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How to Find Patented Gold Claims for Sale
A mining claim gives a claimant the right to remove mineral deposits that are discovered on a parcel of land. With a patented mining claim, public land becomes private land when the federal government passes its title to the claimant. States may have laws that complement the federal mining law.
Patented Gold Claims
If you purchase a patented gold claim, you have exclusive title to the locatable minerals and the surface and other resources. Therefore, you own the land as well as the minerals. Locatable minerals include both metallic minerals like gold, lead and silver and nonmetallic minerals like asbestos, fluorspar and mica. You can keep any minerals that you find, not just gold. While you may use the surface for mining your property, it is illegal to build a structure for purposes other than mining.
Difference Between Patented and Unpatented Mining Claims
A patented mining claim may have been staked as far back as the 1800s. Since you own the land when you have a patented claim, you can deny anyone access. If your claim is within a land package under development by a mining company, you can say no to a sale. Since historical data exists for patented claims, you’ll have an idea of what was mined and the size of the mine. Unpatented mining claims are advantageous because the owner has no liability for incidents on the land and more minerals may be found since the land has not been explored.
Staking a Mining Claim
A claim can be staked on much of the federal public lands. Usually, a claim can’t be staked on wilderness areas, national monuments, wild portions of wild and scenic rivers, national parks, and campgrounds. To stake a claim, you need to fill out the proper mining form and file your claim. Bureau of Land Management offices can sell you a mining claim packet. Be sure to use a United States Geological Survey topographic type map as you go through the decision-making process.
Location of a Gold Mining Claim
Whether you visit the actual site or look at photos, you’ll want to note the quality of campsites, road access, rivers, streams, gravel deposits, bedrock exposures and general topography of a potential mining claim. Remember that you’ll need an adequate source of water when mining for gold. It is sometimes best to search for gold where it has been found in the past. Streams often hide gold, and you may be able to find a trail to the source.
Finding Patented Gold Claims for Sale
According to the Bureau of Land Management, you may locate a mining claim or site on federally-administered lands in 19 states. Numerous websites facilitate a search for patented gold claims with lists of available parcels of land that are for sale. The Code of Federal Regulations Title 43 Part 3832 is a good resource. You’ll also find valuable information on prospecting from the Gold Prospectors Association of America.
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Patent Assignment Agreement Lawyers & Attorneys
Intellectual property is a valuable asset for any company. You must secure its ownership, whether purchasing a patent (exclusive rights to make, use or sell an agreement) from another inventor or ensuring you own an invention developed by a contractor or an employee. A patent assignment agreement is a permanent way to transfer this ownership. If you are looking to draft a patent assignment agreement, a patent lawyer from Priori Legal's vetted network of attorneys can help protect your interests.
Understanding Patent Assignment
When you invent a new technology, you have the right to file for a patent on that technology with the United States Patent and Trademark Office (USPTO), which gives you the exclusive rights to make, use, offer for sale, sell, export, or import that invention in the United States. This right remains with the first inventor to file, regardless of who else may have had a claim in developing the technology. Of course, not everyone has an interest in using these rights. Some inventors may choose to sell ownership of all or some rights to a third party through patent assignment. This is done by signing a patent assignment agreement which transfers ownership of these rights.
When a Patent Assignment Agreement Is Necessary
When you choose to assign the rights to an invention over to another party, this must be done through a formal patent assignment agreement. Unlike some contracts, patent assignment agreements cannot be oral or casually written out. A formal contract must be drawn up.
Of course, when a company wants to buy the full permanent rights for a patent, a patent assignment agreement is vital, but any time that a company wants to secure patent rights to an invention they commissioned, a patent assignment agreement can also be used. These are therefore common within independent contractor agreements. Additionally, some companies have employees sign patent assignment agreements as a condition of employment to secure and strengthen the work-for-hire doctrine.
Key Provisions of a Patent Assignment Agreement
A patent assignment agreement is generally a fairly straightforward contract, but it requires several key provisions in order to be both valid and effective. The following are some key provisions that should be addressed in your patent assignment agreement.
Fee and Payment. In order for a patent assignment agreement to be valid, there must be consideration or payment. It must be specified and paid at signing, even if at the time of employment.
Assignment. There must be a formal cause saying exactly what will be assigned and when assignment transfers.
Patent Rights and Definitions. The exact patent to be transferred must be specified and fully defined as it is registered in the USPTO filing.
Further Assistance. If the original patent owner must help transition ownership or use of the patent, a further assistance clause will specify how and for how long.
Warranties and Indemnities. Most patents are transferred as-is, but some patent assignment agreements have warranties and indemnities to protect the parties involved.
Notarization. For a patent assignment agreement to be valid in the U.S., it must be notarized—or at least signed in front of two witnesses.
Patent Assignment vs. Licensing
Practically, patent assignment is very similar to patent licensing , especially exclusive licenses. Both transfer patent rights to another person or company. While licenses are temporary, however, assignment is permanent. Licensing patent rights is like renting property. Royalties are collected over time, but ownership does not transfer. Patent assignment agreements permanently transfer ownership. You can review and download a free template Patent Assignment Agreement or Patent License Agreement in Priori Legal's Document & Form Learning Center .
How do I record a patent assignment?
