Preface
This brief note is not legal advice and is for educational purposes only.
Discussion
So, you want to assign your patent application or patent to someone, most likely to your employer. Here’s some tips.
The assignor(s) are the people or organizations that are transferring the rights to the assignee(s).
First and foremost an assignment is a contract and so can have as complicated terms as you want. In reality most assignments are for all your rights domestic and foreign to the patent application or patent and any and all improvements, continuations, continuations in part, divisionals, etc. to the assignee. Basically, once you’ve assigned all your rights worldwide, in perpetuity the assignee is the owner of those rights.
Now the form of the assignment document varies but basically has these sections:
- A title like “ASSIGNMENT”.
- The names and addresses of the assignor(s).
- A listing of the application numbers and/or patent numbers being assigned.
- “For good and valuable consideration the sufficiency and receipt of which is hereby acknowledged, the Assignor(s) hereby, sells, assigns, and transfers to:”
- Then the identification and address of the assignee
- Then a long section on the rights being transferred, that the assignee can apply for and be granted patents, can file continuations, etc., that there are no encumbrances, etc
- Then the signature block for the assignee(s)
Something like this
Hereafter referred to as Assignee(s), its successors, assigns, and legal representatives, the entire right, title, and interest in the said Invention for the United States and all foreign countries, in and to any and all improvements that are disclosed in the Invention, and in …, reexaminations, extensions, … improvements; and in and to all rights of priority resulting from the filing of said Invention application;
agree that said Assignee(s) may apply for and receive a patent or patents for said improvements in its own name(s); … execute all rightful oaths, assignments, powers of attorney, and other papers; communicate to said Assignee(s), its successors, assigns, and representatives all facts known to the Assignor(s) relating to said improvements and the history thereof; and generally assist said Assignee(s), its successors, assigns, or representatives in securing and maintaining patent protection for said improvements and for vesting title to said improvements, and all applications for patents and all patents on said improvements, in said Assignee(s), its successors, assigns, and legal representatives; and
covenant with said Assignee(s), its successors, assigns, and legal representatives that no assignment, grant, mortgage, license, sale, agreement, or encumbrance affecting the rights and property herein conveyed has been made to others by the Assignor(s), and that full right to convey the same as herein expressed is possessed by the Assignor(s).
Best Practices
Have the assignee also sign and if the assignee is a company have an officer of the company sign and list their title. In this way there is a “meeting of the minds”.
If possible, have the signatures witnessed by a notary.
Summary
Having an attorney review the assignment is a good idea to help prevent issues that could arise later.
