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Who may apply for a patent?

You (the inventor) or your legal representative may apply for a patent, with some exceptions. These include if the inventor has died, is legally incapacitated, refuses to apply, or cannot be found. Two or more people inventing something together may apply for a patent as joint inventors. A person (e.g., a company) to whom an inventor has assigned an invention, or to whom the inventor is obligated (e.g., contractually required) to assign an invention, may also apply for a patent.

If you only contribute money but are not the inventor or co-inventor, you cannot be named as an inventor or co-inventor in the patent application. Furthermore, if you are not the inventor, and the inventor(s) did not assign the invention to you or does not have an obligation to assign the invention to you, you may not apply for a patent. USPTO employees cannot apply for or own a patent unless they inherit it.

Patent ownership gives the owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed. A patent may be owned jointly by two or more entities. Also, the owner may assign a part interest in a patent to another entity.

In the absence of any agreement to the contrary, any joint owner of a patent, no matter how small the part interest, may make, use, offer for sale, sell, and import the invention for personal profit without accounting to the other owners. However, the ability to practice the invention may be constrained by the applicable (non-patent) laws and the rights of others. Joint owners may sell their interest or any part of it, or grant licenses to others, without regard to other joint owners, unless a contract governs their relationship.

Jointly owned or partially assigned patents affect people’s rights. So if you are in such a situation, consult with an attorney to understand the law and protect your rights.

Assignments and licenses

A patent is personal property and may be sold or mortgaged, written into a will, and passed to one’s heirs. An experienced, licensed patent attorney can help with licensing agreements and assignments. Some states have set certain formalities to be observed in the sale of patent rights.

Assignments

The transfer or sale of a patent or application is executed through an assignment. Patent law also provides for assignment of part interests (half, fourth, etc.) in a patent. Upon assignment, the assignee becomes the owner of the patent and has the same rights as the original owner.

If the patent is mortgaged, ownership passes to the lender until the mortgage has been satisfied and retransferred to the borrower. Assignments which are made conditional on the performance of certain acts or events, such as the payment of money or other subsequent condition, if recorded in the USPTO, are regarded as absolute assignments for USPTO purposes until canceled with the written consent of all parties or by the decree of a court of competent jurisdiction. The USPTO does not determine whether such conditions have been fulfilled.

  Patent Assignment Search

This searchable database contains all recorded Patent Assignment information from August 1980 to the present.

  Trademark Assignment Search

The database contains all recorded Trademark Assignment information from 1955 to the present. Trademark Assignments recorded prior to 1955 are maintained at the National Archives and Records Administration.

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Navigating The USPTO Patent Assignment Search: A Comprehensive Guide

Contributor.

The United States Patent and Trademark Office (USPTO) is a pivotal institution in the realm of intellectual property, playing a crucial role in protecting the innovations that fuel progress. Among its varied services, the USPTO patent assignment search stands out as an essential resource for individuals and organizations navigating the intricacies of patent ownership and assignments. This guide delves deep into the functionality and significance of the USPTO's patent assignment search tool, shedding light on its utility and operation for all stakeholders involved in the patenting process.

Understanding Patent Assignments

To fully appreciate the value of the USPTO assignment search, one must first understand what a patent assignment entails. Essentially, a patent assignment is the transfer of an owner's rights, title, and interest in a patent or patent application to another entity or individual. This process can occur through the sale of the patent, a transfer of ownership during a business transaction, or through inheritance. The completion of an assignment confers upon the new owner the exclusive rights to the patent, including the authority to prevent others from exploiting the patented invention.

The Role of the USPTO Patent Assignment Search

Central to the USPTO's offerings is the USPTO assignment database, a comprehensive repository that records all patent assignment information from August 1980 to the current day. This database becomes indispensable for verifying the present ownership of a patent or patent application whenever the USPTO processes pertinent assignment details.