Once a patent assignment agreement has been signed, the assignment can be reported to the USPTO using the Electronic Patent Assignment System . This simple process include filling out a Patent Assignment Recordation Coversheet online and attaching the patent assignment agreement for legal documentation. This will be automatically changed then in the system to reflect the new ownership of the patent. To formalize this assignment, however, you must make the assignment of record in the file of the original patent application.
If I hire an independent contractor to create work for my company, do I need to get them to sign a patent assignment agreement?
Unless the original independent contractor agreement contains a clause that assigns the invention created to the hiring organization, they could patent the invention, and your company would have to get that work assigned.
Can I require an employee to sign a patent assignment agreement?
Under work-for-hire doctrine, employees who invent anything during the course of their work duties do not have patent ownership. Instead, the employer is conferred these rights. Still, many employers ensure an added layer of protection by having new employees sign an additional patent assignment agreement at the time of their employment.
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The basics of patent assignments
updated September 1, 2023 · 2min read
Defining Patent Assignment
Requirements to assign a patent, searching for patent assignments.
Assigning patents can be a great way for companies to generate revenue and reduce risks associated with intellectual property ownership. If you are considering entering into a patent assignment agreement, understand that it is irrevocable. Because of that, evaluate proposed terms and provisions carefully before moving forward.
Here's a high-level overview of how patent assignments work: when a patent's owner or applicant assigns it to another individual or company, the assignor agrees to relinquish their rights to enforce or benefit from it in the future.
You can assign rights for applications still pending with the United States Patent and Trademark Office (USPTO). When the USPTO approves the application, the assignee benefits from and may use and enforce the patent, not the assignor. Companies also assign rights for issued patents, which relieves the assignor of the burden of enforcing their intellectual property and provides a source of revenue.
Patent assignments can be lucrative for both parties. While assignors make money right away, assignees can create revenue streams by earning money from royalty payments. After an assignment is complete, the assignee has exclusive rights to such income.
A patent assignment agreement documents the transfer and arrangement between the parties. If you are considering entering into one, know that you need it to be written—a verbal agreement alone is insufficient.
Don't underestimate the importance of this, either. Without a valid agreement on file with the USPTO, an intended assignor remains legally responsible for the patent and an intended assignee gains none of the rights or benefits.
Here are the requirements for a valid written assignment:
- Confirm that the assignor has the full, legal right to make the assignment and that the assignee can legally assume the rights and obligations.
- Clearly identify both the assignor and assignee using legal names. If more than one company owns the patent, identify all owners.
- Identify the underlying patent by title and number and include a complete and accurate description of it.
- Describe the terms of the agreement, including financial arrangements.
- All parties must sign the agreement, with limited exceptions in situations where the assignor cannot be reached but where enough evidence exists that documents their intentions and rights.
- File the patent assignment with the USPTO within three months after the agreement is signed, paying the then-current fee.
Though the agreement is a legal document, it does not need to be notarized. However, obtaining notarization for the signatures provides added protection, limiting the risk of a party later claiming a signature was not valid.
The USPTO maintains a patent assignment database that includes all the assignments recorded since August 1980. Using the database, you can search with the assignor's or assignee's name, the patent number, application number, publication number, or other identifying information.
Properly assigning patents protects both assignors and assignees. If you want to assign a patent, downloading a patent assignment form can help. Alternatively, you can consult an intellectual property attorney .
by Cindy DeRuyter, Esq.
Cindy DeRuyter, Esq., has been writing for LegalZoom since 2018. She earned a Juris Doctor from Mitchell Hamline Scho...
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21 Jun 2018
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
It’s common to confuse the two concepts, but patent assignment is different from licensing.
In a license agreement, the patent owner gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership.
In a patent assignment, the original owner permanently transfers its ownership to another entity.
USING 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.
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.
- 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.
OBTAINING 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 (rightly or wrongly) 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 ASSIGNMENT
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 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 INVENTOR 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.
DO 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.
NEED 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.
14 Jun 2018
INTRODUCING OUR NEW PATENT AGENT, BRENT CLOTHIER
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.
Patent Assignment Agreement
A patent assignment agreement is intended to assign a patent to a company. The assignment must be supported by separate consideration which may be a nominal amount or a larger value. Download this free patent assignment agreement below and have it customized by an attorney for your needs today.
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Who Owns What Assignment and Ownership of Patents and Applications
Why does ownership of a patent/patent application matter.
A patent is a government-granted property right that can be used to exclude others from making, using, selling, offering to sell, and importing an invention for a specified time. Patents provide important commercial benefits (discussed in detail in our companion piece What You Need To Know About Patents ) — but only for patent owners.
So who owns a patent/patent application?
In the US, the inventor is presumed to be the initial owner of a patent or patent application. If there is more than one inventor, there may be more than one owner. Ownership can be transferred or reassigned. If your company values intellectual property and has employees who are encouraged to innovate, here are a few important strategies to ensure that your company can benefit from patents generated through employee inventions.
- Agreements with employees and service providers (Automatic Assignment) : Companies should have all employees sign confidential information and inventions assignment agreements (discussed in detail here ) before employees start generating intellectual property. Having employees sign these agreements at the beginning of their employment, before any work is done, is the best course of action. Likewise, failure to correctly structure IP provisions in agreements with third parties such as service providers and consultants prior to the execution of any work has caused serious issues for many companies. A form of confidential information and inventions assignment agreement for California employees is available here , and a form of consulting agreement for US consultants (which contains IP assignment provisions) is available here .
