Recently, I've been dealing with a lot of assignment issues, so let's dive into it. As you may have guessed, it is important to identify inventors, applicants, and owners of a patent. This usually comes into play during the application process, but also during due diligence when combing through your IP portfolio.
In case you're not sure who these people are supposed to be, here's a quick breakdown:
- Inventors are the people who conceive an invention. They are not necessarily the people who "validate" your idea or the people who reduce the invention to practice by building prototypes for you. Sometimes you may have more than one inventor. For instance, if I conceived 40% of the invention and my friend conceived 60% of the invention, then we are co-inventors. Inventors are default patent owners.
- Applicants are the people who apply for patent applications. Usually, applicants are either the inventors themselves or the assignees (which we will get to in a little bit).
- Assignees are the people who receive all rights to patent applications/patents (aka new owners). To become an assignee, you and the patent owner(s) must execute an assignment agreement and record it.
You may have noticed that many well-known patents (or the most profitable patents) are assigned to someone else other than the inventor. Usually, that someone else is an entity. Why are these patents assigned to someone else, and should you assign your patent to someone else? It depends.
Sometimes, patents are assigned to other people or an entity because the inventor is obligated to. Usually this occurs when you work for a company and your employment agreement requires you to assign all of your intellectual property to your employer as long as long as that intellectual property was developed within the scope of your work.
Other times, patents rights are sold/given to someone else. It's important to bear in mind that once you assign your patent to someone else, then you are no longer the patent owner and you don't have any patent rights to exercise.
Just like you would with any other property, like cars or real estate, you have to make sure that the chain of ownership of a patent is solid. Simply put, you can't give what you don't have. This is why assignment issues generally come up when there is a change in ownership.
To assign a patent legitimately, the assignor (may be an inventor) and the assignee (the new owner) would execute an assignment agreement. The agreement should be notarized and then recorded before the USPTO. If you are doing this as you are submitting your application, then you should fill out the assignment section of the application data sheet. Once the assignment agreement is in place, the assignee would be responsible for continuing the examination of the patent application or maintaining the patent by paying the maintenance fees.