patent assignment cost

A license is a grant (assignment) to the licensee of various licensed rights.  The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another.  Thus, the first recordation of a license may be recorded as a “license,” while the assignment of those same licensed rights to another entity may be recorded as an “assignment.”  The only way to really understand the situation is to review the actual documents, which are all readily available from the recordation branch of the patent office.

Note that the patent office sometimes refers to licenses as a species of assignment.  That is correct, because one is assigning license rights.

Not necessarily.  Assignments are only needed if you are contractually obligated, by employment or otherwise, to make the assignment.

An important corollary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name.  Investors are usually unhappy with that arrangement, but there can be significant advantages.  One major advantage is that the patent holder is a “necessary and indispensable” to any litigation over patent validity.  Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.

Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications.  See the previous FAQ.

Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications.  That is a dangerous strategy.  In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company, or divorce.

It is not technically necessary to re-file assignments for divisional or straight continuation applications.  A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.  Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee.

Absolutely.  Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues.

Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office.

Note that the office charges US$ 40 for each patent or patent application listed on the recorda­tion form.  Thus, if an assignment references a family of 5 patent applications, the recorda­tion fee is US$ 200.  Of course paralegal charges would also apply, and possibly attorney time.

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment.  The statute is similar to recording statutes used for recording real property.  Thus, although there is no requirement to record an assignment, it is foolish not to do so.

Note that absent some unusual circumstance, patent assignments do not have to be notarized for use within the United States.

Preparing assignments is usually a simple matter of filling in the blanks of a form.  Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in  Strategic Patenting .

Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document.  The recording branch does not generally read the documents to verify the content.

The Patent office will proceed as if the signature had been procured from the inventor, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached.  Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights.

In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished.  Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact.

One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form.

In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees).

It depends on the wording of the assignment and the recordation laws of the foreign countries.  Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications.  Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country.

Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments.

Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office.  Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages.

The main disadvantage to recording assignments is that many countries (including most or all of Europe) consider assignment of a patent or application to be a taxable transfer, and charge VAT (Value Added Tax) on the estimated value of the application or patent.  Since the value is often low in the early days, and can rise considerably during the life of the patent, the disadvantage of recordation can be mitigated by registering early.

Assignments records at the USPTO are available for  public inspection , but only for patents and published applications.  One can search by reel/frame number, patent or publication number, and assignor or assignee name.

The underlying documents are not available for download, but can be ordered from the assignment branch.  Paper mail requests can take months, but faxed requests are usually filled within a day or two.

No.  One should never rely upon the designation of “assignee” as set forth on the face of a patent.  First, the patent office obtains the “assignment” information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct.  The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment.  Second, the patent is never altered after it is published.  Information that was correct at one point in time may well be superseded down the road.  Third, even if the “assignee” information is correct, one cannot know from the face of the patent what rights were assigned.  It might well be that only licensed rights were assigned, or that such rights are subject to a reversion.

Yes. But there can be real problems with multiple owners of a patent. Unless there is some other agreement restricting what an entity can do with its ownership interest, a co-owner of any portion of a patent, (whether 99% or 1% or .0001%), can make use of the patent however they want.  For example, a .0001% owner of a patent could license out its rights, and keep 100% of the license fee.  Absent an agreement to the contrary, there is no duty of a co-owner of the patent to share license fees with any of the other co-owners.

One of the big problems with two entities owning portions of a given patent is that the two entities can compete with each other with respect to license fees. For example, if co-owner A offers to license the patent rights for 7%, co-owner B might choose to undercut the previous offer by offering to license the same rights for 5%.  But then co-owner A comes back and offers to license the rights for 2%. Pretty soon the value of the license rights goes to zero.  Also, if co-owner A gets upset with co-owner B, co-owner A could unilaterally abandon the patent, which would make it worthless to everyone.

Even if co-owners agree to share license fees 50-50, there can be problems.  For example, co-owner A could decide to license out its patent rights for one dollar a year to a licensee that co-owner A owns, has an interest in, or perhaps has a relative with an interest in.  Of course co-owner A would be happy to share $0.50 of its annual license fee with co-owner B, but co-owner B would be pretty upset.

Still further, if there is a chain of patents, for example with a parent and a child patent in the same family, the ownership of both patents has to remain to the same at all times.  If, for example, both a parent patent and a child patent are 100% owned by A, assignment of some or all of the child patent to B will immediately invalidate the child patent.  Even if such an assignment is made, and the parties realize the mistake, reassigning the child patent back A would not cure the mistake. The child patent would remain abandoned.

Bottom line, co-ownership of a patent is really problematic.

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Patent Assignment: Everything You Need to Know

A patent assignment is an irrevocable agreement for a patent owner to sell, give away, or transfer interest to an assignee, who can enforce the patent. 6 min read updated on January 01, 2024

Updated November 5, 2020:

Patent Assignment: What Is It?

A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue others for making or selling the invention or design.

There are four types of patent assignments:

Assignment of Rights - Patent Issued: This is for patents that have already been issued.

Assignment of Rights - Patent Application : This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.

Assignment of Intellectual Property Rights - No Patent Issued or Application Filed: This is for unregistered inventions with no patent.

Exclusive Rights

Advantages of a Patent Assignment

Assignees don't create a unique invention or design. They also don't go through the lengthy patent process . They simply assume exclusive rights to intellectual property.

Profit Potential

Many patents cover intellectual property that can earn the owner money. A patent owner can charge a lump sum sale price for a patent assignment. After the transfer, the assignee can start to earn profits from the patent. Both original owners and assignees can benefit from this business arrangement.

Disadvantages of a Patent Assignment

Too Many or Not Enough Inventors

Patents can have multiple owners who invented the product or design. Sometimes patents list too many or not enough inventors. When this happens, owners can argue about an incorrect filing. This kind of dispute can make a patent assignment impossible.

