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True, the transfer of a right under a contract is known as an assignment. This term is commonly used within legal frameworks to define the conveyance of rights from one party to another. For anyone working with an Oregon Contract for Assignment of Patent Rights, grasping this terminology is vital to ensure comprehension of intellectual property transactions.
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.
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.
In order for a patent assignment agreement to be valid, there must be consideration or payment. It must be specified and paid at signing, even if at the time of employment.
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.
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.
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 general rule is that you own the patent rights to an invention you create during the course of your employment unless you either: signed an employment agreement assigning invention rights, or. were specifically hired (even without a written agreement) for your inventing skills or to create the invention.
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.