- Obligation to Assign: In some situations, even if your employees have not signed an agreement, they may still be obligated, either by contract or local law, to assign patent/patent application ownership to your company. For example, this could occur if the invention was developed on the job, the employee was hired specifically to invent for the company, and/or the inventor is an officer of the company.
- Explicit Assignments: Even when employees have signed appropriate agreements, your company should execute new patent-specific assignments whenever patent applications are filed. These assignments name the specific invention, patent, and/or patent application, and can have additional legal weight if the ownership of a patent is disputed.
Joint ownership of patent/patent application rights can be complicated. As with any property right, multiple owners can make for multiple legal scenarios. For example, co-owners would have to join together to bring a patent infringement lawsuit. By contrast, the opposite is true for licensing: a co-owner can license its patent/patent application rights to a third party, independent of the other co-owner(s), unless they have an agreement otherwise. Co-owners can also independently sell, mortgage, transfer, and will their rights to a patent/patent application. To avoid these kinds of issues, most attorneys recommend that a single entity be the patent/patent application owner, whenever possible. If this is not possible, then it is important to correctly structure IP provisions in an agreement, for example, ideally where one party exclusively licenses back all rights in the co-owned patent/patent application.
How do I make sure my company owns these patents/patent applications?
Well-structured ownership assignments are legally binding, but what does “well-structured” mean? Patent/patent application assignments have several formal requirements to be considered valid. Assignments must:
- Be in writing – unlike some other contracts, oral assignments or oral agreements to assign patent/patent application rights are rarely enforceable;
- Clearly identify all parties – recite names, addresses, and relationship of both the assignor(s) and assignee;
- Identify the property clearly – include the patent/patent application number, title, inventors, and filing date;
- Recite exchange of consideration – this is a standard for almost any contract, and here, even nominal consideration (e.g., $1) is sufficient; and
- Execution be notarized or attested to by one, preferably, two non-inventor witnesses – notarization or witnessing serves as evidence that the signatures (and, thus, the assignment) is valid. There is a lot of interest in utilizing an e-signature platform, such as DocuSign, for execution of Assignments. However, this is still a developing area, and the rules differ significantly around the world. If use of e-signatures is an important consideration for your Company, e.g., your employees are geographically diversified, you should consult with your IP counsel so as to understand the local laws and potential ramifications in countries that are important to your business.
Following these rules is a good practice and is an essential starting place to ensure the validity and enforceability of your assignment. However, validity does not end here. As with any contract, the legal language is key to eliminating ambiguity in your agreements.
Finally, make sure that any assignment in a patent/patent application is recorded with the US Patent and Trademark Office (USPTO) as soon as possible after execution. If an assignment is not recorded with the USPTO within three months from its effective date, the assignee’s claim to ownership could be at risk. For example, if an assignor were to subsequently improperly assign to another purchaser that was not aware of the previous assignment and the previous assignment had not been recorded with the USPTO, the subsequent purchaser may be able to successfully claim ownership.
You’re the new owner!
A patent is only as valuable as it is enforceable, and ownership is a key element of enforceability. Licensing, manufacturing, distributing, or otherwise making exclusive use of your invention can only be ensured if the patent is both valid and enforceable. Having ownership protection in place prior to the development of your intellectual property, as well as the correct legal ownership assignment documents executed afterward, can help ensure that you can make the most of your company’s ingenuity.
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Patent Assignments in Employment Agreements – a Sometimes Overlooked, but Always Important Component
- November 16, 2021
By: Peter C. Lando and Thomas P. McNulty
By: Thomas McNulty and Peter Lando, with assistance from summer intern Tyler Gruttadauria
Businesses, of course, have a strong interest in owning intellectual property created by their employees. Intellectual property—patents, copyrights, and other confidential and proprietary information including trade secrets—is often the most valuable asset a business can own, so it is important to ensure that employee developments and inventions belong to the employer. In the United States, inventions presumptively belong to the inventor, and any transfer of ownership (“assignment”) must be in writing to be effective. Rather than requiring employees to sign assignment agreements for each patent application filing, employers sometimes rely on employment agreements and handbooks to establish ownership in intellectual property created by an employee. Employers often provide employment agreements with assignment clauses that are intended to give the employer rights in inventions made by the employee during the period of employment. These assignment clauses are often treated as mere boilerplate, yet the precise wording of these clauses can have major impacts on the effectiveness and limitations of any assignment.
Ensure that you have an Assignment and not a mere promise to assign
When drafting an agreement to have an employee assign future inventions, it is vital that the language used in an assignment clause states a present-tense, actual assignment. Phrases such as “hereby assign,” “agrees to grant and does hereby grant,” or that inventions “shall belong” to the employer and employee “hereby conveys, transfers and assigns” have been deemed by the courts to be effective to transfer ownership of a future invention without the need for any subsequent agreement. Ownership effectively transfers immediately, once the invention has been made. Assignment clauses that use future tense language, on the other hand, generally will require an additional agreement to result in a transfer of ownership of the invention, and any intellectual property (“IP”) covering the invention. Terms such as “will assign,” “agree to assign,” “will be assigned,” and the like, have been found by numerous courts to constitute nothing more than a promise or contract to assign an invention in the future, but not to serve as an actual assignment.