Limited Recourse

Older patents may already have many infringements. Not all patent assignments include the right to sue for past infringements. This is known as the right to causes of action. This can cost the assignee a lot of potential profit.

Examples of What Happens When You File a Patent Assignment vs. When You File a Patent License

When You File a Patent Assignment

The patent owner changes permanently. You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public.

Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits.

When You File a Patent License

The patent owner doesn't change permanently. Most licenses have a time limit. At the end of the period, the original owner takes control again. Licensing information isn't always available through an online USPTO search. Contact the recordation office directly to get information about patent licenses.

The licensee can assign rights to another person or company. This adds another layer of ownership over the intellectual property.

Many owners charge royalties for a patent license. The licensee pays royalty fees throughout the license period. If the royalty fees are high and the license period is long, a patent assignment may be a better choice for earning the new owner more money.

Common Mistakes

Not Filing an Assignment Document

A verbal agreement is not official. File a patent assignment to change patent ownership.

Taking Action Before Filing

The assignee shouldn't make or sell the invention before the patent assignment is official. If an error or another problem happens, this could be patent infringement .

Making a Filing Error

Patent assignments are official documents. The assignee's name must be legal and correct. Before filing, check the spelling of the assignee name. If the assignee is a business, confirm the legal name. Many patents have more than one owner. List all names on the assignment.

Misidentifying the Patent

Include as much information about the patent as you can. List the patent number and title. Describe the intellectual property completely.

Not Searching for Security Interests

Patents can be collateral. A bank or another party can file a security interest in a patent, and this can limit how much an assignee can earn from a patent. Check for security interests before filing a patent assignment.

Not Filing a Proprietary Information Agreement

Many businesses file patents, as this is part of a business plan , and it's especially common for startup businesses. Inventorship problems can happen if employees file patents instead of the business.

Often, employees have an obligation to assign inventions to a company. This is true if they developed the invention on the job.

To avoid confusion, require employees to sign a proprietary information agreement. This automatically assigns inventions and designs to the business. Other options include signing an automatic assignment or an explicit assignment. These all clarify patent ownership.

Not Being Notarized

Make sure all official documents concerning your patent are notarized. There is a huge legal advantage to being notarized. It makes it so that your documents will be accepted as correct until it is proven otherwise. If you can't get your documents notarized, gather two witnesses. Have them attest to the signatures.

You have to file a patent assignment within three months of signing the form. If you don't, the assignee could lose ownership rights.

Frequently Asked Questions

Where Do I Record a Patent Assignment?

If you have a U.S. patent, record your patent assignment with the USPTO. If you have a foreign patent, file with the correct national patent offices.

I Can't Get a Signature from the Inventor. What Happens Now?

First, it needs to be officially established that:

• Whoever is pursuing the application has the right to do so.
• The inventor cannot be reached.

In order to establish this, the patent office will need a copy of the following:

• the employee agreement
• the assignment
• other evidence of the rights

After that, the patent office will continue as if the signature has been obtained, even though it hasn't.

If the inventor has died, the patent office will try to contact the person in charge of managing the deceased's estate or the heir. If the invented refuses to sign or is missing, the patent office will ask for a declaration from the person who is trying to contact them. They will also look at the following items that have been sent to the inventor:

• Do I Have to File a Patent Assignment if the Owner's Name Changed?

No, you don't need a patent assignment if only the person's or company's name changed. If the company merged with another, you may need a patent assignment.

What if I Make a Mistake on My Patent Assignment?

You can't correct a patent assignment. You have to assign it back to the original owner. Then you have to reassign with the correct information.

How Much Does a Patent Assignment Cost?

The patent assignment fee is $25. Filing electronically doesn't cost extra. You do have to pay an additional $40 fee if you file on paper.

Should I Hire a Lawyer?

Yes, you should get a lawyer to help with a patent assignment. A lawyer will make sure there are no filing errors. A lawyer knows how to describe the patent correctly. Errors and bad descriptions can limit the power of a patent assignment. This could cost the assignee a lot of money in future profits and legal fees.

Steps to File a Patent Assignment

1. Fill Out a Recordation Form Cover Shee t

The Recordation Form Cover Sheet is an official USPTO document. This includes the names of the assignor(s) and the assignee(s). It also includes the patent title and number.

2. Complete a Patent Assignment Agreement

The patent assignment agreement should list the assignor(s) and the assignee(s). It should state that the assignor has the right to assign the patent. It should also describe the intellectual property clearly and completely. It should also explain any financial or other transactions that have to take place. This includes a description of the lump sum payment.

3. Sign the Patent Assignment Agreement

All patent owners and assignees must sign the patent assignment agreement.

4. Submit the Patent Assignment

Finally, submit the patent assignment with the USPTO. You have to pay the assignment fee at this time.

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29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

• Intellectual Property
• Patent Prosecution

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

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

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

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

What Is a Patent Assignment and Why Does it Matter?

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

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

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

Patent Assignment vs. Licensing

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

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

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

U sing Employment Agreements to Transfer Patent Ownership

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

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

The employment agreement should include the following provisions:

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

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

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

Drafting Agreements for Non-Employees

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

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

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

O btaining Written Assignments for New Patent Applications

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

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

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

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

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

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

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

Recording a Patent Assignment With the USPTO

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

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

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

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

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

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

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

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

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

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

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

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

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

N eed Help With Your Patent Assignments?

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

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

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

Michael K. Henry, Ph.D.

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

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

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

The following table lists the patent fees charged by the United States Patent and Trademark Office. USPTO  Trademark Fees  are listed separately. A complete copy of the USPTO's fee schedule is available from  their website . 

