Maine Contract for Assignment of Patent Rights

State:
Multi-State
Control #:
US-0556BG
Format:
Word; 
Rich Text
Instant download

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.

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FAQ

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.

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.

You as the inventor and patent holder retain your patent rights to issue licenses and sell the patent to third parties. However, even if you sell the patent, your employer may retain its shop rights to the patent. Independent contractors are also included in consideration of an employers' rights to a patent.

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.

Steps to File a Patent AssignmentFill Out a Recordation Form Cover Sheet. The Recordation Form Cover Sheet is an official USPTO document.Complete a Patent Assignment Agreement.Sign the Patent Assignment Agreement.Submit the Patent Assignment.

Change of Owner (Assignment) and Change of Owner NameThe original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

To obtain a patent, follow these steps:Work on your invention and document the entire process.Confirm that you have an invention, not merely an idea.Consider whether your invention is commercially viable.Hire a patent attorney.Submit a provisional patent application.Submit the application.More items...

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).

To assign patent rights, each inventor must sign an Assignment Agreement, which can be a relatively simple two-page contract. The Assignment Agreement must assign all rights to any patents that are issued relating to the patent application.

A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable (transferable) ownership interest in the patent or application.

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Maine Contract for Assignment of Patent Rights