Washington 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.

The Washington Contract for Assignment of Patent Rights is a legal document that outlines the transfer of ownership of patents from one party to another within the state of Washington. This contract serves as a binding agreement between the assignor (current patent owner) and the assignee (individual or entity acquiring the patent rights). One of the prominent types of Washington Contract for Assignment of Patent Rights is the absolute assignment. In an absolute assignment, the assignor completely relinquishes their rights and interests in the patent, transferring them to the assignee. This type of assignment is commonly used when patent holders want to sell their patents outright, often in exchange for a negotiated sum of money or other consideration. Another type is the partial assignment, where the assignor transfers a portion of their patent rights to the assignee. This allows the assignee to have exclusive rights over a certain aspect or application of the patent while the assignor retains ownership or licenses the remaining rights to other parties. The contract typically includes crucial details, such as the names and addresses of both parties, a detailed description of the patent being assigned, including its registration number, and an explicit statement declaring the assignment of patent rights. It may also outline any limitations or conditions placed on the assignee regarding the use or licensing of the assigned patent, as well as provisions for non-disclosure and non-compete agreements to safeguard the patent's proprietary information. In Washington State, it is important that the contract complies with the relevant laws, including the Washington Uniform Trade Secrets Act and the Washington Recognized Disposition of Patents Act, to ensure the validity and enforceability of the assignment. Additionally, the contract may include provisions for dispute resolution, governing law, and jurisdiction. Overall, the Washington Contract for Assignment of Patent Rights is a crucial legal instrument that enables individuals and businesses to transfer patent ownership rights within the state. Its purpose is to provide a clear framework for the assignor and assignee to establish their rights, obligations, and expectations concerning the assigned patent, thereby ensuring a smooth and legally secure transition of ownership.

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FAQ

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.

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).

Yes, an inventor can sell a patent and transfer ownership to a party by executing an assignment agreement that transfers his rights to the patent to another party. Once a person sells his patent and assigns his rights to a party, he loses any rights and interests in the 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.

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.

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment. The statute is similar to recording statutes used for recording real property. Thus, although there is no requirement to record an assignment, it is foolish not to do so.

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.

How to Buy an Expired Patent. Once you've located a patent that has expired, you can contact the patent owner and negotiate a sale. You can buy the invention and all rights to it, including the patent. You then renew the patent by paying the lapsed fees.

Patent assignment transfers your ownership rights in your patent from yourself to your company. This means that once you assign the patent, you transfer all ownership and control of that patent and its intellectual property rights as the patent inventor to another entity/company, known as an assignee.

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.

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Washington Contract for Assignment of Patent Rights