Quick Jump:  Patent Trials and Appeals Board (PTAB)  | PCT:   International Stage  -  National Stage  -  WIPO  |  Hague Convention 

USPTO Fee changes : Fees increased effective January 16, 2018 PCT Fee  Changes: Some International Stage and National Stage fees changed January 16, 2018 PCT Fee for search by EPO and Rospatent changed as of December, 2017 PCT Fee for search by IPO Singapore changed as of November 1, 2017 PCT Fee for sarch by ILPO changes as of July 1, 2017 PCT Fees for search by JPO and KIPO changed as of March 1, 2017 WIPO fees  and  International Fees  changed January 1, 2017 The "Large Entity Fee", "Small Entity Fee" and "Micro Entity Fee" columns on this page incorporate changes to USPTO fees which became effective through the last update of this page - changes which have been announced, but are not yet effective, are listed in the "pending fees" columns. Upcoming changes will be incorporated as they are announced.  See  this page on our website  for instructions on how to decide if you are entitled to small entity or micro-entity fees.    DESCRIPTION Large Entity Fee Small Entity Fee Micro Entity Fee Utility Application Basic Filing Fee 320 128 64 Utility Application Basic Filing Fee (Small Entity) if filed electronically n/a 64 n/a Excess Claims: more than three  Independent Claims  (per indep. claim over 3) 480 192 96 Excess Claims: more than 20 total claims (per claim over 20) 100 40 20 Excess Claims: surcharge if there are any  multiple dependent claims 860 344 172 Utility Application Search Fee 700 280 140 Utility Application Examination Fee 800 320 160 Surcharge - Late Filing Fee, search fee, examination fee or oath/declaration 160 64 32 Surcharge - Late Provisional Filing Fee or Cover Sheet 60 24 12 Design Filing Fee or  Continuing Prosecution Application (CPA) 220 88 44 Design Search Fee 160 64 32 Design Examination Fee 640 256 128 Reissue Filing Fee 320 128 64 Reissue Search Fee 700 280 140 Reissue Examination Fee 2,320 928 464 Plant Filing Fee 220 88 44 Plant Search Fee 440 176 88 Plant Examination Fee 660 264 132 Provisional Application Filing Fee 300 120 60 Excess pages (all applications) - if more than 100 pages, per add'l 50 pages  (note: each page in an electronically filed application counts as 3/4 of a page for the purpose of calculating this fee, so that for electronically filed applications this fee becomes, in effect, $420/168/84 for each additional 66 pages if there are more than 133 electronically filed pages)  420 168 84 Extension - First Month 220 88 44 Extension - Second Month 640 256 128 Extension - Third Month 1,480 592 296 Extension - Fourth Month 2,320 928 464 Extension - Fifth Month 3,160 1,264 632 Request for Continued Examination (RCE) (first request) 1,360 544 272 Request for Continued Examination (RCE) (second or more request) 2,000 800 400 Correcting inventorship after first action on the merits (FAOM) Note: does not apply if inventor(s) are deleted, and statement is filed that correction is solely due to cancelation of claims in the application. 640 256 128 "Request for Prioritized Examination" (a/ka/ "Track I" or "Fast Track") of Utility Application 4,200 1,680 840 Request for Expedited Examination of Design Application 1,600 640 320 Petitions under the following 37 CFR sections (group I): § 1.36(a) - for revocation of a power of attorney by fewer than all applicants § 1.53(e) - to accord a filing date. § 1.57(a) - to accord a filing date. § 1.182 - for decision on a question not specifically provided for. § 1.183 - to suspend the rules. § 1.378(e) - for reconsideration of decision on petition refusing to accept delayed payment of maintenance fee in an expired patent. § 1.741(b) - to accord a filing date to an application under § 1.740 for extension of a patent term. 420 168 84 Petitions under the following 37 CFR sections (group II) § 1.12 -for access to an assignment record. § 1.14 -for access to an application. § 1.47 -for filing by other than all the inventors or a person not the inventor. § 1.59 -for expungement of information. § 1.103(a) - to suspend action in an application. § 1.136(b) - for review of a request for extension of time when the provisions of section 1.136(a) are not available. § 1.295 - for review of refusal to publish a statutory invention registration. § 1.296 - to withdraw a request for publication of a statutory invention registration filed on or after the date the notice of intent to publish issued. § 1.377 - for review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of a patent. § 1.550(c) - for patent owner requests for extension of time in ex parte reexamination proceedings. § 1.956 - for patent owner requests for extension of time in inter partes reexamination proceedings. § 5.12 -for expedited handling of a foreign filing license. § 5.15 - for changing the scope of a license. § 5.25 - for retroactive license. 220 88 44 Petitions under the following 37 CFR sections (Group III) § 1.19(g) -to request documents in a form other than that provided in this part. § 1.84 -for accepting color drawings or photographs. § 1.91 - for entry of a model or exhibit. § 1.102(d) - to make an application special. § 1.138(c) - to expressly abandon an application to avoid publication. § 1.313 - to withdraw an application from issue. § 1.314 - to defer issuance of a patent. 140 56 28 Processing fees under the following 37 CFR sections § 1.28(c)(3) - for processing a non-itemized fee deficiency based on an error in small entity status.  § 1.41 - for supplying the name or names of the inventor or inventors after the filing date without an oath or declaration as prescribed by § 1.63, except in provisional applications.  § 1.48 - for correcting inventorship, except in provisional applications.    -  but see new fee for filing change in inventorship after first office action §1.17(d), above § 1.53(b)(3) - to convert a provisional application filed under § 1.53(c) into a nonprovisional application under § 1.53(b).  § 1.55 - for entry of late priority papers.  § 1.71(g)(2) – to enter an amendment to the specification for purposes of 35 U.S.C. 103(c)(2) if not filed within the cited time periods  § 1.99(e) - for processing a belated submission under § 1.99.  § 1.103(b) - for requesting limited suspension of action, continued prosecution application (§ 1.53(d)).  § 1.103(c) - for requesting limited suspension of action, request for continued examination (§ 1.114).  § 1.103(d) - for requesting deferred examination of an application.  § 1.217 - for processing a redacted copy of a paper submitted in the file of an application in which a redacted copy was submitted for the patent application publication.  § 1.291(c)(5) - for processing a second or subsequent protest by the same real party in interest.  § 1.497(d) - for filing an oath or declaration pursuant to 35 U.S.C. 371(c)(4) naming an inventive entity different from the inventive entity set forth in the international stage.  § 3.81 - for a patent to issue to assignee, assignment submitted after payment of the issue fee. 140 56 28 §1.52(d) Non-English Specification 140 56 28 §1.221—for requesting voluntary publication or republication of an application. 140 140 140 Petition for Revival of an Abandoned Application for a Patent, for the Delayed Payment of the Fee for Issuing Each Patent, or for the Delayed Response by the Patent Owner in any 1453/2453/3453 1.17(m) Reexamination Proceeding 2,100 840 420 Submission of an Information Disclosure Statement (1.97) or third party submission (1.290(f)) 260 104 52 Processing fee for various actions on Provisional Applications (correcting inventorship, convert nonprovisional to provisional, etc)  50 50 50 Filing a submission after final rejection (1.129(a)) 880 352 176 Per add'l invention to be examined (1.129(b)) 880 352 176 Acceptance of Unintentionally delayed claim for priority 2,100 840 420 Utility or Reissue Issue Fee  1,200 480 240 Design Issue Fee 740 296 148 Plant Issue Fee 840 336 168 Publication fee - early, voluntary or normal 0 0 0 Publication fee - republication 320 320 320 Filing Application for patent term adjustment 210 210 210 Request for reinstatement of term reduced 420 420 420 Copy of Patent or Published Patent Application 3 3 3 Plant Patent Copy in color 15 15 15 Copy of Utility Patent or SIR in Color 25 25 25 Paper Copy of Patent Application as Filed 35 35 35 Paper Copy of File Wrapper (no page limit) 290 290 290 Paper copies of documents in file, other than application, per document 25 25 25 Electronic copy of File Wrapper 60 60 60 Certified or uncertified copy of document, not otherwise provided 25 25 25 For Assignment Records, Abstract of Title and Certification 35 35 35 Library Service 50 50 50 Copy of Non-U.S. Patent Document 25 25 25 Certificate of Correction 160 160 160 Processing fee for correcting inventorship in a patent 160 160 160 Request for ex parte Reexamination - streamlined * Micro-entity not available for third-party requestors 6,300 2,520 1,260* Request for ex parte Reexamination - non streamlined 12,600 5,040 2,520 Reexamination - excess independent claims 480 192 96 Reexamination - excess total claims 100 40 20 Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) 2,040 816 408 Statutory Disclaimer  note: no small or micro entity discount available 170 170 170 Maintenance Fee - 3.5 Years 2,000 800 400 Maintenance Fee - 7.5 Years 3,760 1,504 752 Maintenance Fee - 11.5 Years 7,700 3,080 1,540 Surcharge - Maintenance Fee - 6 Months 500 200 100 Extension of Term of Patent Under 1.740  note: no small or micro entity discount available 1,180 1,180 1,180 Initial Application for Interim Extension Under 1.790     note: no small or micro entity discount available 440 440 440 Subsequent Application for Interim Extension Under 1.790     note: no small or micro entity discount available 230 230 230 Request for Supplemental Examination 4,620 1,848 924 Reexamination ordered as a result of Supplemental Examination 12,700 5,080 2,540 Supplemental Examination document size - nonpatent reference 21-50 sheets 180 72 36 Supplemental Examination document size - nonpatent reference >50 sheets (per 50 sheets or part thereof) 300 120 60 International Type Search Report 40 40 40 Recording Patent Assignment, Agreement or other document - submitted electronically  0 0 0 Recording Patent Assignment, Agreement or other document -  not  submitted electronically 50 50 50 Publication in the OG 25 25 25 Handling Fee - Incomplete Application 140 140 140 Submission of Sequence Listing of 300 MB to 800 MB 1,060 424 212 Submission of Sequence Listing of more than 800 MB 10,500 4,200 2,100 Additional Fee for Overnight Delivery 40 40 40 Additional Fee for Expedited Service 170 170 170 PCT Fees - International Stage Large Entity Fee Small Entity  Fee* Micro Entity Fee* Transmittal Fee 260 104 52 PCT Search Fee for USPTO search  (note: Discount for prior US search has been eliminated) 2,180 872 436 Supplemental Search (per additional invention) 2,180 872 436 PCT Search Fee for European Patent Office (EPO) search  2,107 2,107 2,107 PCT Search Fee for IP Australia (IPAU) search  (Note: IP Australia may only be used for a limited number of technologies - be sure to check our  PCT News Page  for the latest list before choosing ISA/AU) 1,587 1,587 1,587 PCT Search Fee for Korean Patent Office (KIPO) search  (Note: IP Korea has a list of technologies they will not search - see our  PCT News Page  for the list)  1,003 1,003 1,003 PCT Search Fee for Israel Patent Office (ILPO) search  1,036 1,036 1,036 PCT Search Fee for Japanese Patent Office (JPO) search  (note: only for "green technology") 1,457 1,457 1,457 PCT Search Fee for Russian Patent Office (Rospatent) search 537 537 537 PCT Search Fee for IP Office of Singapore (IPOS) search  ( 1,622 1,622 1,622 Preliminary Exam Fee (if US was International Searching Agency) 640 256 128 Preliminary Exam Fee (if US was not ISA) 800 320 160 Supplemental Examination (per additional invention) 640 256 128 Non-electronic filing fee (additional fee for applications filed on paper) 400 200 200 Late Furnishing Fee for Providing a Sequence Listing in Response to an Invitation Under PCT Rule 13 ter 320 128 64 For information on which fees need to be paid to file an International Stage application, see  the note  below.  