- Patent Laws, Regulations, Policies & Procedures
- Manual of Patent Examining Procedure
- Chapter 0300
- Section 302
302 Recording of Assignment Documents [R-07.2015]
37 cfr 3.11 documents which will be recorded..
- (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
- (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
- (c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.
37 CFR 3.58 Governmental registers.
- (a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12 .
- (b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.
37 CFR Part 3 sets forth Office rules on recording assignments and other documents relating to interests in patent applications and patents and the rights of an assignee.
37 CFR 3.11(c) provides that the Office will record a joint research agreement or an excerpt of a joint research agreement.
302.01 Assignment Document Must Be Copy for Recording [R-08.2012]
37 cfr 3.24 requirements for documents and cover sheets relating to patents and patent applications..
- (a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.
- (b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.
The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317 . The document submitted for recordation will not be returned to the submitter. If the copy submitted for recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.
302.02 Translation of Assignment Document [R-08.2012]
37 cfr 3.26 english language requirement..
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
302.03 Identifying Patent or Application [R-07.2015]
37 cfr 3.21 identification of patents and patent applications..
An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number; e.g., PCT/US2012/012345. An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.
The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.
The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:
“I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.”
302.04 Foreign Assignee May Designate Domestic Representative [R-10.2019]
35 u.s.c. 293 nonresident patentee; service and notice..
Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.
37 CFR 3.61 Domestic representative.
If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.
An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document. The designation of a domestic representative should be clearly labeled “Designation of Domestic Representative” and it will be entered into the record of the appropriate application or patent file. The designation must be signed in accordance with 37 CFR 1.33(b) .
302.05 Address of Assignee [R-08.2012]
The address of the assignee may be recited in the assignment document and must be given in the required cover sheet. See MPEP § 302.07 .
302.06 Fee for Recording [R-10.2019]
37 cfr 3.41 recording fees..
- (a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.
- (1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and
- (2) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27 .
The recording fee set in 37 CFR 1.21(h) is charged for each patent application and patent identified in the required cover sheet except as provided in 37 CFR 3.41(b) . If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1) , currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2) . Customers should check the current fee schedule on the Office website before submitting documents for recordation. See MPEP §§ 302.08 - 302.10 for additional information regarding the acceptable ways to submit documents for recordation.
302.07 Assignment Document Must Be Accompanied by a Cover Sheet [R-10.2019]
37 cfr 3.28 requests for recording..
Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31 ) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.
37 CFR 3.31 Cover sheet content.
- (1) The name of the party conveying the interest;
- (2) The name and address of the party receiving the interest;
- (3) A description of the interest conveyed or transaction to be recorded;
- (i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
- (ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;
- (5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
- (6) The date the document was executed;
- (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
- (ii) Sign the cover sheet using some other form of electronic signature specified by the Director.
- (8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.
- (b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
- (1) Indicate that the document relates to a Government interest; and
- (2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see § 3.41(b) ).
- (d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
- (e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
- (f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
- (1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
- (2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
- (3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
- (4) Indicate the date the joint research agreement was executed.
- (h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.
Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28 . The cover sheet for patents or patent applications must contain:
- (A) The name of the party conveying the interest;
- (B) The name and address of the party receiving the interest;
- (C) A description of the interest conveyed or transaction to be recorded;
- (D) Each patent application number or patent number against which the document is to be recorded, or an indication that the document is filed together with a patent application;
- (E) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
- (F) The date the document was executed; and
- (G) The signature of the party submitting the document.
For applications filed on or after September 16, 2012, if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under 37 CFR 1.63 . See 37 CFR 3.31(h) .
If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a "joint research agreement" (in the space provided for the description of the interest conveyed if using Form PTO-1595). The date the joint research agreement was executed must also be identified. The cover sheet must also identify the name(s) of the owner(s) of the application or patent (in the space provided for the name and address of the party receiving the interest if using Form PTO-1595). The name(s) of every other party(ies) to the joint research agreement must also be identified (in the space provided for the name of the party conveying the interest if using Form PTO-1595).
Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.
Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:
- (A) assignment;
- (B) security agreement;
- (C) merger;
- (D) change of name;
- (E) license;
- (F) foreclosure;
- (H) contract; and
- (I) joint research agreement.
Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.
A patent cover sheet may not refer to trademark applications or registrations.
Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.
302.08 Mailing Address for Submitting Assignment Documents [R-08.2012]
37 cfr 3.27 mailing address for submitting documents to be recorded..
Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.
37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications. Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
302.09 Facsimile Submission of Assignment Documents [R-11.2013]
Assignments and other documents affecting title may be submitted to the Office via facsimile (fax). See the USPTO website or MPEP § 1730 for the facsimile number. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine. The customer’s fax machine should be connected to a dedicated line because recordation notices will be returned automatically to the sending fax number through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”
Any assignment-related document for patent matters submitted by facsimile must include:
- (A) an identified application or patent number;
- (B) one cover sheet to record a single transaction; and
- (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509 ), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.
The following documents cannot be submitted via facsimile:
- (A) Assignments submitted concurrently with newly filed patent applications;
- (B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same property); and
- (C) Requests for “at cost” recordation services.
The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office. See MPEP § 502.01 . The benefits of a certificate of transmission under 37 CFR 1.8 are available.
If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office “Notice of Non-Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .
The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.
302.10 Electronic Submission of Assignment Documents [R-10.2019]
- (i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks ( e.g. /Thomas O’ Malley III/) in the signature block on the electronic submission; or
37 CFR 1.4 Nature of correspondence and signature requirements.
- (i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature ( e.g., /Dr. James T. Jones, Jr./); and
- (ii) A patent practitioner (§ 1.32(a)(1) ), signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2) , must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitioner’s registration number; otherwise the number character may not be used in an S-signature.
- (A) Presented in printed or typed form preferably immediately below or adjacent the S-signature, and
- (B) Reasonably specific enough so that the identity of the signer can be readily recognized.
- (3) Electronically submitted correspondence . Correspondence permitted via the Office electronic filing system may be signed by a graphic representation of a handwritten signature as provided for in paragraph (d)(1) of this section or a graphic representation of an S-signature as provided for in paragraph (d)(2) of this section when it is submitted via the Office electronic filing system.
- (i) Certification as to the paper presented. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this subchapter by a party, whether a practitioner or non-practitioner, may result in the imposition of sanctions under § 11.18(c) of this subchapter. Any practitioner violating § 11.18(b) of this subchapter may also be subject to disciplinary action. See § 11.18(d) of this subchapter.
- (ii) Certification as to the signature. The person inserting a signature under paragraph (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. A person submitting a document signed by another under paragraph (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature. Violations of the certification as to the signature of another or a person’s own signature as set forth in this paragraph may result in the imposition of sanctions under § 11.18(c) and (d) of this chapter.
- (5) Forms. The Office provides forms for the public to use in certain situations to assist in the filing of correspondence for a certain purpose and to meet certain requirements for patent applications and proceedings. Use of the forms for purposes for which they were not designed is prohibited. No changes to certification statements on the Office forms ( e.g., oath or declaration forms, terminal disclaimer forms, petition forms, and nonpublication request forms) may be made. The existing text of a form, other than a certification statement, may be modified, deleted, or added to, if all text identifying the form as an Office form is removed. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any Office form with text identifying the form as an Office form by a party, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter that the existing text and any certification statements on the form have not been altered other than permitted by EFS-Web customization.
Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://epas.uspto.gov for additional information regarding EPAS.
Any assignment related document submitted by EPAS must include:
- (A) an identified application or patent number; and
- (B) one cover sheet to record a single transaction which cover sheet is to be completed on-line.
The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation. If a recordation fee is required, see MPEP § 509 for detailed information pertaining to the payment of fees.
For an assignment document filed electronically, the signature of the person who signs the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2) .
The date of receipt accorded to an assignment document sent to the Office by EPAS is the date the complete transmission is received in the Office.
If a document submitted by EPAS is determined not to be recordable, the entire document, with its associated cover sheet, and the Office "Notice of Non-Recordation" will be transmitted via fax back to the sender if possible. Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27 . Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51 .