In addition to the wording used in the assignment clause, the language of any carve-outs should also be scrutinized. Agreements may contain a carve-out clause to exclude a new employee’s prior inventions from being assigned, or to prevent assignment of inventions unrelated to the employee’s work from being swept into the assignment provision. A broad, non-specific carve-out clause may prevent an employee agreement from automatically assigning inventions of that employee, even where the assignment clause includes the proper “hereby assign” type of language, because this leaves open the possibility that an invention is not subject to the assignment clause. This contrasting language may create an ambiguity in the employment agreement that subjects it to construction under state law, which in turn may allow for the employee to introduce extrinsic evidence, such as conversations that took place during employment negotiations, to defeat the automatic assignment. While patent assignment provisions are governed by Federal Circuit law, resolution of contractual ambiguities is governed by state law, which varies considerably regarding the admissibility of such extrinsic evidence.
Failure to obtain an automatic assignment can have negative consequences
An assignment clause that is deemed ineffective to automatically transfer ownership of an invention can create significant problems for an employer. In such circumstances, a business would not have standing to bring a patent infringement suit until it has taken the necessary steps to obtain a valid assignment. This may require the filing of a breach of contract claim against the employee to require fulfillment of the contractual obligations, including execution of assignment documents. In the interim, infringers could continue practicing the invention; and if the infringing activity has gone on long enough, the six-year statute of limitations may prohibit full recovery of damages. Further, if an inventor/employee has made only a promise to assign, and instead transfers ownership to a third party who lacks knowledge of the assignment obligation, that second transfer of ownership may well prevail, leaving the original employer with no exclusionary rights at all.
Ineffective assignment provisions can affect more than just litigation. Businesses and investors typically conduct IP due diligence when entering into transactions involving the investment in or sale of IP assets, company divisions or entire entities, and any weaknesses in assignment provisions may affect the perceived value of the IP assets and/or business being considered.
Do not count on the “Hired-to-Invent” doctrine to result in ownership of employee inventions
Some employers do not require employees to sign an agreement containing an assignment of inventions because they believe that they automatically own inventions that they paid someone to create. Under the “hired-to-invent” doctrine, this will only occasionally be correct. Employees or contractors hired (and paid) specifically to create a particular invention or to solve a particular problem may be deemed to have implicitly assigned their rights in the invention to the employer. This is a highly fact-based determination, however, and applies only to inventions created in response to the specific thing the employee was hired to do. A mere title of “researcher” or even “inventor” will not, standing alone, suffice to ensure ownership of inventions by the employer. Further, until a court has ruled one way or the other, an employer relying on this doctrine will not have any certainty in its rights to the invention. Should the court rule against the employer, it would lose the exclusionary rights it believed it possessed and may face an infringement lawsuit from the employee or anyone to whom the employee may have assigned the invention/patent rights.
Absent an effective assignment, an employer may obtain limited “shop rights” in inventions made using the employer’s time, materials, facilities or equipment. Shop rights take the form of an implied license to practice the invention, precluding the employee from obtaining damages or injunctive relief on a patented invention. Shop rights are limited, however, and do not allow the employer to prevent others from competing by practicing the invention. Further, shop rights cannot be transferred via license or assignment, effectively devaluing the IP assets and, perhaps, the company.
In addition to having the proper “hereby assign” language, employment contracts should ensure that inventions , rather than just patents or patent applications, are subject to the assignment clause. Language stating that all inventions, improvements, discoveries, and the like, whether or not patentable or copyrightable, are subject to the assignment, ensures that information that could be protected through other regimes, such as trade secrets, automatically become the property of the employer.
Intellectual property has taken on an ever-increasing role in determining the value of a business. A company’s ability to develop and protect its intellectual property is a key factor in its future success. Given this, it is important that businesses recognize that assignment provisions of employment agreements are not mere boilerplate, but instead may be one of the most important legal provisions that ultimately can impact not only an employment arrangement, but the value of the business itself.
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- Patent Laws, Regulations, Policies & Procedures
- Manual of Patent Examining Procedure
- Chapter 0300
- Section 301
301 Ownership/Assignability of Patents and Applications [R-10.2019]
35 u.s.c. 261 ownership; assignment..
Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.
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.
A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent.
An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for 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.
35 U.S.C. 262 Joint owners.
In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.
37 CFR 3.1 Definitions.
For purposes of this part, the following definitions shall apply:
Application means a national application for patent, an international patent application that designates the United States of America, an international design application that designates the United States of America, or an application to register a trademark under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise indicated.
Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.
Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application, patent, or registration.
Office means the United States Patent and Trademark Office.
Recorded document means a document which has been recorded in the Office pursuant to § 3.11 .
Registration means a trademark registration issued by the Office.
Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1) . Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same (e.g., existence of another patent owner with a dominant patent, failure to obtain FDA approval of the patented invention, an injunction by a court against making the product of the invention, or a national security related issue).
For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a) . For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993). A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 .
“Assignment,” in general, is the act of transferring to another the ownership of one’s property, i.e., the interest and rights to the property. The U.S. Patent and Trademark Office cannot explain or interpret laws that govern assignments and related documents, nor can it act as counselor for individuals. Assignments and other documents are contracts that are governed by the relevant state or jurisdictional law.
In 37 CFR 3.1 , assignment of patent rights is defined as “a transfer by a party of all or part of its right, title and interest in a patent [or] patent application....” An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application. In order for an assignment to take place, the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inherent in the right, title and interest in the patent or patent application. 35 U.S.C. 261 requires transfer of ownership by an assignment to be in writing. See Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 859 (E.D. Va. 2016).
