for handling all registration requirements.

For example, if a patent is transferred via a deed of assignment, the new owner must record the change in ownership with the U.S. Patent and Trademark Office. Similarly, the transfer of a copyright is recorded with the U.S. Copyright Office.

Transfers of intellectual property must comply with U.S. laws. One obvious caveat is that you can't transfer property you don't own. Transfers must also comply with antitrust laws, which are set up to prevent one company from completely dominating an industry.

If intellectual property rights are being transferred overseas, the transfer must comply with Export Administration Regulations and the International Traffic in Arms Regulations , which are designed to protect national security and trade.

The deed of assignment can be a crucial part of a business deal or transaction. You can create a deed of assignment yourself, or you can work with an attorney .

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Inventorship, Authorship, Ownership: Employees and Patent/Copyright

Ownership of Inventions, Patent Rights by Employees Under the Patent Act , the inventor is the first person having the right to apply for a patent. In practice, where an invention has been assigned to a company, the company may apply for a patent in its own name by providing evidence of the assignment of rights from the inventor.

Who is an Inventor? An inventor is a natural person, not a company. There may be one inventor of an invention, or several. There are two requirements for inventorship: (1) conception of an idea, and (2) reduction of the idea to a practical form. A person who merely does testing under direction from others is not an inventor; nor is someone an inventor who merely suggests avenues for exploration, but does not participate in the development of the practical application.

Naming all inventors on a patent application is critical. There is some uncertainty in the law as to the effect of omitting names of inventors. At worst, omission may cause the patent application (and subsequent patent) to be void for material misrepresentation. At best, where co-inventors are all employees of one company (and the company is the applicant), the presumption is that the unnamed employee-inventors would have assigned to the company anyway, and there is not considered to be a material misrepresentation.

What is an Assignment? In an employment situation, the employee-inventor is considered to be the first owner of any patent rights, unless the employee was hired to invent. In theory, an employee must assign his/her invention to an employer for the employer to have any rights in the invention (including the right to obtain a patent). In practice, even in the absence of such an express assignment, an implied assignment is often deemed to exist, where an invention was made "in the course of employment".

The courts have interpreted "in the course of employment" on the facts of each case. Some of the factors tending to support an implied assignment include:

• inventor is a director or an officer of the company;
• use of company funds or equipment to do R & D on the invention;
• development (e.g. software) done on company time;
• inventor was hired in research, engineering, or experimental capacity.

Some of the factors tending to go against implied assignment include:

• development begun prior to or continued after employment;
• development with inventor's own funds or equipment (especially simple mechanical inventions);
• inventor does marketing or raises funding for invention;
• invention is not related to employer's business or inventor's specific job.

The situation is especially problematic with independent contractors. An independent contractor may be under a certain degree of control by the company and be treated almost like an employee, or an independent contractor may be considered to be acting completely autonomously from the company (and may be entitled to patent the fruits of his/her work without even having to disclose the patent application to the company). The presumption is that an independent contractor owns his/her own inventions, regardless of the circumstances surrounding the invention.

Practical Assignment Solutions Companies who rely on innovation in their business should have employees sign a general assignment on beginning employment, and inventors should sign invention-specific confirmatory assignments with each potentially patentable invention. Independent contractors, likewise, should be required to sign a general assignment as part of their engagement contracts, and should covenant to sign later confirmatory assignments of specific inventions as necessary.

Having an employee sign a general assignment is usually straightforward at the beginning of employment, when such a condition is presented in the whole scheme of compensation and benefits, and alongside other restrictions, such as non-competition covenants, and confidentiality obligations. In such cases, employment itself is sufficient consideration for the assignment. Such assignment clauses should contain at least:

• full assignment of any inventions which are invented in the course of employment or through use of the company's technology or resources; and
• an obligation to disclose inventions invented in the course of employment or through use of the company's technology or resources.

Other obligations may also be included in a thorough assignment (such as, further assurances and reasonable assistance in prosecuting patent applications).

Once employment has begun, it is more difficult to convince employees to sign specific assignments. Specific recognition or compensation may be offered, both to encourage individuals to assign patent rights, and to provide clear consideration for the assignment. Some companies have started specific innovation incentive programs for this purpose.