- 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
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Signed in as:
- Outside Counsel Services
Law Office of John B. Hudak, PLLC
An intellectual property law firm: patents, trademarks, and copyrights., viewing patent assignments.
Patent assignment documents can be searched for - and viewed - by using the United States Patent and Trademark Office Patent Assignment Search webpage .
You can search for an assignment by using: the assignor’s name; the assignee’s name, patent application number, patent number, and other information tied to the patent.
A patent assignment is generally considered the transfer of patent rights.
Use this information as a starting point for doing due diligence on investments; or mergers and acquisitions.
How do I research patent assignments?
There are three main elements you will need to be able to do for research on patent assignments:
The main task is:
A) finding patent assignments filed with the Patent Office
- this will show you the actual documents or contracts where the patent rights are transferred
In order to do that you will need to:
a) look up the patent or patent application
- this will show you what patents or patent applications the company publicly owns so you can view the relevant assignments
b) view the full patent or patent application file
- this will show you the continuity data about related applications/patents so you can view any later patents or patent applications which were created later in time, to determine if those property rights were also transferred
How do I find a patent assignment?
Assignments of patents are publicly recorded through the United States Patent and Trademark Office (USPTO).
Use the steps below find the chain of title transfer -- and in general researching assignments when doing due diligence for investments.
- You will find relevant patents attached to the company being researched.
- Then, you will determine all the patents or patent applications which come before or after the relevant patents by viewing Continuity Data in the full patent file.
- Once all the relevant patents are known, those Patent Numbers and Patent Applications Numbers will be entered into the patent assignment database, with all the assignments for that particular Patent Number or Patent Application Number. Then view the actual contract for each patent assignment to view the transfer of rights starting at the first assignment.
1. Finding the patents or patent applications:
Start with finding the patents or patent applications which are publicly available (looking up a patent or patent application). All patents are published when issued. Patent applications are usually published 18 months after the filing date of the patent application. In some instances an applicant will request a patent application is not published before issuance.
Find patents or patent applications related to a company or individual by searching under the Field of Assignee or Applicant in the USPTO Database for Patents or the USPTO Database for Patent Applications .
2. Viewing related patents or patent applications
To find information related to the original patent or patent application you will need to go to Public Pair , which allows you to view the full patent file. When viewing the full patent file in Public Pair, go to the Continuity Data tab. In the Continuity Data tab you will see information about any patents or patent applications which came after the patent file you are looking at – and you will see information about any patent or patent application which came before the patent file you are looking at.
3. View the assignments
When searching patents in the Patent Office Assignment Database there will be a list of assignments for that Patent or Patent Application. Start at the first assignment until the last assignment to view the chain of title. Within each assignment document review the cover sheet for accuracy but then continue to the next section to the actual contract transferring the patent rights -- and view the transfer.
Other Information for Understanding Patent Assignments
What are you looking at when you view a patent assignment.
You will view: (1) the Patent Assignment Cover Sheet, then (2) the Actual Assignment Contract which shows the transfer of rights.
The Cover Sheet describes the transfer and who the assignment is between.
The parts of the Cover Sheet are:
- Nature of Conveyance: Examples include - assignment, assignment due to merger, change of name, security interest, or court order.
- Conveying Party Data (the assignor)
- Receiving Party Data (the assignee)
- Property Numbers: the US Patent Numbers, the US Patent Application Numbers, or the PCT International Applications
After the Cover Sheet is the Actual Assignment Contract conveying the interest. The actual agreement can be viewed to determine what the agreement is transferring. There is no verification process by the Patent Office, where the Patent Office will view the actual agreement. The Patent Office only records the assignment.
What is a patent assignment?
An assignment of a patent is a transfer of ownership of patent rights. An assignor is the person/entity transferring patent rights to another person/entity. An assignee is the person/entity receiving patent rights from another person/entity. The assignor transfers their patent rights to the assignee.
Can I just look at the patent itself and not do an extensive search?