As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use. A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.
An exclusive license may be granted by the patent owner to a licensee. The exclusive license prevents the patent owner (or any other party to whom the patent owner might wish to sell a license) from competing with the exclusive licensee, as to the geographic region, the length of time, and/or the field of use, set forth in the license agreement.
A license is not an assignment of the patent. Even if the license is an exclusive license, it is not an assignment of patent rights in the patent or application.
Individual ownership - An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property. Alternatively, it occurs where all parties having ownership interest (all inventors and assignees) assign the patent property to one party.
Joint ownership - Multiple parties may together own the entire right, title and interest of the patent property. This occurs when any of the following cases exist:
- (A) Multiple partial assignees of the patent property;
- (B) Multiple inventors who have not assigned their right, title and interest; or
- (C) A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest.
Each individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.
An assignment can be made of record in the United States Patent and Trademark Office (Office) in two different ways, for two different purposes. The differences are important to note:
- (A) An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3 . Recordation of the assignment provides legal notice to the public of the assignment. It should be noted that recording of the assignment is merely a ministerial act; it is not an Office determination of the validity of the assignment document or the effect of the assignment document on the ownership of the patent property. See 37 CFR 3.54 , MPEP § 317.03 , and Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 862-3 (E.D. Va. 2016). For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.11 . See 37 CFR 3.81(a) .
- (B) An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding). This step may be necessary to permit the assignee to “take action” in the application, patent, or other patent proceeding under the conditions set forth in 37 CFR 1.46 and 37 CFR 3.81(a) and MPEP § 325 (for applications filed on or after September 16, 2012) or under the conditions set forth in pre-AIA 37 CFR 3.73 and MPEP § 324 (for applications filed before September 16, 2012). Recordation of an assignment in the assignment records of the Office does not , by itself, permit the assignee to take action in the application, patent, or other patent proceeding.
Additionally, for applications filed under 35 U.S.C. 111(a) , 363 , or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration. See 35 U.S.C. 115(e) , 37 CFR 1.63(e) , and MPEP §§ 302.07 , 317 , and MPEP § 602.01(a) .
301.01 Accessibility of Assignment Records [R-10.2019]
37 cfr 1.12 assignment records open to public inspection..
- (1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
- (2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
- (b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14 , are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
- (1) Be in the form of a petition including the fee set forth in § 1.17(g) ; or
- (2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.
- (d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.
Assignment documents relating to patents, published patent applications, registrations of trademarks, and applications for registration of trademarks are open to public inspection. Records related to assignments of patents, and patent applications that have been published as patent application publications are available on the USPTO website. Images of assignment documents recorded June 1998 and later are also viewable on the Office website. To view images of earlier-recorded assignment documents, members of the public must place an order pursuant to 37 CFR 1.12(d) .
The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open. Thus, if a document covers either a trademark or a patent in addition to one or more patent applications, it will be available to the public ab initio; and if it covers a number of patent applications, it will be so available as soon as any one of them is published or patented. Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.
Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public. For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14 , information related thereto is only obtainable upon a proper showing of written authority. For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D). See 37 CFR 1.12 . For applications filed prior to September 16, 2012, the written authority must be from the applicant or applicant’s assignee or from the attorney or agent of either, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application. See pre-AIA 37 CFR 1.12 .
If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14 .
Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b) .
Requests for abstracts of title for assignments of patents recorded after May 1, 1957, are provided by the Certification Division upon request and payment of fee required in 37 CFR 1.19 . Requests for copies of pre-1957 records for patents should be directed to the National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA. Payment of the fees required by NARA should accompany all requests for copies.
All assignment records from 1837 to April 30, 1957 for patents are now maintained and are open for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746 and at the Civilian Records Division of the National Archives at College Park, 8601 Adelphi Road, College Park, MD 20740-6001. Assignment records from before 1837 are not available. Individuals should check the National Archives website, www.archives.gov , for how to obtain information from these locations.
- 301.01-Accessibility of Assignment Records
- 302.01-Assignment Document Must Be Copy for Recording
- 302.02-Translation of Assignment Document
- 302.03-Identifying Patent or Application
- 302.04-Foreign Assignee May Designate Domestic Representative
- 302.05-Address of Assignee
- 302.06-Fee for Recording
- 302.07-Assignment Document Must Be Accompanied by a Cover Sheet
- 302.08-Mailing Address for Submitting Assignment Documents
- 302.09-Facsimile Submission of Assignment Documents
- 302.10-Electronic Submission of Assignment Documents
- 303-Assignment Documents Not Endorsed on Pending Applications
- 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
- 307-Issue to Non-Applicant Assignee
- 308-Issue to Applicant
- 309-Restrictions Upon Employees of U.S. Patent and Trademark Office
- 310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
- 311-Filing of Notice of Arbitration Awards
- 313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
- 314-Certificates of Change of Name or of Merger
- 315-Indexing Against a Recorded Certificate
- 317.01-Recording Date
- 317.02-Correction of Unrecorded Returned Documents and Cover Sheets
- 317.03-Effect of Recording
- 318-Documents Not to be Placed in Files
- 320-Title Reports
- 323.01(a)-Typographical Errors in Cover Sheet
- 323.01(b)-Typographical Errors in Recorded Assignment Document
- 323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
- 323.01(d)-Expungement of Assignment Records
- 324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
- 325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012
- Emergencies/Security Alerts
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- Recent Case Highlights
- Public Policies Limiting Patents
- Under-Utilized Defenses
- Who Decides What When?