Even express assignments may be open to challenge, however. The validity of an assignment may be challenged by the person alleged to have signed, or it may be challenged by a third party (such as to attack the validity of the patent or the standing of a party asserting patent infringement). The recent decision of the Ontario Court of Appeal in Techform v. Wolda leaves open the possibility that later-date assignments may be challenged on the basis of duress or lack of consideration. That case held that there was sufficient consideration for the employee technology assignment in Wolda's continued employment/engagement. But the court was willing to consider the argument that continued employment alone would not be sufficient in some cases. The question is whether the company would actually terminate the employee, if the assignment is not granted. Duress is not likely to be an issue if an employee/contractor is given time to think over an assignment presented for execution, and the opportunity to avail him/herself of independent legal advice.

Rogue or Missing Inventors Difficulties may be encountered where an employee-inventor or co-inventor has left the company, or where an independent contractor relationship has ended on a sour note. An assignment agreement may be entirely rejected by such individuals, or they may try to hold the company for ransom. On occasion, an inventor may appear to have simply vanished off the face of the Earth.

Even in these circumstances, all inventors must be named in any patent application for the invention. Lead inventors should identify all those who worked on the invention and the roles they played. Former employees and contractors should be contacted for an assignment. If there is any doubt about whether an individual played an inventive role, an assignment should be obtained, if possible. If an inventor cannot be located, details of the search should be retained in the invention file. In the case of a "rogue inventor" who refuses to assign, efforts to get an assignment from the inventor (including, letters, follow-up telephone calls, e-mails) should be documented. The Patent Act provides a mechanism for proceeding with an application even in the event of a missing or rogue inventor.

In a worst case scenario, where none of the company's rights can be established vis-à-vis a rogue/missing inventor, the patent application may be limited to what can reasonably be claimed without that inventor's contribution.

Ownership of Copyright by Employees/Contractors Under the Copyright Act , there is a codified system of first ownership. The general rule is that the author (human creator) of a work is the first owner of copyright. However, if a work is made in the course of employment under a "contract of service", copyright belongs first to the employer. Case law has construed this provision strictly. Independent contractors and quasi-employees are not usually considered to be under a "contract of service". If the parties consider their relationship to be one of independent contractors for purposes of employment or tax law, they cannot treat it as an employment relationship for copyright purposes.

Questions may also arise as to whether works were created "in the course of employment". Depending on the nature of the employment relationship and the scope of the employee's duties, some works made by employees outside company time may be considered to belong to the company, while other works may be considered to be owned by the employee even if they were made on company time . As with the patent cases noted above, the copyright cases on this issue are all very fact-specific. Generally speaking, similar considerations will apply. Absent agreement otherwise, an independent contractor is always considered to own his/her own works.

Assignment of Copyright & Waiver of Moral Rights An explicit assignment is recommended, even in the case of employees, to clarify ownership of copyright. Under the Copyright Act , no assignment is valid unless it is in writing. Recognizing that it would be too cumbersome to have a specific assignment for every piece of company literature, each employee should at least sign a general copyright assignment as part of their employment agreement (generally included in overall IP rights assignment). Work-specific assignments might be executed for works of special magnitude or significance (e.g. software releases, technical or user manuals). Ownership of copyright should also be consistently marked in the standard notices on company documentation, web pages, etc. (e.g. © 2002, Creativeco Inc.).

When creative workers (such as programmers, web designers or writers) are hired on contract, there is a particular need to clarify copyright ownership. It is particularly important that these contracts should explicitly assign copyright in any work product created during the term of the contract.

Moral rights also attach to works subject to copyright. The most significant of the moral rights in a literary work are the right of integrity of work and the right to attribution. The company may want the right to modify (or edit) a work after the fact. The company may also want to avoid having to name the author(s) of a work, especially if it is a group effort or if one author is no longer with the company. Therefore, all authors, whether employees or contractors, should be asked to waive their moral rights. Moral rights cannot be assigned but can be waived in favour of another party in whole or in part. It is good policy, even in the presence of a waiver of moral rights, to reasonably and properly attribute works to their authors, to the extent it is practical to do so. It goes without saying that there should never be deliberate misattribution or plagiarism.

Experienced IP lawyers can help in assessing inventorship/authorship issues, crafting effective assignments and reviewing IP terms in employment agreements for innovative companies.

Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.

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Transferring ownership/ Assignments FAQs

Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

Show all FAQs

• Browse FAQs

Transferring Ownership / Assignments

• Transferring Ownership / Assignments, Procedures

You may contact the Assignment Center customer service desk at 571-272-3350 from 8:30 a.m. to 5 pm ET Mondays through Fridays, except on federal holidays. You may e-mail questions about electronic filing to [email protected] .

No. All documents that meet the minimum requirement in 37 CFR 3 are processed and recorded. Persons buying or selling properties should be sure that there is an accurate chain of title in place before submitting recordation requests.

