Patent assignments aren’t the heart-pounding, edge-of-your-seat excitement that gets you out of bed in the morning, but they are critical for anyone involved in intellectual property. While the subject may seem dry, the stakes couldn’t be higher. A small error in your patent assignment can cost you ownership of your invention. Let’s discuss how to avoid that catastrophe.
What is a Patent Assignment?
A patent assignment is a patent or patent application ownership transfer document. In employment agreements (pay attention as state law may prohibit some of these), patent sales, and licensing agreements, these documents are standard.
Simply speaking, “patent assignment” means “I am giving you this patent.” But if the document is poorly put together, the rights may not transfer, even if the intention is there.
Outside of very narrow circumstances, a patent assignment should be recorded with the USPTO.
Why Language is Important
The biggest issue with these documents is just how careful you have to be with the words you choose to use. As a general matter, the legal world has evolved over the past century to leave behind the “gotchas” of having to use specific “magic words”. Not so for patent assignments.
- Bad Example:
“stating that he “agree[d] to assign to [assignee] his right, title and interest in inventions resulting from his employment”
This is future tense and doesn’t actually transfer ownership. It’s a promise to assign, not an assignment. It is also language that the Supreme Court found did not work in Stanford v. Roche, 563 U.S. 776. - Good Example:
“[the inventor] “will assign and do[es] hereby assign” to [assignee] his “right, title and interest in each of the ideas, inventions and improvements” made “as a consequence of [his] access” to [assignee].”
This uses present tense and makes the transfer effective immediately. It is also the language the Supreme Court found to be effective in Stanford v. Roche, 563 U.S. 776.
If the wrong language is used and you forget to fix it, the assignor might still own the patent, even if you’ve paid for it. Fixing these mistakes later is often costly and legally complex.
Real World Tips for Patent Assignments
- Use Active and Present Language
- Clauses like “I hereby assign” or “I shall and hereby do assign” are effective.
- Stick with the actual language the Supreme Court found effective if you can.
- Include Details
- Clearly identify the patent or patent application being assigned by including:
- Patent number (if issued).
- Application number (if pending).
- Title of the invention.
- Clearly identify the patent or patent application being assigned by including:
- Address Future Patents
- If you’re working with employees, independent contractors, collaborators, or co-inventors, ensure assignments include rights to future patents based on their work. This should definitely include continuation applications and foreign counterparts.
- Address other members of the patent family, including future members.
- Consult a Lawyer
- Patent law is nuanced, and a seasoned lawyer can ensure the assignment language complies with applicable laws. Note that nothing in this article is legal advice, so you must use an attorney to be certain you don’t mess it up.
- Execute Assignments Without Delay — and Record Them
- Delays can cause issues, especially if the assignor becomes unavailable or uncooperative. If you don’t record the assignment at the USPTO, you haven’t put the world on notice of your ownership interest. This is a huge problem if the person who assigned the patent to you goes on to sell it to somebody else who does record the assignment. In many cases, that innocent purchaser will end up with ownership of it.
When Patent Assignments Go Wrong
Failing to get the assignment language right can lead to expensive disputes (patent disputes are usually expensive). For example:
- The assignor could claim they still own the patent, preventing you from enforcing or selling it.
- Legal questions might arise when you try to license or monetize the patent.
- Courts may refuse to enforce the assignment if it lacks proper language.
- If you are the recipient of an assignment and do not properly record it at the USPTO, you may have serious problems if the inventor later provides a duplicate assignment to a third party.
The cost of fixing these errors can far exceed the cost of getting the assignment right the first time.
Closing Thoughts
Patent assignments might not be the most exciting topic, but they’re one of the most important. Whether you’re an inventor, a business acquiring patents, or an employer with inventive employees, making your patent assignments rock solid is crucial (side note: A similar problem arises if you fail to correctly name all inventors).
Take the time to review your assignment documents with a qualified attorney. One small change in language can make the difference between owning a valuable asset or losing it entirely.