Guam Contract for Assignment of Patent Rights

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Multi-State
Control #:
US-0556BG
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Word; 
Rich Text
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Description

Patents and patent applications are assignable by the owner or in the owner's name by anyone acting under legal authority. In the case of patent applications, where the conveyance precedes the granting of the patent, the patent may be issued to the assignee if the patent assignment has first been entered of record in the Patent and Trademark Office. The assignment of patent rights is a contract and is, accordingly, construed so as to carry out the intentions of the parties to the assignment.

How to fill out Contract For Assignment Of Patent Rights?

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FAQ

A patent assignment is an agreement where one entity (the assignor) transfers all or part of their right, title and interest in a patent or application to another entity (the assignee).

A patent license is an agreement that lets someone else commercially make, use, and sell your invention for a specified period. The owner of the invention (patent) is the 'licensor,' and the person who is receiving the license is the 'licensee. ' Licensing deals involve payment for the license.

Basically speaking, a patent assignment is a legal way for an inventor to transfer ownership of a patent to a business. As you may recall, in the United States, only a person (or group of people) can be listed as the inventor of a patent; a business cannot be listed as the inventor.

All parties must sign the agreement, with limited exceptions in situations where the assignor cannot be reached but where enough evidence exists that documents their intentions and rights. File the patent assignment with the USPTO within three months after the agreement is signed, paying the then-current fee.

Legal Assignment: An assignment (or an agreement to assign) of an existing patent is a legal assignment, where the assignee may enter his name as the patent owner. A patent which is created by deed can only be assigned by a deed. A legal assignee entitled as the proprietor of the patent acquires all rights thereof.

The main difference between the two is that in a license the person granting permission (Licensor) retains an interest in the property being licensed, whereas in an assignment the assignor transfers his rights in the property being assigned.

The USPTO does not require patent assignments to be notarized. The patent office only requires that the assignment be executed and signed by both the assignor and the assignee. Once an agreement is executed and signed by the parties, the assignment must be recorded with the patent office.

Assigning your patent rights to your company helps to build the asset valuation of your company, which will be important to any investors or lenders you may seek. Investors and lenders will often require you to assign patent rights to your company before they will complete a transaction with your company.

The term 'assignment' and 'license' cannot be interchanged. A license is different from an agreement. Generally, in absence of any provision to the contrary, the assignee becomes the owner of the assigned work, whereas in case of a license the licensee gets the right to exercise particular rights only.

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Guam Contract for Assignment of Patent Rights