No, these forms are not mandatory. However, the USPTO strongly encourages their use. Completing the forms in their entirety ensures that all the required information for recordation has been sent to the office. The forms are available in PDF-fillable format on the USPTO Forms page , thus making them quick and easy to prepare.

When these forms are received in the USPTO, they are scanned along with the supporting documentation. The bibliographic data from the cover sheet is then entered into the PTAS system and the documents are processed.

Payment may be made by use of a check, credit card, money order or USPTO deposit account if submitting documents in paper. Trademark assignments submitted electronically may be paid by credit card, USPTO deposit account or electronic fund transfer (EFT). The USPTO accepts VISA, MASTERCARD, AMERICAN EXPRESS and DISCOVER credit cards.

>> see How to Pay Fees for a current fee schedule and for more about fee payments

Essentially the rules:

(1) specify the minimum information about the transaction that must be submitted;

(2) require submitters to submit this information of a separate cover sheet; and

(3) specify that submissions must be legible and of such quality to permit processing; and

(4) pay the proper recording fee.

The rules permit submission of true copies of assignment-related documents; original documents are not required nor desired, as they will not be returned.

The Assignment Recordation Branch in the Public Records Division processes and records assignment documents for both patent and trademark properties.

Additional information about this page

OTC Guidance for Copyright in Software and Other Works

From the moment you create an original work, the work is protected by copyright. OTC advises that you include the following copyright notice on the works you create at UNC:

“© YYYY, The University of North Carolina at Chapel Hill. All rights reserved.”

(Note: YYYY means the year of first publication)

This means that you and UNC can make the work available for others to view while maintaining control over its use and ensuring attribution.  A commercialization manager (CM) from UNC’s Office of Technology Commercialization (OTC) will work closely with you to identify and implement your goals for allowing others to use software, videos, assessments, content, educational tools or other works you create at UNC. OTC cannot support UNC researchers with management of personally owned scholarly works (textbooks, journal manuscripts, works of art…). However, the UNC Libraries provide support through the Scholarly Communications Office and as a host of the Peer to Peer Copyright Network.

Contact OTC at [email protected] or the CM you work with if:

• A company wishes to use your software, video, content or other work, or
• You wish to use such work outside of UNC for commercial purposes, or
• You wish to release such work open-source or place it in the public domain

Distribution of Software/Copyright

The discussion below pertains to software, content, assessments, videos, tools, etc. that are owned and distributed by UNC.

Giving others permission to copy, modify, and/or distribute or otherwise use the work is accomplished through licensing. There are a variety of license types and distribution strategies. The CM will work with you to discuss your goals for distribution and identify the appropriate license. Generally, one or more of the following licenses are used:

• Single copy use
• Copy, Display or Distribute, but not Modify
• Copy, Display, Distribute, and Modify
• Commercial Evaluation License
• Commercial Use License
• Open Source Software Licenses

A. Non-Profit Research or Educational Use

If you wish to make a work available for non-profit research or educational purposes, please reach out to your CM or OTC at [email protected] for assistance. The CM will work with you to determine i) if your research funding allows such distribution, ii) if approval by your UNC department or the research sponsor is needed, and iii) the most appropriate copyright and permission notice to achieve your goals. The most common situations are described in more detail below:

1. Single Copy Use. Typically, the work in these cases is a research or educational tool and the UNC researchers wish to allow others to make a single copy of the work for individual use while teaching or conducting research. In this case, the work is usually made available either from the faculty researcher’s or department’s webpage or a distribution platform. This copyright notice makes clear the limits of such use:

“© YYYY, The University of North Carolina at Chapel Hill. Permission is granted to reproduce a single copy for not-for-profit research and educational use only. All other rights reserved”

A template copyright notice for “single use” can be found here . Please consult with your CM or OTC before using this notice.

2. Copy, Display or Distribute, but not Modify. Certain copyright materials are most useful when displayed in a setting where the end user is more likely to find them (for example, education videos or brochures). The CM will work with you on the best language to add to the copyright notice to allow others to display or distribute the work. Things to consider in granting display and distribution rights are:

• Retaining copyright notice when the work is copied or displayed in non-commercial settings
• Requiring attribution if the work is cited in others’ research publications
• Preventing others from modifying evidenced-based works
• Limiting UNC’s liability for others’ use of the work
• Receiving feedback regarding others’ use of the work
• Preventing misuse of UNC’s name, relabeling or co-branding

3. Copy, Display, Distribute, and Modify.  If in addition to the permissions granted under Section 2 above, UNC can also give others permission to modify the work.