For inventors, legal professionals, and corporations alike, the USPTO assignment search is vital for various reasons. It facilitates due diligence efforts prior to the acquisition or licensing of patents, aids in the resolution of patent right disputes, and ensures adherence to assignment recording protocols.

Utilizing the USPTO Patent Assignment Search

Thanks to the user-friendly interface of the USPTO assignment search tool , users can effortlessly access detailed records of patent assignments. This tool, part of the broader USPTO Electronic Patent Assignment System (EPAS), allows searches by multiple criteria such as patent number, assignor and assignee names, publication numbers, and reel/frame numbers. Results from this assignee search provide comprehensive details about each assignment, including participant names, assigned patents or applications, and the date of assignment.

The USPTO patent assignment search tool is far more than a mere database; it serves as a critical access point to the legal and commercial dimensions of patenting. By facilitating access to exhaustive records of US patent assignments, the USPTO empowers stakeholders across the innovation landscape to make well-informed decisions. This, in turn, helps in averting disputes and promoting the seamless transfer of technology. Whether you are conducting a US patent assignment search, exploring the USPTO assignment database, or utilizing the USPTO trademark assignment search function, the USPTO's resources are invaluable for anyone involved in the intricate world of patents and trademarks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Intellectual Property

United states.

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Navigating the USPTO Patent Assignment Search: A Comprehensive Guide

By Babak Akhlaghi on March 28, 2024.

The United States Patent and Trademark Office (USPTO) is a pivotal institution in the realm of intellectual property, playing a crucial role in protecting the innovations that fuel progress. Among its varied services, the USPTO patent assignment search stands out as an essential resource for individuals and organizations navigating the intricacies of patent ownership and assignments. This guide delves deep into the functionality and significance of the USPTO’s patent assignment search tool, shedding light on its utility and operation for all stakeholders involved in the patenting process.

Understanding Patent Assignments

To fully appreciate the value of the USPTO assignment search, one must first understand what a patent assignment entails. Essentially, a patent assignment is the transfer of an owner’s rights, title, and interest in a patent or patent application to another entity or individual. This process can occur through the sale of the patent, a transfer of ownership during a business transaction, or through inheritance. The completion of an assignment confers upon the new owner the exclusive rights to the patent, including the authority to prevent others from exploiting the patented invention.

The Role of the USPTO Patent Assignment Search

Central to the USPTO’s offerings is the USPTO assignment database, a comprehensive repository that records all patent assignment information from August 1980 to the current day. This database becomes indispensable for verifying the present ownership of a patent or patent application whenever the USPTO processes pertinent assignment details.

For inventors, legal professionals, and corporations alike, the USPTO assignment search is vital for various reasons. It facilitates due diligence efforts prior to the acquisition or licensing of patents, aids in the resolution of patent right disputes, and ensures adherence to assignment recording protocols.

Utilizing the USPTO Patent Assignment Search

Thanks to the user-friendly interface of the USPTO assignment search tool , users can effortlessly access detailed records of patent assignments. This tool, part of the broader USPTO Electronic Patent Assignment System (EPAS), allows searches by multiple criteria such as patent number, assignor and assignee names, publication numbers, and reel/frame numbers. Results from this assignee search provide comprehensive details about each assignment, including participant names, assigned patents or applications, and the date of assignment.

The USPTO patent assignment search tool is far more than a mere database; it serves as a critical access point to the legal and commercial dimensions of patenting. By facilitating access to exhaustive records of US patent assignments, the USPTO empowers stakeholders across the innovation landscape to make well-informed decisions. This, in turn, helps in averting disputes and promoting the seamless transfer of technology. Whether you are conducting a US patent assignment search, exploring the USPTO assignment database, or utilizing the USPTO trademark assignment search function, the USPTO’s resources are invaluable for anyone involved in the intricate world of patents and trademarks.

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Ant-Like Persistence

Some of the defects in the new Assignment Center

Earlier today the USPTO released its new Assignment Center, after having shut down the familiar and reliable EPAS and ETAS systems.  It is full of bugs and defects.  Here are some of the bugs and defects. 

