Patent assignment

• Writing. Applications for patent, patents, or any interest therein are assignable in law by an instrument in writing. The applicant, patentee, or assigns may in like manner grant and convey an exclusive right under the application or patent to the whole or any specified part of the United States (35 U.S.C. 261)¹.
• Evidence of execution. A certificate of acknowledgment from a person authorized to administer oaths is prima facie evidence of the execution of an assignment, grant or conveyance (35 U.S.C. 261)¹.
• Who owns first. For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner. For applications filed before that date, ownership initially vests in the named inventors².
• Contract law. The MPEP says assignments and other documents are contracts governed by the relevant state or jurisdictional law, and that the USPTO cannot explain or interpret the laws that govern them².
• Partial and joint ownership. Each inventor or partial assignee can assign only the interest that party holds, so an assignment by one joint inventor makes the assignee a partial assignee. All parties with any portion of the ownership must act together as a composite entity in patent matters before the Office². In the absence of an agreement to the contrary, each joint owner may make, use, offer to sell, sell or import the invention without the consent of the other owners (35 U.S.C. 262)².

Section 261 provides that an interest that constitutes an assignment, grant or conveyance is 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 the subsequent purchase or mortgage¹. The USPTO maintains a register of interests in patents and applications and records documents on request, and may charge a fee¹.

1. File the cover sheet and a copyThe USPTO says the original owner should record the assignment with its Assignment Recordation Branch through Assignment Center, filing a recordation cover sheet with a copy of the actual assignment¹⁰. True copies are accepted. Original documents are not required, and they are not returned¹¹. The rules require the minimum information about the transaction on a separate cover sheet, legible submissions and the recording fee¹¹.
2. Understand what recording doesRecordation gives legal notice to the public. The MPEP calls it a ministerial act, not an Office determination of the validity of the assignment document or its effect on ownership (37 CFR 3.54)². The USPTO does not conduct title searches before recording, and says buyers and sellers should make sure an accurate chain of title is in place¹¹.
3. Establish the right to actRecording in the assignment records does not, by itself, permit the assignee to take action in the application or patent. That requires a separate step under 37 CFR 1.46 and 3.81(a). For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation under 37 CFR 3.11².
4. Search the recordThe USPTO's Patent Assignment Search covers recorded patent assignment information from 1980 to the present. Assignments recorded before 1980 are maintained at the National Archives and Records Administration¹⁰.

Under 37 CFR 3.11, assignments of applications and patents and other documents relating to interests in them, with completed cover sheets, will be recorded in the Office⁴.

The Supreme Court wrote that since 1790 the patent law has operated on the premise that rights in an invention belong to the inventor. It added that in most cases a patent may be issued only to an applying inventor or the inventor's assignee, because an inventor's interest is assignable in law by an instrument in writing³. The Court also observed that universities typically enter into agreements with their employees requiring the assignment to the university of rights in inventions³.

In that case the question was whether the Bayh-Dole Act automatically vests title to federally funded inventions in federal contractors. The Court held that it does not, and said that with an effective assignment such inventions become subject inventions under the Act³. See Technology transfer.

In Europe, the right to a European patent belongs to the inventor or the inventor's successor in title. If the inventor is an employee, the right is determined by the law of the State in which the employee is mainly employed, or if that cannot be determined, the State where the employer has the place of business to which the employee is attached (Article 60(1) EPC)¹².

These articles concern the European patent application as an object of property^5,6,7. For a Unitary Patent, the EPO's page on the main features of the Unitary Patent describes its Register for unitary patent protection as covering information on the legal status of Unitary Patents, such as licensing and transfer, and says that all contractual and proprietary transactions relating to Unitary Patents can be registered centrally at the EPO under a single legal regime¹³. See Patent licensing for licensing.

The Supreme Court has addressed who holds title to an employee's invention³.

The Court held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors. It noted that rights in an invention belong to the inventor, and that with an effective assignment such inventions become subject inventions under the Act3.