B. Commercial Evaluation License

If a company wishes to evaluate the software to determine if they wish to license it, the CM will negotiate an “evaluation license” with the company that allows them to use the software internally for evaluation purposes only for a limited time period.  If the company elects to continue to use the work commercially, the CM will negotiate a commercial license with the company.  A commercial copyright license is discussed in the following section.

C. Commercial Use License

The OTC CM negotiates commercial license agreements with companies for software and other works created by UNC researchers. It is common for OTC to license software, videos, content, assessments, evaluation tools, and other works both non-exclusively and exclusively depending upon the nature of the work and the desires of the UNC researchers and commercial partners.  Typically, non-exclusive licenses are negotiated when the software and other works are research tools or general software that can be used in various applications or games and exclusive licenses are negotiated when software is specific to a medical device or services provided exclusively by the company and when a publisher wants exclusive rights to tangible works like videos, images, and content.  Exclusive licenses are often important to startup companies and copyright is included in the Carolina Express License. The CM will work closely with you regarding requests of the licensee during the negotiation, notify you when the agreement is finalized, and keep you informed of license status.  Whether exclusive or non-exclusive, sometimes compensation in a software/copyright license is delivered as an upfront one-time payment or an annual license fee rather than as sales-based royalties. Any license revenue OTC receives from commercialization of software and copyrightable works will most often be shared 40% (authors), 40% (department), 20% (OTC).

D. Open Source Software Licenses

Please contact your CM or OTC to discuss open source licensing strategies. The CM will work with you to determine which open source license is appropriate for the work. It is possible to make software and other works available open source for research purposes and not for commercial purposes under certain licenses.

OTC is supportive of open source licensing; however, before choosing to distribute via open source, you should confirm that any co-authors or sponsors of the software will agree to an open source distribution model. Often there is a standard open source license used by researchers in your specific field of research.  If your software contains other “open source” or “free” software, or any software that you have downloaded, used, copied, linked, or have been provided by a third party, you must identify these codes and their licenses and work with the CM to understand the license terms under which that software has been provided. The CM can assist you with understanding these terms and finding suitable open source licenses.

Once third-party rights, if any, are resolved, there are numerous open source license models from which to choose, including those approved by the Open Source Initiative (“OSI”). However, any license that releases the source code without a required payment is an open source, or sometimes called “shared source,” license. A complete list of OSI approved licenses can be seen at www.opensource.org/licenses .

Related Matters/Additional Support:

OTC and your CM are available to assist you with any of the following matters:

Copyrighting Software vs. Patenting Software

In general terms, a patent protects an idea and a copyright protects an expression of an idea. In the case of software, copyright protects the source and object code, but only protects the code as it is written. A patent conveys the right to prevent others from making using, selling or importing a program that performs the same function or process as the patented software, even if the code is entirely different from the patented software.

It is possible to protect some software under both copyright and patent law, and the CM and OTC will work with you to determine the most appropriate form of intellectual property protection.

UNC ownership of copyright/software created by outside company or consultant “work for hire”

It is common for UNC researchers to hire or work with an outside contractor, company, or friend to write software or create videos or other digital works under a purchase agreement or research grant subcontract. In this situation, it is important that UNC own the work created by the outside party so that control of use and distribution of the work is consolidated within UNC. When working with UNC’s Purchasing Office or Office of Sponsored Research, you should remind them to include “work for hire” language where appropriate. If the outside party is not being compensated, it is still important to have “work for hire” language in a written agreement with the outside party. Your CM and OTC are available to discuss the details of your situation and advise you about these matters.

Collaborative Works

Some works are created jointly by a team of researchers over many years, and it may be impossible to identify all the individuals who authored to the work. When OTC has commercially licensed such collaborative works in the past, license revenue is distributed to the department or center that supported the development of the work. You are advised to discuss commercialization of collaborative works with your department or center leadership prior to or concurrently with contacting your CM or OTC.

Copyright Assignment to UNC

Prior to UNC granting a software or copyright license to any third party, OTC must have confirmatory copyright assignments executed and on file for all authors of the work. This is analogous to the patent assignment executed by inventors listed on patent applications. The confirmatory assignment documents UNC’s ownership such that OTC can execute the appropriate license agreement to distribute the work in the manner we agree to. Except in limited cases, University ownership does not affect your status as an author of a work of copyright, including your right to be cited as the author of the work. You may continue to use the work in your research and teaching activities at UNC and, as an author, you will receive a share of any revenue received by the University resulting from the work’s commercial licensing (currently 40%; if the work has more than one author, the 40% is split equally among authors, unless agreed to otherwise).