- a) general canons of construction
- b) role of other claims
- c) role of specification
- d) role of prosecution history
- e) role of prior art, experts, and extrinsic evidence
- f) claim preamble
- g) claim transition
- h) method claims
- i) non-method claims
- j) particular claim language
- Content And Form Of A Claim Construction
- Relationship To Certain Defenses
- a) whether sec. 112(6/f) treatment invoked
- b) construction of sec. 112(6/f) claim element
- c) relationship to claim differentiation
- a) preamble
- b) printed matter, instructions on use, mental steps
- c) non-functional descriptive material
- d) intended use
- e) wherein and whereby clauses
- f) intended result
- g) process portion of product-by-process claim
- h) source or process restrictions in product claim or product limitation
- i) optional, conditional steps
- j) input signals in a circuit
- k) theory of operation
- Expiration of Patent; Extension Of Term
- Dedication to Public
- a) sec. 112(6/f) element
- b) product-by-process claim
- c) reverse doctrine of equivalents
- a) required evidence
- b) matter of law restrictions
- c) prosecution history estoppel
- d) disclosure-dedication restriction
- e) relationship to sec. 112(6/f)
- Sec. 271(a) (Direct) Infringement Of Any Type Of Claim
- a) "use" of claimed method
- b) "offer to sell" a method
- a) “makes” claimed invention
- b) “uses” claimed invention
- c) “sells” or "imports" claimed invention
- d) “offers to sell” claimed invention
- Sec. 271(a) (Direct) Multi-Actor (Divided; Joint) Infringement
- Sec. 271(a) (Direct) Infringement To Support Indirect Infringement
- Indirect Infringement Requires Knowledge Of Patent
- a) communication to direct infringer
- b) knowledge of infringement
- c) relevance of litigation defenses
- d) relevance of clearance opinion
- e) relevance of non-infringing uses
- f) relevance of instructions to users
- g) relevance of efforts to avoid infringement
- a) knowledge of infringement
- b) “offers to sell or sells”
- c) “component”, “material or apparatus”
- d) “material part of the invention”
- e) substantial non-infringing use
- Sec. 271(e)(2) Infringement (e.g., ANDA)
- Sec. 271(e)(1) “Safe Haven”
- a) “component”
- b) sec. 271(f)(1)
- c) sec. 271(f)(2)
- a) “a product”
- b) “made by a patented process”
- c) sec. 295 shifting burden of proof
- d) sec. 287(b) restriction on damages
- a) abatement
- b) intervening rights
- c) “substantially identical” claim scope
- d) relationship to pending litigation
- Presumptions And Burdens
- Assignor And Licensee Estoppel
- Person Having Ordinary Skill In The Art (“PHOSITA”)
- a) Alice step one
- b) Athena Diagnostics En Banc Rehearing Denial
- c) improvement to computer or machine functionality
- d) categories of patent-ineligible subject matter
- f) Alice step two
- g) idea’s breadth immaterial
- h) idea’s novelty immaterial
- i) idea’s utility immaterial
- j) preemption of idea
- k) machine-or-transformation “test”
- l) non-method claims
- m) when decided?
- Utility (Sec. 101)
- Regards As The Invention (Sec. 112(2/b))
- a) post-Nautilus decisions
- b) ambiguous claims
- c) unclear how to test for compliance
- d) requiring forward-looking assessments of likely future results
- e) terms of degree
- f) functional (and result) claims
- g) coined terms
- h) hybrid claims
- i) “consisting essentially of” claims
- j) impossibility in claim
- k) correction of errors in claim
- l) who decides what when?
