29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

Patent Assignment: How to Transfer Ownership of a Patent

  • Intellectual Property
  • Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

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 simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent. 

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But  under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP,  implement strong hiring policies  that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an  employment agreement  that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

  • Advance assignment of any IP created while employed by your company, or using your company’s resources
  • An obligation to disclose any IP created while employed by your company, or using your company’s resources
  • An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
  • An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing  invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include  incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

  • Independent contractors:  Some inventors may be self-employed, or they may be employed by one of your service providers.
  • Joint collaborators:  Some inventors may be employed by, say, a subsidiary or service company instead of your company.
  • Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

partial assignment of patent

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should  also  get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

  • The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
  • Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you  can  execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

  • Be in writing:  Oral agreements to assign patent rights are typically not enforceable in the United States
  • Clearly identify all parties:  Include the names, addresses, and relationship of the assignor(s) and assignee
  • Clearly identify the patent being assigned:  State the patent or patent application number, title, inventors, and filing date
  • Be signed by the assignors
  • Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases. 

So the patent owner (the Assignee) should should record the assignment through the  USPTO’s Assignment Recordation Branch . They can use the  Electronic Patent Assignment System (EPAS)  to file a  Recordation Cover Sheet  along with a copy of the actual patent assignment agreement.

They should submit this paperwork  within three months  of the assignment’s date. If it’s recorded electronically, the USPTO  won’t charge a recordation fee .

Need to check who owns a patent?  The USPTO website  publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a  continuation-in-part , or in a non-provisional application that adds new matter to a  provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an   employee agreement ,  company policy ,  invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation. 

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An  experienced patent professional  can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments —  contact us now  to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

partial assignment of patent

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

Don't miss a new article. Henry Patent Law's Patent Law News + Insights blog is designed to help people like you build smart, scalable patent strategies that protect your intellectual property as your business grows. Subscribe to receive email updates every time we publish a new article — don't miss out on key tips to help your business be more successful.

Patent Ownership in the United States - Best Practices to Preserve Your Rights

Written by: andrew berks.

patent rights united states

The issue of who actually owns a patent or pending patent application is obviously very important. This blog post will briefly explain how patent ownership works under US patent law, so inventors, managers, and other non-experts can better understand this important topic when working with a patent attorney.  

Ownership Overview

Patents are a form of intellectual property. All property (including patents) has an owner, which may be an individual (i.e., a person), or a group of people, or a corporate owner. A corporate entity can be a limited liability company (LLC), a corporation (S corp or C corp), a partnership, or any other corporate entity allowed by the law of any state.   Much of patent ownership is analogous to the ownership of real property or ownership of things like cars. Just like with any property, patents can be bought, sold, and licensed (analogous to renting a property). Of course, there are differences – mainly because patents are intangible. You can’t put a patent in your garage. So lets discuss how patent ownership works and best practices.  

Default – Patents are Owned by the Inventors

By default, US patents are owned by the inventors if no other action regarding ownership is taken. All patents and patent applications require at least one inventor, so this requirement is always met from the time of filing.   Leaving patents in the name of the inventors is not necessarily a problem, but a best practice is to transfer the ownership to a corporate entity (see discussion of patent assignments below). Here are some issues with leaving patents in the name of the inventors:

  • For a single inventor, if the inventor dies or becomes disabled, the ownership of the patent becomes questionable. The patent may become subject to a probate proceeding.
  • For a group of inventors, each person owns an undivided equal share of the patent. That means that if there are, say, four inventors, each inventor owns 25% of the patent, and each inventor can do whatever they want with that share. For example, one inventor/owner could start producing a product covered by the patent that the other inventors don’t like. The others may think the price is too low or the quality is poor. With the default ownership, the other inventors have no basis to stop a rogue co-inventor from causing mischief.
  • Another group inventor problem is that if the inventors have a falling out, one inventor can assign their interest, complicating the ownership of the patent.
  • Potential licensees, business partners, or investors typically want to do business with another corporate entity, not an individual or group of individuals. In the case of a group of inventors, each inventor must agree to sell or license the patent. If one inventor/owner objects, a deal that other owner/inventors want could be ruined.