Supplemental Disclosure for Software/Copyright

If you are working with a CM to license software, you will be asked to complete a supplemental software/copyright disclosure, the purpose of which is to define the works to be licensed in more detail (i.e. list files, videos, documents, etc.), identify the authors, and identify any third-party works included in the work created at UNC. This information is necessary before UNC can grant a license to the work.

Template for Supplemental Disclosure for Software/Copyright

Specific Software/Copyright Situations:

Speak with OTC and your department leadership prior to engaging in the following situations, which may require COI review and management, depending upon the details of each specific circumstance:

• Using software or works (other than purchased or open source products) from a third party in your research or teaching efforts
• Using software or works you created at UNC for commercial purpose
• Using software or works you created outside UNC for any purpose at UNC
• Using students to evaluate, edit, or provide content to the works you create

Copyright Ownership

Copyright ownership is addressed in both UNC’s Copyright Policy and Patent and Invention Policy . The factors considered in determining ownership of copyright under these policies focus on the circumstances under which the work was created, the nature of the work, and the employment classification of the author(s). Please contact your CM or OTC if you wish to discuss copyright ownership.

If you wish to make a claim of ownership for a specific work other than for strictly scholarly works (textbooks, journal manuscripts, works of art…), the first step is for you to submit a copy of the specific work to UNC’s OTC for review and determination of ownership. There are practical considerations of UNC and individual ownership of works, as discussed below. In general:

UNC-owned works:

• You may further develop, evaluate, or conduct research using the work within UNC.
• UNC resources may be used to copy, distribute, or host the software/work.
• You will receive a percentage of license revenue UNC receives under revenue bearing licenses negotiated by OTC.
• UNC’s OTC and Office of University Counsel are available to address any matters or disputes regarding copyright.

Individual owned works:

• You must maintain a visible separation between your use of the software/work outside UNC and use of the software/work in your research or teaching at UNC.
• UNC retains the right to use the software/work for its own educational and research purposes.
• If you continue to use the software/work at UNC, you and your department must ensure that conflicts are always managed or eliminated (including, but not limited to, avoiding situations where students or collaborators are expected to use the software/work).
• UNC resources may not be used to copy, distribute, or host the software/work without prior approval from your department leadership and possibly COI review and management.
• You should not have UNC faculty, students, or staff edit, modify, evaluate or beta test the work.
• UNC’s OTC, Office of University Counsel, and any other resources are not available to address any matters or disputes regarding the copyright.

Guidelines for Ownership of Copyright

The information in the table below is provided as a general summary of copyright ownership under UNC’s Copyright Policy and Patent and Invention Policy . Find more information about open access and scholarly works .

Trademark Protection

If you would like more information about trademark protection or would like to pursue trademark protection, contact Lee Bollinger, Associate University Counsel.

Assignments overview and pitfalls to beware!

03 December 2012

Many patents will see a change in ownership at some stage in their lives. Assignments are commonplace and occur for a variety of reasons; for example, in the context of a business sale where a buyer purchases all of the assets (including intellectual property assets) of a business from the vendor. Another is in the context of intra-group reorganisations.

Assignments can also occur as part of settlement of a dispute. This article outlines some of the pitfalls of which you should be aware when assigning patents; many of which can be averted by careful drafting of the assignment agreement.

Unless the assignment is intra-group, there will usually be some distance between what the assignee wants (typically, a variety of representations, warranties and indemnities in respect of the assigned rights) and what the assignor is prepared to give. This is a commercial decision and hence no two negotiated patent assignments will be identical.

Consideration

Under English law, to be a valid contract there must be consideration which is either money or money's worth. This is often overlooked but a key point required for the assignment agreement to be legally binding. Whilst the acceptance of mutual obligations may suffice, it is simplest to have a sum of money (even if only for £1). An alternative is to execute the assignment as a deed, though there are specific formalities which must be followed for the agreement to be a deed. Of course, if the parties agree to nominal consideration (eg, £1), it is important that this small amount is actually paid to the assignor.

An assignment of a UK patent (or application) must be in writing and signed by the assignor. It used to be the case that an assignment of a UK patent (or application) would need to be signed by both parties, however the law was changed in 2005. In reality, both parties will usually sign the assignment agreement. Where one or both of the parties is an individual in their personal capacity or a foreign entity, special 'testimonial' provisions are required; for example the signature to the assignment may need to be witnessed.