The patent or patent application may be assigned to another company after what is published in the patent or patent application. Therefore, viewing the assignee information on the Patent Office Assignment Database is important – instead of only looking at what is on the face of a published patent or patent application.
Other important information about ownership and assignments
35 U.S.C. 261 Ownership; assignment.
“... Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing."
"An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a 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.”
From the Law Office of John B. Hudak:
- Read more about looking up patents: Looking up a Patent or Patent Application
- Read more about searching using different fields in legal research: Using All Fields Available - Explanation of the Most Common Fields
- Read more about viewing the full patent file: Viewing the Full Patent or Patent Application File
From the Patent Office:
- Frequently Asked Questions about patent assignments explained by the United States Patent and Trademark Office
- A working paper by the Patent Office explaining patent assignments – gives an example of a lost chain of title
From another Law Firm:
- An article by the Finnegan law firm describing how a patent owner can assert rights in a patent even if a security interest is granted or recorded
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Why don’t my uspto ownership and assignment search results match up.
What this is: The differences between ownership and assignment records at the US Patent and Trademark Office can be confusing. Especially when the search results do not always appear to correspond.
What this means: There are many reasons why USPTO assignment and ownership records may not match up and understanding how the USPTO updates its database is one of the first ways to help ease confusion. Read along to learn more.
“Ownership” confers an exclusive “right to use” to the mark or the patent. Patent protection is fixed at 20 years; trademark protection is renewable every 10 years. Ownership refers to the current owner of a registered trademark, a granted patent, a pending trademark or a pending patent application. Ownership of a patent excludes others from legally making, using, offering for sale, selling or importing the same invention into the United States . Ownership of a trademark registered on the Principal Register ordinarily confers an exclusive right to use the mark in connection with the goods or services listed on the registration and permits the U.S. Customs and Border Protection service to block imports bearing infringing marks .
Intellectual property (IP) is considered personal property – and, as such, rights to IP can be assigned .
Conveyance Types that Result in a Change to Ownership Records
Below are the assignment conveyances that will result in the automatic updating to patent and trademark ownership at the USPTO.
- Assignment (See below) ;
- Nunc Pro Tunc Assignment of entire interest and goodwill;
- Name Change
Accordingly, if filers want the ownership information in the USPTO records to be updated, they must check one of the above as the nature of conveyance on the electronic cover sheet for electronic filings. Selecting “other” conveyance on the electronic cover sheet will update patent ownership upon recordation but will not update trademark ownership.
Ownership records on the Trademark Database will not be automatically updated in the following situations:
- Conveyance type does not update ownership;
- Execution date of a previously filed document is the same or later than that of a subsequently filed document and when one files multiple assignments with the same execution date;
- Application is in a Blackout Period (phase between when the mark is approved for publication and when the registration issues);
- Maximum number of ownership changes is reached
In each of the above cases, a written request to update ownership information must be filed and USPTO personnel will then review the assignment records and update the database manually. The written request should include information regarding the proper order of the multiple transfers so that the correct chain of title may be determined and the ownership record updated accordingly in the trademark database .
Assignment is defined as a transfer by one party to another party of all or part of its interest and rights to IP . According to 15 U.S.C. §1060(a) and 35 U.S.C. §261, a registered mark, a mark pending registration, a patent and patent application (or any interest therein) are assignable. Assignments show the chain of title, whereas ownership lists the last recorded owner. Previous owners and assignees only appear on the assignment database.
There are two conveyance types for filing trademark assignments: “assignment of the entire interest and the goodwill” and “assignment of an undivided part of assignor’s interest”. The entire interest and the goodwill mean 100% of the trademark (inherent rights, title and ownership interest). In order to assign partial (<100%) trademark interest and goodwill, either check the “assignment of an undivided part of assignor’s interest” or check “other” and indicate “assignor assigns x percent”. Selecting “other” will not update trademark ownership. This disclaimer appears on the electronic filing system .