PCT Fees - National Stage Large Entity Fee Small Entity Fee*   Micro Entity Fee* Basic Filing Fee       Basic National Stage Fee 320 128 64 Fees in addition to Basic Fee       National Stage Search Fee (other - i.e. if none of the exceptions below apply) 700 280 140 - Search fee if USPTO issued IPER saying novelty, inventive step (nonobviousness) and industrial applicability have been satisfied for all claims entering the National Stage  0 0 0  - Search fee if USPTO was ISA and Int'l Search fee paid 140  56 28  - Search fee if USPTO not ISA, but Int'l Search Report is provided to USPTO no later than time at which search fee is paid 540 216 108 National Stage Examination Fee 800 320 160  - Exam fee if USPTO issued IPER saying novelty, inventive step (nonobviousness) and industrial applicability have been satisfied for all claims entering the National Stage  0 0 0 Claims - Extra Independent (Over 3) 480 192 96 Claims - Extra Total (Over 20) 100 40 20 Claims - if application has any multiple dependent claim (also affects total fee calculation) 860 344 172 Surcharge - Oath or Declaration filed after 30 months from priority date 160 64 32 English Translation filed after 30 Months from priority date (large or small entity) 140 56 28 Extra pages - for each 50 sheets over 100 420 168 84 Non-electronic filing fee (additional fee for applications filed on paper) 400 200 200 Fee for filing a petition to revive an international application abandoned unintentionally under 37 CFR 1.137(b) 2,100 840 420 Submission of Sequence Listing of 300 MB to 800 MB 1,060 424 212 Submission of Sequence Listing of more than 800 MB 10,500 4,200 2,100 For information on which fees need to be paid to file an International Stage application, see  the note  below.  PCT Fees - to WIPO or EPO Large Entity Fee Small Entity Fee*   Micro Entity Fee* Basic application fee (up to 30 pages)# 1,367 n/a n/a Basic application fee (up to 30 pages) filed on paper with PCT-EASY zip file# 1,264 n/a n/a Basic application fee if application is filed electronically with PCT-EASY zip file# 1,161 n/a n/a Basic supplemental fee (each page over 30)#       Handling Fee (Chapter II)# 206 n/a n/a International CD Application# 5,200 n/a n/a Fee for requesting restoration of the right of priority (unintentional only)  (No Micro Entity discount as of Dec. 18, 2013) 1,700 850 n/a # -  Note : These fees are actually paid by the USPTO to WIPO or EPO in Swiss Francs, and therefore they will change from time to time based on the fluctuations in the exchange rate. Treat these dollar amounts as estimates only, and check when paying fees as to what they actually are at that time. No small entity or micro entity discounts are applicable to WIPO or EPO fees.  * - Small Entity and Micro Entity discounts are only available for some (not all) fees charged by USPTO. Other authorities do not offer these discounts. If the fee in the "Small Entity Fee" or "Micro Entity Fee" column is "n/a", this means that the discount is not available, and the next-larger fee must be paid.   Note on Fees for Filing PCT Applications Not all of the fees listed in the various PCT sections will actually be paid in any given application. When filing an International Stage PCT application in the USPTO as receiving office, at least the following fees are required: Basic Application Fee (from this WIPO section) Transmittal Fee (from  PCT Fees - International Stage ) Search Fee - depends on which search authority is chosen (US, EP, KR, AU or RU) see  PCT Fees - International Stage When entering a PCT application into the National Stage in the USPTO, at least the following fees are required (from the  PCT Fees - National Stage  list, above): Basic National Stage Fee National Stage Examination Fee National Stage Search Fee Other application fees may apply, depending on the application, but these are the only ones which  every  PCT application filed in the USPTO will pay. Of course, the fees on this table are only the government fees. Attorney fees and expenses are in addition to these fees - for a more complete explanation, see our  Patent Budget Estimator Patent Trials and Appeals Board Fees Large Entity Fees Small Entity Fees Micro Entity Fee Petitions to the Chief Judge under 37 CFR 41.3 420 420 420 Notice of Appeal 840 336 168 Filing a Brief - appeal of application or Ex Parte Reexamination 0 0 0 Filing a Brief - appeal of Inter Partes Reexamination 2,100 840 420 Request for Oral Hearing 1,360 544 272 Forwarding an appeal in an application or Ex Parte Reexamination * Third-Party Filers Are Not Eligible for the Micro Entity Fee. 2,360 944 472* Inter partes review (IPR) - request fee, up to 20 claims 19,000 19,000 19,000 IPR - Post-institution fee, up to 20 claims 22,500 22,500 22,500 IPR - claims in excess of 20 for inter partes review - in addition to request fee  (per claim) 375 375 375 IPR - claims in excess of 20 for inter partes review - in addition to post-institution fee  (per claim) 750 750 750 Post-grant Review (PGR) or a covered business method (CBM) review - request fee, up to 20 claims 20,000 20,000 20,000 PGR or CBM - post-institution fee, up to 20 claims 27,500 27,500 27,500 PGR or CBM - claims in excess of 20, in addition to request fee (per claim) 475 475 475 PGR or CBM - claims in excess of 20, in addition to post-institution fee (per claim) 1,050 1,050 1,050 Derivation Petition 420 420 420 Request to make a settlement agreement and other requests filed in a patent trial proceeding  420 420 420 Hague Convention Fees Transmittal Fee 120 48 24 International design application fees payable to WIPO - see  WIPO Fee Calculator var var var Notes:  For further information regarding fee amounts or to request a copy of the PTO fee schedule, please contact the USPTO General Information Services Division by phone at (800) 786-9199 [PTO-9199] or (703) 308-4357 [308-HELP], or by fax at (703) 305-7786. PTO fees are subject to change. Usually, new fees take effect in the Fall, typically October-December. Be sure to check for the latest fees before filing anything.  PCT fees change more or less quarterly, as exchange rates change. See note above in " PCT Fees to WIPO or EPO "  The preceding table was taken from information supplied by the  USPTO web site . Additional legal and handling fees may apply for preparing and processing paperwork for payment of these fees. Back  to Patents Page Back to  Patent Budget Estimator