The assignment

English law distinguishes two types of assignment: legal and equitable. To assign the legal interest in something means that you have assigned simply the title to that property and not the right to exercise the rights inherent in it. This is the equitable (beneficial) interest and if this is not also assigned with the legal title, this can result in a split in ownership. Unless the parties specifically agree otherwise, legal and beneficial ownership should always be assigned together. It is possible to have co-assignees (ie, co-owners) but the terms of the co-ownership will need to be carefully considered.

It is possible to assign the right to bring proceedings for past infringements in the UK, but not in some other jurisdictions. Where non-UK rights are involved, local advice may be required as to whether such an assignment would be enforceable as against a prior infringer. This potential uncertainty makes a robust further assurance clause even more desirable (see below), to ensure the assignor's co-operation after completion of the assignment.

The assignee will also typically argue for (and the assignor will typically resist) a transfer with 'full title guarantee', as this implies as a matter of law certain covenants: that the assignor is entitled to sell the property; that the assignor will do all it reasonably can, at its own expense, to vest title to the property in the assignee; and that the property is free from various third party rights.

In terms of European patents (EP), it is important to remember that ownership of an EP application is determined under by the inventor/applicant's local law, rather than under European patent law. This means that a formal, written assignment agreement should be executed to ensure that the applicant is entitled to ownership of the patent application, for example in cases where the work undertaken was done by a consultant or where local law dictates that the owner is the inventor(s). An assignment should include assignment of the right to claim priority, as well as the right to the invention and any patent applications. This need to obtain an effective assignment of the application (and right to claim priority) is particularly important where a priority application has been made in the name of the inventor. If such an assignment is not executed before applications which claim priority from earlier cases (for example, PCT applications) are filed, the right to ownership and/or the right to claim priority may be lost.

Don't forget tax

Currently, there is no stamp duty payable on the assignment of intellectual property in the UK. However, particularly for assignments which include foreign intellectual property rights, there can be considerable tax implications in transferring ownership of intellectual property rights in some countries and it is always prudent to check that the transfer will not result in excessive tax liabilities for you.

Update the register

Registered rights need to be updated at the patent offices. You will need to decide who pays for this: in the case of one patent, it is a simple process, however in the case of a whole portfolio, the costs can be considerable. Remember, if you ever need to take any action on a patent you own, you need to ensure you are the registered owner of that right at the applicable office.

In the UK, assignments can be registered but there is no statutory requirement to do so. In the case of international assignments, local offices may require recordal of the assignment. In any event, it is desirable for an assignee to ensure that the transaction is recorded. Section 68 of the UK Patents Act provides that an assignee who does not register the assignment within six months runs the risk of not being able to claim costs or expenses in infringement proceedings for an infringement that occurred before registration of the assignment, although recent case-law has reduced this risk somewhat.

Further assurance

The assignee will typically take charge of recordals to the Patents Offices; however they will often need the assignor's help in doing so. A 'further assurance' clause is a key element of the assignment from an assignee's point of view both for this purpose and for assisting in the defence and enforcement of patents or applications for registration. On the other hand, the assignor will typically seek to qualify its further assurance covenant by limiting it to what the assignee may reasonably require, and that anything done should be at the assignee's expense. An assignor should also require that recordals are done promptly to minimise their future correspondence from patent offices.

International transactions

In transactions which involve the transfer of patents in various countries, the parties can execute a global assignment which covers all the patents being transferred, or there can be separate assignments for each country. The former, global assignment, is usually preferred however this will frequently need to be supplemented by further confirmatory assignments in forms prescribed by the relevant international patent registries. As noted above, the preparation and execution of such assignments can be time-consuming and costly, hence the need to decide in advance who bears the cost of such recordals, and the assignee should insist on a further assurance provision.

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https://www.nist.gov/iedison/iedison-organization-user-guide/generating-and-uploading-confirmatory-license

Generating and Uploading a Confirmatory License

A Confirmatory License (CL) may be required by the funding agency pursuant to 37 CFR 401.14(f)(1).  A CL is a document signed by the grantee/contractor that confirms the rights that the government has in the invention.

A CL can be generated directly from the iEdison record (instructions below). You should confirm that the information in iEdison matches your patent filing before generating the CL.  Autogenerating from the iEdison record will ensure that the information listed in the CL matches iEdison.  The CL should then be signed, and the signed copy uploaded into the patent record.

To generate and upload a Confirmatory License (CL), complete the following steps:

• Navigate to the "Supporting Documents" panel of an Invention Report.
• Click the "Generate" button in the Confirmatory License section.
• Review the auto-generated Confirmatory License.
• Sign the Confirmatory License.
• Upload the signed Confirmatory License.
• Save the Patent Report.