  By transferring the ownership to a corporate entity such as an LLC, S-corporation, or C-corporation, many of these issues go away or become contractual issues between owners of the corporate entity, which are easier to deal with.  

Alternative – Patents Owned by an Applicant

Alternatively, patents can now be filed by a corporate entity (called an “Applicant”). Note however, that naming an Applicant at the time of patent filing is not a substitute for a patent assignment. A patent application naming an applicant should also have an assignment from the inventors, even if a corporate owner is provided at the time of filing.  

Patent Assignments

In patents, selling a patent (or a partial ownership in a patent) is called an assignment . Inventors of patents or any current owner can assign their interest in a patent or patent application to another party, such as a corporate owner or another person, at any time during the life of the patent. With an assignment, ownership and all rights that go with the patent are transferred from an a ssignor (i.e., the seller) to an assignee (i.e., a buyer).   Assigning a patent or patent application is analogous to selling an asset, such as a house or a car. With an assignment, the patent is effectively sold to someone else.   Partial interests can be sold, so for example, one inventor in a group of inventors can assign their individual interest, which could be a serious problem and tie up the ownership and value of the patent. This is a reason why an assignment to a single corporate entity for a group inventorship patent may be important.  

Assignment of Patent Applications

Patent applications not yet granted can also be assigned, and there are good reasons for doing so.

  • For a group of inventors, getting an assignment very early in the process can avoid the problem of a disagreement among inventors. By assigning to a corporate entity promptly after the patent application is filed, the ownership picture is secure from the patent application filing.
  • For both individual and group inventors, an assignment to a corporate entity makes the patent more attractive to investors, potential buyers, or licensees. Investors, potential buyers or licensees typically would much rather deal with a corporate entity rather than an individual investor.

Obligations to assign

Many inventions are made by employees, such as scientists or engineers working for a company. This discussion also applies to consultants. A best practice is for employers to insist on an obligation to assign any invention made by an employee or consultant inventor to the employer. There is case law that an invention made by an employee or consultant using company time and resources, without an express obligation to assign, belongs to the employer. However, these rights are weak and can lead to costly litigation, delays, and loss of rights. By including an obligation of any employee-inventor to assign their patent to a corporate entity, this problem is avoided. This provision should be added to employment or consulting agreements if patentable subject matter is a likely to be developed. Even if an employee and employer have a disagreement or falling out, the employer can still assert ownership over a patent if there is an obligation to assign on file. Special language is required under the case law to perfect an obligation to assign future rights, so this should be discussed with a patent attorney.   Any compensation due to an employee-inventor is a separate question. That issue should be negotiated in advance of any work assignment.  

Patent Licenses

Many inventors and companies are not interested in commercializing a patented invention and may desire instead to license the invention to another party that has the capability of manufacturing or marketing a patented product. A patent license is analogous to renting a house. The owner gives another party the right to use the property in exchange for payments (rent). So a license is a transfer of some, but not all, rights in a patent or patent application.   Patent licensing is a big discussion beyond the scope of this blog post. The main point for this discussion is that patent licenses can be classified as exclusive or non-exclusive . In an exclusive license , the licensor (the party that owns the patent) does not license the patent to any other licensees. In a non-exclusive license , the licensor makes licenses to multiple licensees.   An exclusive licensee has special rights in terms of enforcement. An exclusive licensee may bring a patent infringement suit without involving the patent assignee.  

Enforcement

A key feature in patent law is that only a patent assignee or exclusive licensee has standing to bring a lawsuit for patent infringement. A non-exclusive licensee or some other third party, even if they have some kind of interest in the patent, cannot bring a suit for infringement on their own. Ultimately, this may be the most critical factor in this discussion. The ability to bring a suit for patent infringement to protect the patent right is what makes patents valuable assets. Consequently, it is important to understand which parties have this right.  

Ensuring the correct party has rights to a patent or patent application is a critical aspect of managing a patent portfolio. Properly addressing ownership issues at an early stage is a best practice. Contact us for assistance with this important aspect of patent ownership.