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What is a Patent Assignment?

Whether you’re curious about assigning a patent to someone else or having a patent assigned to you, you might be wondering what a patent assignment is? Patent law allows patent holders to assign patents to other parties. Patent assignments often take place between an employee and his company, however, it’s not uncommon for a person to assign his interest to a patent to a third party. So, what exactly is a patent assignment? We will cover this below.

What is a Patent Assignment ?

A patent assignment is an agreement by the patent holder (assignor) to transfer his interest and ownership of a patent to another party known as the assignee (party receiving patent rights). Once a patent holder executes an assignment agreement assigning his interest in a patent to another party, the assignor loses his rights under the patent. The assignor (transferor) will no longer be able to stop others from using, making, and selling the patent invention. Instead, the assignee gains these rights.

In the United States, patent assignments are very common between an employee and his company because a company or business cannot apply for a patent. An inventor has to apply for a patent and then the inventor then assigns his interest under a patent to the company for which he is working.

An assignment transfers the ownership of the patent from the inventor or employee to the company for which he is working. That said, assignments can also be made by any two parties that agree to transfer ownership of a patent.

So, now we know that a patent holder can transfer his patent rights to a third party, can an inventor assign a pending patent application? Absolutely, yes! An inventor can assign his rights under a pending patent application to another party.

If you’re an inventor and you want to assign your patent to another party, just remember that patent assignments are final. Once an inventor assigns (transfers) his interest in a patent to another party, the assignment (transfer of rights) cannot be undone, it’s final.

What is a Patent Assignor?

A patent assignor is a party that transfers it’s interest and right to the patent to the transferee (assignee) or the party receiving the patent. Once an agreement is executed and recorded with the patent office, the assignee becomes the patent right holder.

What is a Patent Assignee?

A patent assignee is a person to whom the patent rights are transferred to. Said differently, the assignee is the new owner of the patent. An assignee should immediately record an assignment agreement with the patent office to establish his rights as the new patent owner.

Requirements to Execute a Patent Assignment Agreement

For a patent holder to assign (transfer) his interest in a patent to another party, the assignor (person transferring patent rights) must execute a written agreement that includes details, such as the name of the assignor and the assignee, as well as the patent that is to be assigned (transferred) to the assignee.

Once the assignment agreement is executed, it must be filed with the USPTO for the agreement to take effect. Please remember that the agreement needs to be in writing, oral agreements are not sufficient to transfer the rights from the patent holder to the assignee.

The assignment agreement must include the following information:

• The agreement must contain the legal names of both the assignor (person transferring patent rights) and the assignee (person receiving patent rights).
• The agreement must clearly identify the patent by stating the name of the patent, as well as the patent number.
• The terms of the agreement must be included in the assignment agreement.
• Both the assignor(s) and assignee(s) must sign the agreement.

Who Owns the Patent After a Patent Assignment?

Once the assignor and assignee execute an assignment agreement and file the assignment with the USPTO, the assignee owns the patent. As the new patent owner, the assignee will have the right to stops others from using, making, and selling the patented invention for the remaining patent term.

The assignor (person who transferred his rights) loses his rights under the patent and will no longer be able to enforce the patent. Assigning a patent is similar to selling a car and registering the title in someone else’s name. Once the patent is assigned, similar to registering the title of a vehicle in someone else’s name, the new owner is the assignee (person to whom the patent was transferred to). Once the assignment is recorded with the patent office, the records will be updated to show the assignee (new owner) of the patent. This information will then be made available to the public.

Assigning a Patent vs Licensing a Patent

Assigning a patent is much different than licensing a patent. When a patent holder assigns his interest in a patent to another party, he is usually transferring ownership of the patent to the other party. Patent licensing is different in that a license is merely a transfer of the right to use the patent in the manner specified in the licensing agreement. Assignments transfer ownership while a license transfers the right to use the patented invention. That said, if a patent is assigned, the information of the assignor and assignee will become part of the public record. Whereas if an inventor licenses his patent, that information is not typically published to the public.

Does a Patent Assignment Need to be Notarized?

The USPTO does not require patent assignments to be notarized. The patent office only requires that the assignment be executed and signed by both the assignor and the assignee. Once an agreement is executed and signed by the parties, the assignment must be recorded with the patent office.

If the assignee fails to record the assignment, there is nothing to protect the assignee from the assignor assigning the patent to a third party. So, if you’re an assignee, make sure to record your assignment as soon as it’s executed to avoid problems.

Although a patent assignment does not need to be notarized, notarizing it can be beneficial in the event that the previous patent holder claims that he did not make the assignment. It’s an added layer of protection that could prove to be very valuable.

Can Multiple People Own a Patent?

Yes, multiple people can own a patent. For example, if three inventors make a single invention, all three are considered joint inventors and their names should appear on the patent application, as well as the issued patent.