1. Navigate to the "Supporting Documents" panel of an Invention Report

2. Click the "Generate" button in the Confirmatory License section

When you click the "Generate" button, a Confirmatory License will be generated as a PDF, with information auto-populated from the Patent Report. Your browser will either automatically download this PDF to your default downloads directory or prompt you to save the file to a preferred location, depending on your browser and settings.

3. Review the auto-generated Confirmatory License

Carefully review the information contained in the auto-generated Confirmatory License PDF, checking for accuracy. If any information is incorrect, modify and save the Patent Report and click the "Generate" button again to produce a corrected Confirmatory License.

4. Sign the Confirmatory License

Once you have verified the accuracy of the Confirmatory License, it must be signed by an authorized signatory at your Organization. Digital signatures are permitted so long as it is with an official service, such as Adobe Sign.

5. Upload the signed Confirmatory License

Before uploading the signed Confirmatory License, complete the "Confirmatory License Execution Date" field.

Click the "Choose Confirmatory License" button to locate and upload the confirmatory license on your local device or you can drag and drop your file into the dashed-line box next to the button.

6. Save the Patent Report

Click the "Save Patent Report" button at the top of the window. A popup window will ask you to confirm. Click the "Confirm" button.

The funding Agency will be notified, and they will review the CL document. Once the Agency has either approved or rejected the CL, you will be notified. If the CL is rejected, a comment will be posted with an explanation of what is needed for the document to be approved.

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Confirmatory assignment

4.3 contractual regimes, 4.5.6 confirmatory assignment.

Despite a valid assignment and an unbroken chain of assignments from each of the inventors, it may still be necessary to execute a formal type of assignment when filing a patent application for the invention, and to submit it to the patent office at the time of filing or shortly after. Namely, some of the world’s patent offices require an applicant to provide a signed assignment document(s) from the inventors to prove the entitlement to apply for a patent for the invention. When the actual assignment of the rights has already taken place in a valid manner, in compliance with the relevant statutory requirements or as part of an employment agreement, this document is merely a formality, a “confirmatory assignment”. As such, it can be used to “confirm” an automatic (and unwritten) assignment from the inventor in such countries where the rights to the employees’ inventions automatically belong to the employer, such that has purportedly taken place at some prior point of time, and to convert it to a written form. This could be important for example for due diligence purposes if prior to a planned transaction including a specific patent no written evidence can be found of the assignment of rights to the invention. A confirmation of the assignment may be required as a condition which must be fulfilled before completing the transaction. Confirmatory assignments are also frequently used, even if a written assignment already exists, when the parties do not want to disclose the assignment document in a public file wrapper. For example, an employment agreement also contains sensitive information, such as the inventor’s salary. The confirmatory assignment is also commonly used to record such non-employee assignments where the commercial terms of the assignment are to remain confidential. But it is also in the interest of the patent office to receive a separate, simple assignment document for the purposes of applying patent and documenting title, instead of complex and diverse assignment agreements, addressing also other matters beyond IP rights.

368 A broken chain of the rights regarding some of the inventor’s part leads to an invalid assignment and can be used in invalidating all or some of the claims as in the referred UK court case.

In most jurisdictions there is no clear statutory basis for the confirmatory assignment. It is, however, clear that the confirmatory assignment, when executed in writing, is proof of the transfer of the rights from the assignor to the assignee. However, timewise, does the confirmatory assignment have the effect of ratifying the unwritten transfer of the rights having taken place at some prior point in time, or does it merely serve as a piece of evidence for the transfer of the rights effective as of its execution date? The answer can have a significant impact on the patent rights, as was seen in the UK case concerning the rights at the time of seeking a priority right. Given the uncertainty of the legal effect of the confirmatory assignment, in respect of the effective time, it would be wise to always have a written assignment in place already at the time of the actual rights transfer.

In the U.S. the confirmatory assignment is a statutory matter:

35 U.S.C. § 261

Subject to the provisions of this title, patents shall have the attributes of personal property.

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.

An assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a 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. 369

The provision requires that apart from patent applications, also assignments are to be made in writing. This does not exclude the option to submit a written employment agreement as “an instrument in writing” but as concluded, a separate document might be a more appropriate option. Further, the provision states that an assignment shall be void against any subsequent purchaser or mortgagee, unless the assignment is recorded in the Patent and Trademark Office within three months from its date or prior to the date of the transaction. In the event that the assignment is not recorded within the defined time, then the assignee assumes the risk of having its rights transferred to a subsequent bona fide purchaser or a lender acting without a notice of assignment. That is, the law protects a third party who is in the belief that the assignee in the patent office records is up to date and no subsequent assignment has occurred. It should be noted that a confirmatory assignment, unlike for example a statutory assignment according to the relevant employee invention law, typically needs to be 369 35 U.S.C. § 261; Emphasis added.

signed by the inventor(s). 370 Thus, unless the employer provides to the patent office documentation such as employment contracts, the employer needs to have the inventor sign the necessary documents to be able to apply for a patent for the invention made by the employee. The inventor might have a duty to do so based on the clause in their employment contract. In Finland this duty has been set in the Decree on the Right to Employees’ Inventions371 :

When the rights to an invention made by an employee have under the Act on the Right to Employees’ Inventions (656/1967) (--) been transferred to the employer and the employer intends to apply for a patent for the invention, the employee shall sign

an assignment concerning the transfer of rights and any other documents that may be required in the patenting process, except where the employee considers that the

rights to his invention have not passed to the employer.372

What if despite such a duty the inventor refuses to sign the assignment, or the inventor has left the company, moved abroad, and is not reached? In the U.S., for example, a diligent effort must be made to locate and have the inventor(s) sign. Nevertheless, if their efforts are unsuccessful then showing “sufficient proprietary interest” can justify filing without a signature, on behalf of such non-signing inventor(s). Further, the oath or declaration in such an application needs to be accompanied by a petition including proof of the pertinent facts, to show that such action is necessary to preserve the rights of the parties or to prevent irreparable damage.373

In general, an assignment document shall contain sufficiently identified parties and the object of an assignment, in order to address who has assigned which invention to whom. The document also typically contains the basis for the assignment, for example such as a reference to “past and continued employment”, which can have the function of also being consideration for an assignment. Namely, a generally recognized principle in the contract law is that in order for any agreement deemed to be legally binding, each party must gain some benefit of entering into it, i.e. “consideration”.

370 Signature requirements vary with each country, though. For documenting purposes it is always better to request signatures from inventors.

371 Finnish Decree on the Right to Employees’ inventions (527/1988, amendments up to 1218/2000). 372 Decree on the Right to Employees’ Inventions 1§; Emphasis added.

• Pitfalls in the patent management process from
• Multi-regime intellectual property management
• Multinational company as an innovation ecosystem
• Research methods and tools
• Research questions
• Why patenting?
• Who owns the invention?
• Conflict of laws from the patenting aspect
• Hasn’t harmonizing the patent system solved these conflicts?
• Managing the complex of laws – a piece of cake, or not?
• Requirements of patentability
• Patent restrictions
• Patent validity and possibilities to utilize the patent
• Ownership as a property right
• Time Requirement
• Form of acquisition of patent rights – case
• Managing inventions in statutory regimes
• Post-employment assignment
• Substantive effect of timing on the validity of
• Confirmatory assignment (You are here)
• Different ways of crediting employed inventors
• Valuable patent (UK)
• Reasonable remuneration (FI, JP)
• Statutory amount (CN, RU)
• Agreeing on compensation
• Managing inventions in a disharmonized compensation

Related documents

Assignment 10

Exercises are taken from the textbook chapters. Maximum score for this problem set is 26 points. The due date for this problem set is Wednesday, May 1, 2024.

• Exercise 5.3: 16 points
• Exercise 10.5: (a) 5 points (b) 2 points (c) 2 points
• Feedback survey : 1 point. After submitting the survey, you will receive a "keyword." Write the keyword at the end of your written submission, so that we can verify who completed the survey. Do not worry, the survey is anonymous!

If you do not have a Gradescope account, you will be required to create one. Please use your @mit.edu email to register. Then look for class 6.8210 Underactuated Robotics , and join using the access code we provided in Piazza.

You will have to make two submissions for this problem set:

• Problem Set 10, Written Submission . A pdf of your answers to the written questions. This can be either LaTeX, Word, or hand written (in the latter case, be sure it is legible!).
• Problem Set 10, Notebook Submission . The final version of your notebook footstep_planning_gcs.ipynb . It can be downloaded from Deepnote after you finish to work on them. Please double check that the notebook you are submitting have exactly this name and extension.

In our testing, Gradescope will give you a grade within approximately 1 minute. You can resubmit as many times as you like before the deadline.

Note that, to fasten your workflow, we added an autograding cell directly at the end of each notebook. However, this does not replace Gradescope: you still need to complete the "Notebook Submission" when submitting your assignment.