Patent assignee

A US regulation defines an assignment as a transfer by a party of all or part of its right, title and interest in a patent or patent application¹. Patents and applications, or any interest in them, are assignable in law by an instrument in writing (35 U.S.C. 261)⁴. The statute also says the word patentee includes the successors in title to the patentee (35 U.S.C. 100(d))⁹.

The MPEP states where ownership starts. For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application. For applications filed before that date, ownership initially vests in the named inventors³. The regulation on proving ownership repeats the presumption: the original applicant is presumed to be the owner unless there is an assignment (37 CFR 3.73(a))⁶.

An assignee can hold less than everything. According to the MPEP, each individual inventor may assign only the interest that inventor holds, so an assignment by one joint inventor makes the assignee a partial assignee. All parties with any part of the ownership must act together as a composite entity in patent matters before the USPTO³.

Under 35 U.S.C. 118, if a patent is granted on an application filed by a person other than the inventor, it is granted to the real party in interest, on such notice to the inventor as the Director considers sufficient¹⁰.

• On the patent. An application may issue in the name of the assignee where a request is submitted with payment of the issue fee and the assignment has been previously recorded, or the request states that the document has been filed for recordation (37 CFR 3.81(a))⁷. If one or more assignees together with one or more inventors hold the entire interest, the patent may issue in the names of both. If multiple assignees hold the entire interest to the exclusion of all inventors, it may issue in the names of the assignees (37 CFR 3.81(c))⁷.
• When the assignee is the applicant. Documentary evidence of ownership, such as an assignment, should be recorded no later than the date the issue fee is paid (37 CFR 1.46(b)(1))⁵.
• The register. The USPTO maintains a register of interests in patents and applications and records related documents on request (35 U.S.C. 261)⁴. The USPTO says assignments are recorded through Assignment Center, and its Patent Assignment Search tool covers recorded patent assignment information from 1980 to the present⁸.
• Acting before the USPTO. An assignee that is not the original applicant must establish its ownership to the satisfaction of the Director before requesting or taking action in a patent matter. It does so with a signed statement identifying the assignee and either documentary evidence of the chain of title or a statement of where that chain is recorded (37 CFR 3.73(c))⁶.
• Recording is not proof. The MPEP states that recording an assignment is merely a ministerial act, not an Office determination of the validity of the assignment document or of its effect on ownership³.

Recording also has legal consequences between private parties. An interest that constitutes an assignment, grant or conveyance is void as against a later purchaser or mortgagee for valuable consideration without notice, unless it is recorded in the USPTO within three months of its date or before the later purchase or mortgage (35 U.S.C. 261)⁴. The recording rules are covered on Patent assignment.

So the EPC speaks of the applicant while the application is pending¹² and of the proprietor once a patent is granted¹⁶. A party who took the right by assignment is a successor in title under Article 60(1)¹². A transfer of a European patent application is recorded in the European Patent Register at the request of an interested party, on production of documents providing evidence of the transfer (Rule 22(1) EPC)¹⁷. After grant, Rule 22 applies to a transfer of the European patent only if the transfer is made during the opposition period or during opposition proceedings (Rule 85 EPC)¹⁸. Otherwise a granted European patent has, in each Contracting State for which it is granted, the effect of and is subject to the same conditions as a national patent granted by that State, unless the Convention provides otherwise (Article 2(2) EPC)¹⁹. See Patent assignment.

WIPO's guidelines note that applicant and assignee names can change over the life of a patent application whenever the rights are transferred, and that clerical corrections of names also occur². The same guidelines say that subsidiaries of corporations often use varying names in different countries, that one person can appear under slightly different spellings, and that analyses of complete portfolios need to take this into account².

For the same reason, WIPO says the applicant and inventor fields almost always need to be cleaned or grouped before statistical analysis, for example when counting top applicants or assignees². See Patent landscape and Patent portfolio.