It turns out that it is impossible to e-file an Assignment for recordation against a PCT patent application that was filed in a Receiving Office other than the RO/US.  The screen shot above shows the failed results.  In this way, the developers at the USPTO who got this wrong in their Assignment Center system violated 35 US.C § 363 which says:

An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.

In EPAS, the user was permitted to enter a PCT application number in free text and this number would get used in the e-filing process.  In Assignment Center, the user is forced to go through a “properties search”.  I entered my PCT application number (with the last couple of digits blurred in the screen shot).  The Assignment Center says “No Properties available” and “No results found”.

(Update:  the USPTO did fix this bug, but it took three months.  See blog article entitled USPTO fails to let me know that it fixed a defect that I reported in Assignment Center .)

Other defects:

• It is impossible to save a partially finished submission package.
• It is impossible for one person to start the submission and then to forward it to a second person for review or completion.
• It is impossible to change the name of the person signing (for example if a non-lawyer starts the submission and if the lawyer wishes to sign).
• It is impossible to add one’s file number (docket number) to the payment page.
• There is a place where it says “can not” which should be “cannot”.
• It is impossible to enter a trademark application number.
• A user reports being unable to select any state from a drop-down menu of possible states.
• It is impossible to create “stored contact information”.
• There is a place where it says “eight or less” which should be “eight or fewer”.
• It is impossible to import a saved XML template from EPAS.
• It is impossible to import a saved XML template from ETAS.
• Caller to the help telephone number was told there are seventy (70) calls ahead of the caller.
• The system ought to accept a patent application number in any format that the USPTO users to present that application number.  Instead, the system forces the user to edit the patent application number (presented by the USPTO with a virgule and a comma) to remove the USPTO-presented virgule and comma.

It is woefully clear that the USPTO software developers did no beta testing at all.  If they had done even the most rudimentary beta testing, this defect in the system would instantly have been identified.

What was the supposed problem for which this Assignment Center is supposedly the solution?  Nobody knows.  I am not aware of any users having asked the USPTO to create this new Assignment Center.  The USPTO never asked any users what, if any, problem they thought needed to be fixed by shutting down EPAS and ETAS in favor of this new Assignment Center.

Here is what the USPTO says in its FAQ.

What new features does Assignment Center give the user, that EPAS/ETAS did not?

You now have the ability to track the progress of your assignment cover sheet(s) and know the status of your submission.

This new system will walk you through the process of creating a cover sheet with an improved, user-friendly interface.

It is certainly false to say that the new “interface” is “improved” or “user-friendly”.

Share this:

6 replies to “some of the defects in the new assignment center”.

OMG, someone commented on another one of your articles that the USPTO must be openly hostile to practioners now because nothing else can explain this ongoing never ending string of FUBARS. I am holidng off recording assignments now because I am not a masochist. It isn’t bad enough that I can’t get my Adobe to save ANYTHING to a PDF now that Patent Center will let me upload (that’s a Microsoft fubar that happened recently like a thief in the night) but this is one more kick in the teeth. You are right, they do NOT Beta Test, and they certainly don’t bother ask the people who have to struggle this insanity, the Paras.

Re: 1st defect- It is impossible to save a partially finished submission package

The system seems to save anything you have done before you leave the page. Just click the Home screen at the top left corner.

However, a huge bug that we found- it is impossible to select some certain dates, unless you select the next day.

For example, if you want to select January 23, 2024 but the system fails to show the correct date, try January 24, 2024 and the system may show January 23, 2024 which is the intended date.

What a new buggy system!!!

Cannot believe there is no way to save templates that are often used when you file numerous Assignments for the same assignee. This is not only hostile to practitioners, but also to the clients who will bear the cost of the additional time spent recording an Assignment.

What used to be a simple XML-Export from my docketing system and loading it as a “template” into EPAS now requires dozens of copy-and-paste operations. I will be outsourcing data entry to the USPTO and start filing assignments by fax. Seems others are doing the same; assignment division fax has been busy nonstop since yesterday. Anybody know if assignments can go through Central USPTO fax? I would assume so.