- Particular And Distinct Claims (aka Indefiniteness) (Sec. 112(2/b) + Sec. 112(6/f))
- a) which disclosure governs
- b) support “full scope” of claim
- c) omission of non-optional element
- d) original claims
- e) functional claims
- f) genus claims
- g) relationship to enablement
- b) enable “full scope” of claim
- c) undue/unreasonable experimentation
- d) teaching away
- Best Mode (Sec. 112(1/a))
- a) "filed before"
- b) patent owner’s burden
- “Invention” Date (Sec. 102(g))
- (FITF) U.S. Patents/Published Apps Qualifying As Prior Art (Sec. 102(a)(2) (AIA))
- (FITF) Other Prior Art (Sec. 102(a)(1) (AIA))
- a) ready for patenting
- b) commercial offer for sale
- c) may be secret
- d) method claims
- Public Use Bar
- Experimental Sale Or Use
- a) third-party on sale/public use
- b) “printed publication” (sec. 102(a), (b))
- c) sec. 102(e) prior art
- d) applicants’ “publications”/disclosures
- e) patent owner’s other patents
- f) prior invention (sec. 102(g)) [by one of the co-inventors]
- g) prior invention (sec. 102(g)) [by third party]
- h) derivation from others; derived knowledge (sec. 102(f))
- i) “known or used by others” in U.S. (sec. 102(a))
- j) applicant admitted prior art and knowledge
- k) overcoming putative prior art
- a) inherent disclosure
- b) genus - species
- c) method claims
- d) apparatus claims
- e) reference enabling
- f) single reference
- g) expert testimony
- h) relationship to written description support
- a) analogous art
- b) what a reference teaches
- c) teaching away
- d) motivation to combine or modify art
- e) reasonable expectation of success
- f) the manner in which the invention was made
- g) objective indicia of non-obviousness (secondary considerations)
- h) nexus to claimed invention
- i) objective indicia of obviousness
- j) admissions and omissions supporting obviousness
- k) genus – species
- l) method claims
- m) obvious as a matter of law
- Sec. 135 Repose
- a) same invention
- b) obviousness-type (non-statutory)
- c) terminal disclaimer
- d) safe harbor for “divisionals”
- Broadening Reissue, Reexam, IPR Or PGR (Secs. 251, 305, 314, 316, 326)
- Inventorship (Secs. 101, 102(f), 116, 256)
- Abandonment Of Invention (Sec. 102(c))
- Oath Defect
- Other Defects
- Unclean Hands
- Likely Survives Therasense
- Pleading Requirements
- Effect Of Finding Inequitable Conduct
- Bona Fide Purchaser (Sec. 261)
- Constitutional And Statutory (fka “Prudential”) Standing
- Co-Ownership Of Patent
- Exhaustion; First Sale Doctrine
- Implied License
- Legal Estoppel
- Equitable Estoppel
- Increased Damages; Non-Willfullness- Basics
- Pre- Halo Willfulness And Increased Damages
- Opinion Of Counsel
- Waiver Of Privilege
- Who Decides Willfulness Or Misconduct
- Enhancement of Damages
- Damages and Other Monetary Remedies – Basics
- a) time limitation on damages
- b) sec. 287 marking; notice of claim; impact on damages
- c) indirect-infringement damages limited to extent of direct infringement
- d) apportionment
- e) limits re: extraterritorial reach (foreign activities)
- f) failure to mitigate damages
- g) “benefit rule” in mitigation of damages
- a) lost sales
- b) reduced prices/price erosion
- Lost Royalties
- Established Royalty
- a) Georgia-Pacific factors
- b) hypothetical negotiation
- c) royalty base; entire market value rule
- d) royalty rate
- e) rejected reasonable royalties methodologies
- f) FRAND standard essential patents
- Supplemental Damages
- Prejudgment Interest
- Provisional Rights; Pre-Issuance Reasonable Royalty (Sec. 154(d))
- Post-Judgment (“Ongoing”) Royalties
- Equitable Principles Governing Injunction
- Irreparable Harm
- Legal Remedies Inadequate
- Balance of Hardships
- Serves Public Interest
- Preliminary Injunction
- Scope Of Injunction
- Contempt Of Injunction
- ITC Remedies
- Court Of Federal Claims
- Claim Preclusion
- Issue Preclusion
- Kessler Doctrine
- Judicial Estoppel
- AIA Trial-Based Estoppel
- Prosecution Laches
- Reissue Recapture Rule
- Reissue/Reexamination Defects
- Improper Claim Structure Under Sec. 112(4/d)
- Improper Adjustment Or Extension Of Patent Term
- Cross-Appeal Rule
- Scope Of Issues Limited After Appeal
- Sovereign Immunity
- Medical Practitioner Immunity
- Lack Of Personal Jurisdiction
- Improper Venue
- Sanctions and Fees Against Patent Owner- Basics
- Cases Awarding Fees
- Cases Denying Fees
- “Exceptional Case”: Factors For And Against
- Prevailing Party
- Amount Of Fees Award
- Rule 11 Sanctions
- BASICS : Although an assignment must be in writing, 35 U.S.C. § 261 , ownership can be transferred by other means not requiring a writing, such as through intestate succession laws. Sky Tech. (Fed. Cir. 08/20/09); see Vapor Point (Fed. Cir. 08/10/16) (O’Malley, J., Concurring) (recommending court overrule precedent suggesting in-writing requirement can be superseded under state law). Exclusive license with right to sue need not be in writing. Bard Peripheral III (Fed. Cir. 01/13/15). Written assignment or document memorializing prior assignment must be made pre-suit. Bard Peripheral III (Fed. Cir. 01/13/15). Post-complaint “nunc pro tunc assignments are not sufficient to confer retroactive standing” under Sec. 281, even if preceded supplemental or amended complaint. Alps South (Fed. Cir. 06/05/15) (although patent owner can be added post-complaint to cure standing defect); but see Sealant (Fed. Cir. 06/11/15) (non-precedential) (standing is claim-by-claim and need exist at time claim first made in the action).
- Must Convey Undivided Interest Or Exclusive Patent Right To Constitute Assignment : “‘To create an assignment, a contract must transfer: (1) the entire exclusive patent right, (2) an undivided interest in the patent rights, or (3) the entire exclusive right within any geographical region of the United States.’” Diamond Coating (Fed. Cir. 05/17/16) (no assignment of all substantial rights where original patent owner retains a right to make, use and sell patented products, plaintiff’s rights to license or enforce are restricted, and plaintiff did not obtain right to practice the patent).