If there are multiple inventors on a patent application, all inventors must execute an assignment agreement to assign each of their interest to the assignee for the assignee to own the entire patent.

For example, if only 1 of 3 inventors assigns his interest, the assignment would be a partial assignment until all 3 inventors each assign (transfer) their interest to the assignee.

Patent Assignment Tips

1) hire an attorney to assist you with your patent assignment.

Any individual who’s either an assignor or assignee should hire an attorney to assist with the assignment of a patent. Attorneys will ensure that the assignment agreement complies with the law and contains all of the information that is required for a successful patent assignment. Although it’s not unheard of for parties to execute an assignment agreement on their own, making a mistake could cause legal troubles down the road.

2) Don’t Forget to Record A Patent Assignment

If you have been assigned a patent, don’t forget to record your assignment with the USPTO. We say this because patent assignments don’t go into effect unless the assignment is recorded with the patent office. Recording a patent assignment tells the patent office that you are the new owner of the patent.

If an assignee does not record the assignment with the patent office, it is as if the assignment never took place. Also, if it’s not recorded, the assignor could possibly assign the patent to a third party. So, make sure to record your assignment as quick as possible.

3) Notarize Your Assignment Agreement

It’s good practice to have an assignment agreement notarized. This helps in a situation where the assignor claims that he did not execute the assignment agreement. In the event that an assignor claims he did not execute the assignment agreement, you will have evidence to show otherwise. The burden may shift to the assignor to prove that he did not execute the assignment agreement. So, notarize your agreement, as well as other documents relating to the assignment of a patent.

4) How Much Does it Cost to Record an Assignment with the USPTO?

It’s currently free to record an assignment with the USPTO if a party submits the assignment electronically. However, if a party chooses to record the assignment agreement by paper, there is a $50 fee for the service. So, record your assignment online if you want to avoid paying anything. That said, you may need to publish your assignment in an official gazette, such publication does cost $25.

Patent Assignment

Let’s do a quick recap. A patent assignment is the transfer of ownership of a patent from one party to another. The party transferring its right is known as the assignor and the party receiving the patent rights is known as the assignee.

To assign a patent, both parties must execute a written assignment agreement to reflect the transfer of ownership. Once the parties execute the agreement, they must record it with the patent office to establish the new ownership. If you have any general questions or comments, please feel free to leave them in the comments section below.

My name is Noah and I love everything about patents and patent law. During my law school years, I studied intellectual property law and took courses in patent law, trademark law, and copyright law. I graduated from Loyola Marymount Law School and obtained my Juris Doctorate in 2014.

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Danielle Giovannone is the principal of Danielle D. Giovannone Law Office. In her experience, Danielle has found that many business do not require in-house legal counsel, but still need outside counsel that knows their business just as well as in-house counsel. This need inspired Danielle to start her firm. Before starting her firm, Danielle served as Contracts Counsel at Siena College and as an attorney at the New York City Department of Education, Office of the General Counsel. At the NYCDOE, she served as lead counsel negotiating and drafting large-scale commercial agreements, including contracts with major technology firms on behalf of the school district. Prior to the NYCDOE, Danielle worked as an associate at a small corporate and securities law firm, where she gained hands-on experience right out of law school. Danielle has provided legal and policy advice on intellectual property and data privacy matters, as well as corporate law, formation and compliance, employer liability, insurance, regulatory matters, general municipal matters and non-profit issues. Danielle holds a J.D. from Fordham University School of Law and a B.S. from Cornell University. She is active in her Capital District community providing pro bono services to the Legal Project, and has served as Co-Chair to the Niskayuna Co-op Nursery School and Vice President of Services to the Craig Elementary School Parent Teacher Organization. Danielle is a member of the New York State Bar Association.

Combining extensive experience in litigation and as general counsel for a real estate and private equity company, I provide ongoing guidance and support to clients on a variety of transactional matters, including business formation, partnership agreements, corporate agreements, commercial and residential leasing, and employment issues.

Anand is an entrepreneur and attorney with a wide-ranging background. In his legal capacity, Anand has represented parties in (i) commercial finance, (ii) corporate, and (iii) real estate matters throughout the country, including New Jersey, Pennsylvania, Delaware, Arizona, and Georgia. He is well-versed in business formation and management, reviewing and negotiating contracts, advising clients on financing strategy, and various other arenas in which individuals and businesses commonly find themselves. As an entrepreneur, Anand is involved in the hospitality industry and commercial real estate. His approach to the legal practice is to treat clients fairly and provide the highest quality representation possible. Anand received his law degree from Rutgers University School of Law in 2013 and his Bachelor of Business Administration from Pace University, Lubin School of Business in 2007.

Berkson is a dedicated, practical, and detail-oriented attorney licensed to practice in every state court of Oklahoma and the United States Northern and Eastern District Courts. He graduated from the University of Tulsa College of Law with Honors. While there, he received awards for highest grade in trial practice, legal research, and civil procedure. He was also the Executive Notes and Comments Editor for the Energy Law Journal, the official journal of the Energy Bar Association in Washington, D.C. The Energy Law Journal is one of the few peer-reviewed journals in the legal profession. Prior to becoming an attorney, Howard Berkson held executive positions involving a wide range of business and human resources management functions. He has in-depth knowledge of both business and HR practices. During his business career, Berkson negotiated, wrote, red-lined, and disputed contracts. He has answered charges, handled inspections, and supervised audits involving numerous agencies including the Department of Labor, the Equal Employment Opportunity Commission, the National Labor Relations Board, the Occupational Safety and Health Administration, and various state agencies. Berkson honed his analytical and writing skills while earning his Bachelor of Arts degree in Philosophy from the University of Washington. He went on to obtain a Master of Arts in Labor and Industrial Relations from the University of Illinois. Berkson’s work can be found in such publications as The Energy Law Journal, Human Resource Management Review and Personnel Psychology. He is a member of Phi Alpha Delta law fraternity and of Phi Kappa Phi honor society.