Patents offer a general “assignment” conveyance. When “assignment” is selected, 100% of the patent will be assigned. Partial assignments occur in cases where there are multiple inventors. For example, one inventor who owns 40% may assign their whole, undivided percentage to another entity. He or she must specify the percentage assigned in the “other” box, in the same way as for trademarks; “assignor assigns 40 percent”. The 40% is the bundle of rights associated with their ownership interest . Selecting “other” updates the patent ownership upon recordation.
Changes in Owner’s Name
Name change amendments occur when the ownership is unchanged, but there is merely a change in the owner’s name. The USPTO recommends trademark or patent owners to record the name change with the Assignment Recordation Branch .
Security Interest Conveyances
The security interest conveyance occurs when one company takes a security interest in the IP of another company. The interest is released upon loan satisfaction. While security interests and security agreements do not transfer title, they are still recorded for the sake of third parties who wish to know about matters concerning the property .
Example of Assignments Not Matching Up with Ownership Records
It is often confusing when a party is listed as the last assignee in a USPTO assignment chain of title, yet they are not listed as the current intellectual property owner. It is helpful to remember that a party does not need to be the owner in order to be linked to the property as an assignor or assignee in a USPTO recorded assignment. As a hypothetical example, let’s say Party A is the owner of a patent and assigned a security interest to Party B (as assignee). Party B (as assignor) released the interest back to Party A (as assignee) and Party A later mortgaged their rights to Party C, a new assignee. While neither assignment affected ownership, an assignment search on either Party B or Party C would reveal this patent as a valid result. An ownership search for either Party B or Party C would not find this patent.
Conversely, not all changes or updates to the ownership record are reflected in the assignment chain of title. Patents and trademarks may lack corresponding assignments because not all IP assignments are recorded with the USPTO. It is at the owner’s discretion to file an assignment.
As you can see, there are many reasons why USPTO assignment and ownership records may not match up. Understanding which types of filings affect ownership and how the USPTO updates its databases will make it easier for you to resolve the differences between these records. More questions? Contact our team of experts today.
Are names misspelled in the USPTO databases?
Yes. When data is manually keyed into a system over an extended period of time, keying errors are inevitable. Searchers should be aware of this and consider conducting searches on some of the more common errors.
Common misspellings include reversal of the letters (‘retrieve’ vs. ‘retreive’) and dropped double letters (‘dropped’ to ‘droped’). Use of British spellings, such as ‘colour’ instead of ‘color’ can also result in missed hits. Combined with punctuation and spacing variations, misspellings can wreak havoc on even the most diligent searcher. Read more here.
What should I search for on the USPTO website?
Consider devising a search strategy in advance that covers the following sections:
- Pending and registered trademarks
- Trademark assignments
- Published pending patents
- Patent grants
- Patent assignments
What type of UCC assignment filings can a secured party make?
There are several types of UCC assignment filings a secured party may make with the appropriate central filing office and/or local filing office:
- The secured party (assignor) may assign all of its rights to another party (assignee). (This is considered a full assignment.)
- The secured party may assign the rights to some portion or percentage of all the collateral covered by the initial UCC financing statement to another party. (A partial assignment.)
- The secured party may assign the rights of the 100% interest in a portion of the collateral to another party. (Also a partial assignment.)
This article is provided for informational purposes only and should not be considered, or relied upon, as legal advice.
 See MPEP §301 I  See TMEP 801.02(a) Act of 1946, Principal Register  See 35 U.S.C. §261 and 15 U.S.C. §1060(a)  See TMEP §504.01  See MPEP §301 II  See TMEP §501.06  See MPEP §301 IV  See TMEP §502.02(a) and MPEP §314  See TMEP §503.02 and MPEP §313
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Intellectual property assignment: What it is and how to make one
What would you like to protect?
updated November 24, 2023 · 9min read
What is an intellectual property assignment?
Ip assignment pros and cons, how to complete an intellectual property assignment, intellectual property assignment faq.
Just as with buying and selling physical property, transferring the ownership of intellectual property is an important part of doing business. Whether you're starting a new business, buying product rights, or purchasing a company, an intellectual property assignment can help you smoothly transfer IP ownership rights.
An intellectual property assignment is the transfer of an owner's rights in copyrights, trademarks, patents, trade secrets , or other intangible creations. These transfers may take place on their own or as part of a larger transaction.