- “Hereby Grants” (Present Tense Active Verbs) Conveys Legal Title; “Agrees To Assign” (Passive Verbs In Indefinite Or Future Tense) Conveys Only Equitable Title : A party with legal title to a patent has standing to sue even if it may not have equitable title and, conversely, a party with equitable title but no legal title lacks standing. The issue normally arises where someone agrees to assign patent rights in future inventions, but fails to actually assign them. If one uses “does hereby grant [or “assign”]” (rights in any future inventions to the assignee) language, then legal title will pass by operation of law once the invention comes into existence. See Stanford (Fed. Cir. 09/30/09) (where inventor first entered an “agree to assign” contract with Stanford giving it equitable rights in future inventions, but then inventor entered a “hereby assign” contract with defendant’s predecessor in interest, and then made invention and application was filed, legal title automatically transferred to that predecessor upon filing of the application, so legal title was in defendant when inventor later assigned rights to Stanford; and Stanford not “bona fide purchaser as it had constructive notice of the “hereby assign” contract), aff’d on other grounds , Bd. of Tr. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. (U.S. 06/06/2011) (but two Justices question Fed. Cir. distinction between “agree to assign” and “hereby assign”); Omni Medsci (Fed. Cir. 08/02/21) (2-1) (aff’g denial of R. 12(b)(1) mtn. for lack of standing; bylaws’ provision that certain patents “shall be the property of the University” did not “automatically and presently assign legal title” to the inventions, in part because does not use present-tense active verbs); Preston (Fed. Cir. 07/10/12) (aff’g Summ. J. of no standing because plaintiff employee’s employment agreement automatically assigned (“does hereby assign” any invention conceived or made while employed) patent rights to employer (the defendant)); Advanced Video II (Fed. Cir. 01/11/18) (2-1) (aff’g dismissal of complaint for lack of standing: “will assign” provision in employment agreement was a mere promise to assign to employer (putative predecessor in interest to plaintiff)); Filmtec (Fed. Cir. 07/22/91) (vacating preliminary injunction in view of serious doubts re who has title to patent; an assignment of rights in an invention made prior to the existence of the invention is an assignment of an expectant interest conveying equitable title to the assignee which, “once the invention is made and an application for patent is filed,” conveys legal title to the assignee and the assignor has nothing left to assign). But, “will be assigned” or “agree to assign” language transfers only equitable title, not legal title. Speedplay (Fed. Cir. 03/01/00) (aff’g plaintiff obtained substantially all rights in patent from the inventor via a “hereby … assigns” provision); SiRF Tech. (Fed. Cir. 04/12/10) (aff’g that petitioner in ITC had standing, because respondent failed to show that invention fell within scope of one inventor’s automatic assignment to another company; recording in PTO an assignment from inventor to the plaintiff shifts burden of proof (production?) to challenger to challenge that assignment by, e.g., proving earlier assignment by inventor to another company); Abraxis (Fed. Cir. 11/09/10) (plaintiff lacked standing when complaint was filed because promise to assign was not present assignment, and attempt to cure retroactively failed), rehearing en banc denied (Fed. Cir. 03/14/11); Gellman (Fed. Cir. 11/30/11) (non-precedential) (“this court has consistently required that present assignments of future rights expressly undertake the assigning act at the time of the agreement, and not leave it to some future date”).
- Transfer Of Ownership Of Software Developed Does Not Necessarily Assign Patent Rights : A software development contract giving company exclusive rights to the software does not necessarily grant ownership rights in any patentable methods or systems invented in creating such software. James (Fed. Cir. 04/20/18) (rev’g dismissal of suit for correction of inventorship for lack of standing; if plaintiff proves sole inventorship then he may own the patents).
- Bayh-Dole Act Does Not Assign Inventors’ Rights To Their Federally Funded Employers : It is a “basic principle of patent law that inventors own their inventions.” Bayh-Dole Act does not deprive inventors of their interest in federally funded inventions. 201(e)’s “any invention of the contractor” does not refer to all inventions of the contractor’s employees, but rather to “those owned by or belonging to the contractor.” “The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have.” Bd. of Tr. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc. (U.S. 06/06/2011).
- State Law Governs Interpretation Of Contract Purportedly Assigning Invention, But Federal Law Governs Whether Automatic Assignment : Abbott Point (Fed. Cir. 01/13/12) (2-1) (aff’g plaintiff did not own patent or have standing); Intellectual Ventures (Erie Indemnity) (Fed. Cir. 03/07/17) (aff’g dismissal for lack of standing; “whether a patent assignment clause creates an automatic assignment or merely an obligation to assign” is a question of federal law); Schwendimann (Fed. Cir. 05/13/20) (2-1) (aff’g assignment valid, and properly reformed under state law, despite misnaming assignee, in view of other writings showing correct intended assignee; “by virtue of the reformation, the written instrument was corrected nunc pro tunc , to the point of the assignment”).
- Termination Upon Failure Of Condition Subsequent Does Not Necessarily Defeat Transfer Being Deemed An Assignment : “An assignment of a patent ‘may be either absolute, or by way of mortgage and liable to be defeated by non-performance of a condition subsequent.” Vaupel (Fed. Cir. 09/13/91) (transfer granted all substantial rights, despite retaining “1) a veto right on sublicensing by Vaupel; 2) the right to obtain patents on the invention in other countries; 3) a reversionary right to the patent in the event of bankruptcy or termination of production by Vaupel; and 4) a right to receive infringement damages.”) But see Propat (Fed. Cir. 01/04/07) (grant did not transfer all substantial rights; the power “to terminate the agreement and end all of Propat’s rights in the patent if Propat fails to perform up to the specified benchmarks, although not dispositive, is yet another indication that Authentix retains a significant ownership interest in the patent”).
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