Erik has been a practicing attorney in Florida for over a decade. He specializes in employment and real estate contracts. He has represented clients big and small and can assist with any contract issue.

Christopher M.

I am a corporate attorney with several years of experience with contracts, corporate and business, government projects, and employment law.

Domonick G.

I am a licensed attorney who specializes in business law, personal injury and contracts.

Ahaji Amos, PLLC is a Houston-based intellectual property and civil litigation firm servicing clients throughout the U.S.

Gayle is an experienced International Corporate and Technology Transactions lawyer who "speaks geek" and began her career in Private Equity. She enjoys working with management to provide creative, efficient solutions to grow the company. She created her company, GGorvett Consulting, in Paris, France to serve the need of a client. She provides Fractional General Counsel and legal advisory services to growth stage and mid-cap companies seeking to expand. Specialties include: Complex contracts, Cross border negotiations, Technology transactions, Corporate Finance, Negotiations with strategic partners, governance/compliance (including privacy and AI), IP audits and International expansion. She is an active member of the Association of Corporate Counsel, the Georgia State Bar and French Tech.

Have been practicing real property and business law in Nevada for over 40 years. No longer handling any litigation, transactional matters only.

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Patent Assignment Agreement

This Patent Assignment Agreement is a comprehensive document designed to facilitate the transfer of patent ownership from the original patent owner, known as the assignor, to another party, known as the assignee .

A patent is a legal grant issued by the United States Patent and Trademark Office (USPTO) to an inventor, providing exclusive rights to make, use, and sell their invention for a limited period , typically 20 years from the filing date. This protection is granted in exchange for the public disclosure of the invention. This system encourages innovation and lets inventors benefit from their creations for a specified period of time.

An assignment is the legal transfer of ownership or rights of a patent from one party (assignor) to another (assignee) . Using a Patent Assignment Agreement, the assignor forever relinquishes their rights to the patent, and the assignee assumes control and ownership of those rights for the duration of the patent.

This assignment can be made either before or after a patent application has been issued as a patent. By law, a patent is considered personal property and, so, can be sold or transferred in the same way one could sell a car or a piece of furniture. This document formally initiates the transfer process, providing clarity and protection for both parties involved. This agreement is particularly useful when inventors, companies, or individuals who wish to transfer their patent rights, whether for financial considerations, strategic partnerships, or other business transactions.

This document is different from a Trademark Assignment Agreement, which is used for the transfer of a different kind of intellectual property, known as a trademark. A trademark is usually a brand name or logo, unlike a patent, which is usually an invention of some sort. This is also slightly different from an Intellectual Property Release . Although that form could be used for a patent, it is generally used for copyrighted material, like works of art or pieces of music. In that case, payment is not made and, instead, the copyrighted works are simply "released," or given to another party. This document can also be distinguished from an Intellectual Property Permission Letter, as there, one party is writing to request permission to use the intellectual property of another. The Patent Assignment Agreement would then come after the letter, but the letter is not the formal legal document that initiates the transfer.

How to use this document

This document includes all the information necessary to transfer the ownership of a patent from one party to another. This document should be used when the transfer will be permanent, usually for a one-time fee , and no royalties will be due after the assignment. This document allows the parties to fill in details of the patent to be transferred, such as the patent name, original recordation number, and date the patent was initially issued . This ensures that everything needed for new recordation with the United States Patent and Trademark Office (USPTO) is present.

Once the document has been completed, both parties should sign the document in front of a notary and have the notary complete the notary page. The document must then be recorded with the USPTO within three months of its signing, or it becomes void. The current cost for filing an assignment with the USPTO is $40 per patent. The assignment can be filed either online or by mail.

Applicable law

In the United States, specific federal laws govern patent assignments, primarily under Title 35 of the United States Code , which pertains to the country's patent system. Section 261 of Title 35 outlines the general provisions related to patent ownership and transfers. According to this statute, patent assignments must be in writing to be valid, and they require the signature of the owner of the patent or their authorized representative. The law also specifies that the assignment must be recorded with the USPTO to establish priority and provide notice to the public.

How to modify the template

You fill out a form. The document is created before your eyes as you respond to the questions.

At the end, you receive it in Word and PDF formats. You can modify it and reuse it.

Other names for the document:

Patent Assignment Contract, Intellectual Property Transfer Agreement, Technology Rights Conveyance Agreement, Innovation Assignment and Transfer Accord, Assignation of Patent Rights Contract

Country: United States

Intellectual Property and New Technologies - Other downloadable templates of legal documents

• Terms and Conditions for a Website
• Non-Disclosure Agreement (NDA)
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• Copyright Assignment
• Intellectual Property Permission Letter
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ACQUIRES QUANTIFY IP

Anaqua , the leading provider of innovation and intellectual property management solutions, acquired Quantify IP and welcomed its staff to the Anaqua team in February 2021.

For over 25 years, Quantify IP has been a leader in delivering advanced portfolio cost budgeting and forecasting tools to the IP legal industry. The company’s innovative software products will further strengthen Anaqua’s strategic line of IP management offerings and support our collective commitment to delivering solutions that address the evolving needs of today’s IP management market.

Anaqua will continue to invest in both Global IP Estimator® and Portfolio Estimator as distinct offerings and will also identify strategic opportunities for integration into Anaqua’s suite of offerings.

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Starting a patent assignment request in assignment center.

Learn how to use start a patent request in Assignment Center. 

Assignment Center is a publicly available USPTO system for recording assignments and other documents relating to interests in patents and trademarks.

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May 5, 2023