An intellectual property assignment provides records of ownership and transfer while also protecting the rights of all parties involved in buying or selling IP. This essential documentation helps establish a clear record of the title for intellectual property.
By having an intellectual property assignment in place, you can help keep your intellectual property safe from illegal use, distribution, and more.
What should an intellectual property assignment include?
An intellectual property assignment includes important details about the transfer of intellectual property and the parties involved. The contents of an IP assignment can be laid out in 17 different sections.
In the intellectual property assignment, you will find:
- Who is involved in the transfer
- What IP is being transferred
- How much the IP costs
- Why the transfer is valid
When done correctly, an intellectual property assignment provides a written acknowledgment of the rights and responsibilities transferred in the sale.
Intellectual property assignments have many advantages, but before transferring your IP in this way, it's important to consider the limitations of IP assignments as well.
Pro: Guaranteed payment at the price negotiated
If a seller decides to give up the ownership rights of their intellectual property using an IP assignment, they can be sure that they will receive the exact compensation stated in the agreement. An IP assignment agreement will also state a strict payment deadline for the buyer, ensuring that the seller is paid by the agreed-upon date.
Pro: No lingering responsibilities
Once an IP assignment agreement goes into effect after being signed by both parties, the seller may no longer have any responsibilities related to the intellectual property involved in the sale. Because of this, the seller can remove themselves from being responsible for any future obligations related to the intellectual property once the agreement has been signed.
Con: One-time payment
Unlike with an IP licensing agreement, the use of an IP assignment transfers all ownership rights of the sellers' intellectual property for a set price. If a seller uses an IP licensing agreement, they will still retain ownership rights, which allows them to control how their intellectual property is used while still receiving income via fees and/or royalties (think renting vs. selling).
Con: Loss of ownership rights
Using an IP assignment agreement, sellers surrender all ownership rights to the intellectual property and no longer have any say over how the IP is used. This gives the buyer complete control and ownership rights of the intellectual property involved.
IP assignments aren't inherently complicated, but it's important to include the right information. The following is how an IP assignment agreement can be crafted. Learn about each section in more detail.
1. Introduction of parties
This section identifies the document as an intellectual property assignment. It should include:
- Each of the parties involved
- The date the document will be signed
Each party is given a name (usually “Assignor" or something similar) that will be used throughout the entire document. The assignor is the party giving up its ownership interest and the assignee is the party receiving it.
Recitals offer up key background information about the parties involved. This section is known as the whereas clause because it explains the intent to transfer intellectual property rights.
3. Assignment of intellectual property
This section covers the agreement and acceptance of the intellectual property assignment. It's important to note that the intellectual property is not described in the agreement itself but in the addendum Exhibit A, which is referenced throughout the assignment.
This section should cover:
- The amount to be paid for the intellectual property
- The time period in which the payment must be made
The payment's due date and price are only enforceable after both parties have signed the agreement.
5. Assignor's representations and warranties
Here is where you will find the assignor's promises about the property that is being sold. There are often at least seven subsections, each addressing a specific promise made by the assignor.
The assignor swears that:
- They are the owner of the IP.
- They have not sold the IP to any third party.
- They have the authority to enter the agreement.
- They have no knowledge that the IP has been plagiarized or taken from any third party without authorization.
- They do not know of any permissions that must be obtained to complete the IP assignment.
- If the IP involved includes a patent , they are unaware of any existing challenges to the validity of the patent. If the IP doesn't include a patent, patent application , or other patent-related materials, you can delete this provision from the representations and warranties.
- The property was not created while the creator was working on behalf of a third party.
If either party would like to include additional promises and warranties, they may do so here.
6. Assignee's representations and warranties
Here is where you will find the assignee's promises about the transaction.
The assignee swears that:
- They have enough funds to pay for the assignment.
If any additional representations or warranties are required, they may be added here.
This section states the assignor's promise to help with any paperwork needed to complete the assignment. Typical documentation can include:
- Filing information about the assignment with a registry office
- The transfer of document titles
If applicable, the assignor may also promise to help with transfer paperwork for filings outside of the country. This information is only needed if it is relevant to your agreement.