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Due Diligence on Startups: Patent Assignments and Inventorship Issues

Assignments are recorded at the USPTO and are available to the public. On the USPTO website[1], a search for the company or inventor will show assignments as they are recorded. This website will show that an assignment exists and the parties to the assignment, but to get an actual copy of the assignment someone needs to visit the USPTO in person. There are third party services that will get the USPTO copies for a fee.

One of the flexible things about assignments is that different rights to a patent can be assigned to different people. For example, a patent can be assigned to a third party but can grant the previous owner a paid up, royalty-free license to use the technology. These provisions are only shown in the documents available at the USPTO and not online.

For due diligence, the owners of the patents should provide all of the assignments in a chain of title. The chain of title always starts with the inventor and will progress to the current owner. If there are any license agreements relating to the patents, each of the previous owners of the patents should provide copies of the agreements.

Startups typically use assignments that come from their patent attorneys. Normally, these are ok, but often these assignments were written years ago and have been reused for decades since the patent attorney started practicing.

One of the items most often omitted is the right to “causes of action”, which include the rights to sue for past damages. This is not important when the invention is created, because there is no past infringement, but it is important when patents are transferred later on.

Another thing to look for in the chain of title are any security interests in the assets. Just like a mechanic’s lien on real estate, the patents may be put up as collateral for a bank or some other institution. This typically does not happen in startups, but these will appear from time to time.

In most cases, a quick look at the USPTO assignments database will show the provenance of the asset. The inventor, patent attorney, or company should have the signed assignments for review.

What If There Are No Assignments?

For young startups or first time inventors, there may be no assignments at all. When this problem is encountered, no investment should be made for three months .

This means that there is a possibility that the patents were assigned to someone else in the last three months, and that person has not yet filed the assignment with the USPTO.

When there are no assignments recorded and the patent application has been around for a long time, the assignee must file an assignment, then wait three months to see if any other assignments are filed. If the three months pass without incident, the assignment is valid.

There are all sorts of scenarios where an entrepreneur, hungry for money, assigns their patents to someone for cash. They might not even know that it happened, as it could have been in a stack of papers or even a paragraph in some deal they signed.

The company needs to have solid chain of title to the assets. Until that is set in stone, stay away from the investment.

Inventorship Issues

Inventorship issues are one quick way to sink a patent. One of the worst things that someone can uncover is that there are problems with who was listed on the patent.

When patents get litigated, the patents can be attacked on the merits by arguing that the patent was issued incorrectly or that the patent examiner did not interpret the prior art correctly. This is long and tedious.

One of the easiest ways to kill the patent completely is to argue that the inventors were incorrectly listed. If there was any impropriety, the patent can be completely invalidated without ever arguing whether or not it was properly granted.[2]

These problems come in two forms: people who are listed as inventors but should not have been, and people who are left off.

Having Too Many Inventors

Courtesy in Asia is that an inventor will always list their boss on a patent. This can happen in startups, too, where the CEO might not have anything to do with the invention, even though their name was listed first. When looking at a patent portfolio, especially with a long list of inventors, investigate who all the inventors are and what their area of expertise is.[3]

Here is a typical scenario where everything falls apart: Let’s assume that the names of a six-person startup team are all listed as inventors on a patent. The CEO (or the patent attorney) is too cowardly to tell one of the people that they did not contribute, so the CEO magnanimously adds everybody to the patent. What actually happens is that the person who actually contributed the biggest portion of the ideas is quiet, but very resentful.

When the patent is being litigated, or when an acquiring company is doing due diligence before they buy the company, someone asks about all the people listed on the patent. By the time this happens, some of the people have left the company. The investigator calls all of the inventors, because they are listed on the face of the patent, and asks about how the invention took place.

Inevitably, the inventor who was scorned will go into a tirade about how so-and-so was included on the patent when they contributed nothing. Alternatively, the inventor may state that they had absolutely nothing to do with the invention but they were included for some reason.

