The Process of Patent Assignment

The Process of Patent Assignment

"Assignment" has two related meanings in the world of inventing and patenting. For trademarks, an assignment is a transfer of ownership of a trademark application or trademark registration from one entity to another, and for patents, an assignment involves the sale and transfer of ownership of a patent by the assignor to the assignee.

The assignee is the entity that is the recipient of a transfer of a patent application, patent, trademark application, or trademark registration from its owner on record, the assignor. In patent assignments, the assignor will make an instant profit off of selling its patent, while the assignee gets rights to royalties and all future profits from the invention.

You can assign the ownership of a patent application or patent. For all U.S. patents, assignments are recorded with the United States Patent and Trademark Office (USPTO) Assignment Services Division to keep the title clear to pending patent applications and patents; assignments can be searched on the USPTO website.

Assignments aren't always a voluntary transaction. For instance, an employee invention may be mandatorily assigned by an employee to the employer because of the contract that the employee has signed. For this reason, there are a number of laws and regulations surrounding patent assignments that govern how the patent is handled and who owns individual patents. In contrast to patent licensing, an assignment is an irrevocable and permanent transfer of ownership.

How to Apply

Whether you're hoping to change ownership to another entity or party through assignment or hoping to change the name of a patent while it's pending approval, you need to fill out an official Patent Assignment Recordation Coversheet by completing online forms at the USPTO's Assignment Recordation Branch website.

This online system, known as the Electronic Patent Assignment System (EPAS), can be used to submit your cover sheet and supporting legal documentation online, which the USPTO will then process.

If you are unsure about whether your patent has been granted an assignment, you can search the database of all recorded patent assignment information, which dates back to 1980. For patents earlier than 1980, you can go to the National Archives and Records Administration and request a copy of accompanying paperwork.

How Long It Takes and Why

According to the USPTO, getting a patent can take up to three years, so if you're hoping to start making money off of a new invention, selling the patent for your product and applying for a patent assignment may be the fastest way to actually see a return of investment on your new creation.

Although the patent application assignment won't get your patent faster, it can assure the inventor and assignee are protected when it comes to ownership and rights. As a result, an assignment may be appropriate where the patent owner prefers to receive a lump-sum price at the time of the assignment rather than collecting royalties.

Since a patent prevents other manufacturers from re-creating and selling your original concept, both you and the assignee would benefit from ensuring that once the invention becomes officially patented, it belongs to the right individual and no one else.