Protecting intellectual property is crucial to IP ownership. This section includes each party's future obligations if the intellectual property is found to infringe on a third party's rights.
There are two options provided, and you should choose whichever one works best for your situation.
- The assignor takes all responsibility for the infringement, agreeing to pay all related expenses and costs.
- The assignor makes its responsibilities conditional, greatly limiting their obligations if a claim is brought.
The assignor can't make both promises at once, so only one of these promises should be included in the final agreement.
9. Successors and assigns
If applicable, you may list a successor organization. In the event that a successor is involved, this section will state:
- Who will inherit the IP ownership rights
- Who will be responsible for any ongoing obligations
This section will also state any organizations to which rights and obligations have been permissibly assigned.
10. No implied waiver
In the agreement, one party may allow the other to break an existing commitment in the assignment—for example, if the assignor allows the assignee to make a late payment without penalty.
An attempt to waive a previously agreed-upon commitment is only valid if:
- The waiver is in writing
- The waiver has been signed by the waiving party
If one party allows the other to break a commitment, it does not mean that any other existing commitments are also invalidated.
Here you will list the addresses to which all official and legal correspondence should be delivered.
You will also need to list the mailing address for:
- The assignor
- The assignee
For any digital correspondence, the parties involved may include their email addresses.
12. Governing law
This section grants the parties the option to choose the state laws that will interpret the document. Note that the included language will not affect where a potential claim can be brought.
13. Counterparts and electronic signatures
Both parties may agree to sign the agreement using electronic signatures .
This section allows the agreement to stay valid, even if a part of it is invalidated in the future. For example, if a state law is passed that affects a section of your agreement, only that section will be invalidated.
This will leave the rest of your agreement intact and enforceable.
15. Entire agreement
This section of the document states that the document each party is signing is:
- The official agreement
- Directly related to the issues and IP involved
Even though a party could argue in the future that other enforceable promises may exist, this will provide some protection from those claims.
Here you will find that the headings at the beginning of each section are for organization and should not be interpreted as operational parts of the agreement.
17. Description of intellectual property
Referenced in Section 1, Exhibit A provides a detailed description of all intellectual property involved in the sale. If the description is too vague, the seller may end up giving up more than they intended or vice versa. When completing this section, be sure to be as specific and detailed as possible.
In addition to a detailed description of the intellectual property, note the goodwill that is being sold with the property. Goodwill is the intangible value of the property being sold, often including:
- Reputation with customers
- Relationship with the community
- Brand value that's not tied to a trademark
Don't worry about making the descriptions sound lawyerly—simple, succinct, and complete descriptions should suffice. Attach any relevant registrations or samples (for example, “*See attached drawing").
Consider these common questions and answers when completing an intellectual property assignment.
What's the difference between an intellectual property assignment and a license?
The use of a license allows the licensor to maintain ownership of the intellectual property rights. When using an intellectual property assignment, the assignor is giving up all of their ownership rights to the assignee.
It is always a good idea to have someone witness the assignor and assignee signing and dating the document.
What's the difference between an intellectual property assignment and a lease?
When obtaining the use of intellectual property using a lease, the assignee does not receive any ownership rights. Because of this, the assignor retains all ownership and control of the intellectual property and can dictate how it is used. Depending on the specifics of the lease, the assignor may be compensated via royalties and/or fees.
What is a quitclaim assignment?
A quitclaim assignment is an agreement that transfers all of the seller's rights to the intellectual property without any guarantees that the seller has the right to do so. If a third party is to claim ownership of the intellectual property down the road, the buyer will be on their own to defend the claim.
Do copyright assignments need to be notarized?
While copyright assignments must be done in writing to be valid, notarization isn't required. But it is always a good idea to have someone witness the assignor and assignee signing and dating the document.
Ready to get started? Use this form to create an intellectual property assignment in minutes . If you aren't looking to give up ownership rights of your intellectual property, keep it protected .
by Siege Media, contributor to LegalZoom
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