Tennessee 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

Transferring a patent application or a patent basically means selling the patent (application) to someone. By transferring the patent application or the patent you assign all of the rights, title and interests coming with the IP right to the assignee in return for a lump sum payment.

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.

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.

A patent is considered as a transferrable property that can be transferred from the original patentee to any other person by assignment or by operation of law. A patent can be licensed or assigned only by the owner of the patent.

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.

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.

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.

An intellectual property assignment is the transfer of an intellectual property right to another so that the assignor is no longer the owner of that right. The assignor cannot therefore use the right unless the assignee grants a licence back to the assignor.

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).

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.

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Tennessee Contract for Assignment of Patent Rights