All of a sudden, the patent can be completely invalidated with a simple affidavit from the scorned inventor. When that asset is a key to the entire acquisition deal, it can fall apart completely.

Having Not Enough Inventors

On the other side of the coin, what about leaving off an inventor?

These problems are less severe mostly because they are harder to uncover. We do not have a list of people on the face of the patent to call. However, there is one place where this happens quite frequently:

Patents that come from startup accelerator companies have half the value.

Within the patent valuation community, the value of a patent of any company in a startup accelerator must be cut in two. Why is that?

The problem is inventorship, and here’s the scenario:

A bunch of startups are put in a big room and put through their paces. They learn lean startup methods, they hone their pitch, they build a minimum viable product, they get some customer data, they hone their pitch some more, and they present to investors.

All of these companies work elbow-to-elbow with each other. A CTO from one startup might be standing by the water cooler struggling with their minimum viable product, and a CTO from a second company may be there, too. The first CTO explains the problem and the second CTO offers a suggestion. The light bulb goes off and they find the key that unlocks the product. The first CTO gets a patent on the invention, but the second CTO believes (rightly or wrongly) that they contributed to the invention.

The value of the patents for accelerator companies is cut in half because there is no way for the second CTO to be listed on the first CTO’s patent. If they do list both inventors, both companies would have rights to the patent. If they do not list both inventors, the second CTO can cause the patent to be invalid.

The value is discounted 50% because there is a very strong possibility that another person in another company believes (rightly or wrongly) that they should have been an inventor but they were left off the patent.

It really does not matter if that person should have legally been listed as an inventor or not; what matters is what that person believes . The mere fact that someone is out there making noise that they should have been an inventor is enough to scare buyers away for good.

Patents And Proprietary Information Agreements

Every person, including the original founder, must have a patents and proprietary information agreement in place with the company.

These agreements cause all of the inventions created by the person to be assigned to the company.[4]

Founders are notorious for not having these agreements in place. They will often have them with employees, but the solo founder often will not sign one with the company. As an investor, this must be in place with everyone – including the inventor/founder.

These agreements are essential because they cause the company to be the owner of the invention at the time the document is signed . Once the document is in place, it can be substituted as a regular assignment and sent to the USPTO as an assignment. This is incredibly helpful when there are problems down the road, such as when an inventor leaves the company or decides that they try to hold the patent hostage for some kind of bonus.

Note: This is an excerpt from “ Investing In Patents ” by Russ Krajec. Russ is the founder and CEO of BlueIron IP, and investment company that finances intellectual property for angel and venture backed startup companies.

_______________

[1] See http://assignment.uspto.gov .

[2] Note that this is a feature of US law. In the US, patents are granted to “inventors”, but every other country, patents are granted to “applicants”, which can be an inventor or a corporation. The recent patent law now allows the applicant to be a corporation, but only after the inventor assigned their rights to the corporation.

[3] The legal definition is that a joint inventor or co-inventor must contribute at least one limitation to at least one claim to be listed as an inventor. The key here is that inventors must contribute to something that is in the final version of the claims. Often claims are amended and the inventorship is supposed to be updated, but this rarely happens in practice.

Patents with even the hint of inventorship issues are severely discounted in the secondary market and have almost no value.

[4] See Stanford University v Roche Molecular Systems, Inc.   The key pint is that the agreement between the employee and employer must state that the employee “hereby assigns” their inventions, not “will assign” their inventions.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

One (not so minor) correction:

The statement “ Assignments are recorded at the USPTO and are available to the public. ”

should read instead:

Assignments may be recorded at the USPTO and may be available to the public.

Contrary to the perception created, there is no actual legal requirement that assignments must be recorded.

Is it “smart” or “best practice” to do so? Sure. Are there situations that lend themselves to not doing so? Also sure.

The caveat should always be included informing a client that the due diligence is limited by this fact.

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