Intellectual Property: Assignments and Transfers | Practical Law

partial assignment of patent

Intellectual Property: Assignments and Transfers

Practical law practice note w-005-5845  (approx. 23 pages).

partial assignment of patent

Assignment of Patent Rights

Screenshot 2020-09-08 at 2.16.19 PM

The potential value of patents, or patent applications, cannot be understated. Only the owner of a patent has the exclusive right to exploit its value to exclusion of all other parties. Therefore, securing ownership of a patent and its associated rights can be very important to a business; and the failure to exercise good practice in acquiring or transferring patent rights can materially impact a business’ bottom line.

This article will briefly set out some good practice guidelines to keep in mind when transferring rights in a patent, or patent application – whether acquiring or relinquishing patent rights.

What is a Patent, or Patent Application, Assignment?

The transfer of a patent, or patent application, places the assignee in the position of the assignor. This provides the assignee with the positive rights (such as the right to exploit the invention), as well as the negative rights (such as the right to prevent others from exploiting the invention).

The negative rights come with the right to seek remedies preventing unlicensed exploitation of the invention and even confiscation of infringing articles.

Once an assignment takes place, the assignor relinquishes its rights to the patent or patent application. The assignor is free to license the patent back from the assignee, but no longer has the ability to manage the patent. It is therefore important to note that a partial assignment of a patent, or patent application, is not possible – i.e. an assignor may not assign the right to use the invention to one party while it assigns the right to manufacture to another party. Dividing up patent rights can instead be effected by providing partial licenses to the patent.

When assigning the patent or patent application it is important to cover all aspects of the transfer in a written instrument, known as a Deed of Assignment. The Deed of Assignment should also ensure that the patent or patent application is transferred free of any encumbrances, such that the holder receiving the rights becomes the holder without potential exposure to third parties which may have a legal right to the patent.

A Deed of Assignment should be filed with the patent office in the country in which the patent or patent application has been filed. The assignment is then recorded in the patent office register and may be viewed by third parties. Failure to record the assignment may limit its effects against third parties.

Screenshot 2020-09-08 at 2.11.00 PM

Assignment of Patent applications

The first owner of any invention is usually the named inventors themselves. Once the invention is reduced to writing and filed as a patent application, the individual inventor may assign the application and its rights to any interested party or parties – both individuals and/or companies.

In most cases, for a Deed of Assignment to be effective, it needs to be made to writing, identify the invention, contain details of the patent application, set out the rights to be assigned, and duly executed by the assignor(s). Most jurisdictions in the MENA region will also require the document be notarised and/or legalised.

If the assignment is incomplete or unclear, by not expressly identifying the invention or application to be assigned, the assignor might not be able to receive the full ownership and title of the invention.

Assignment between Employees and Employers

While most patent and/or labour laws in the MENA region set out the cirumstances in which an employer will own an invention that was created by an employee during the ordinary course of their employment, the laws do not usually cater for all scenarios.

Accordingly, a good approach to ensuring that an employer is entitled to own an invention created by an employee is to include a robust assignment clause in an employment agreement. The employee, by signing their employment agreement, then agrees contractually to the assignment of any rights they may have in an invention created during the course of their employment.

The clause should specify under which circumstances the employee is entitled to retain ownership of an invention, and when the passing of those rights to the employer is expected. An example of passing rights is where the employee is employed to develop and create new products as part of its employment, or when the invention has been created using company resources. Instances where the assignment of rights may not be required would be when the invention is created outside of company time, and preferably is not concerned with the business of the company.

It is also advisable that universities, and other higher learning or research institutions, specifically point out the requirement to assign rights to inventions created using the institution’s resources.

Screenshot 2020-09-08 at 2.11.45 PM

By not clearly defining the obligation to assign rights from the outset, the company or institution runs the risk of losing any interest to the invention.

The same may be said for consultant-based or part-time contracts, where the employee is employed for a limited period of time, usually with the express intention to collaborate for the purpose of achieving some sort of future, finite goal. In such circumstances the collaboration between company and consultant may result in the creation of an invention, unique and different to the set-out goals. While some employment contracts may cover the assignment of inventions between employer and employee, many consultant contracts typically overlook the necessities of such clauses.

Using a clause which identifies inventions created using a company’s resources usually have the effect of covering most employment and collaboration situations.

However, it is always a good idea to have the parties consent to the completion of additional assignment documents at the time filing patent applications. Attempting to assign rights from ex-employees may prove difficult and expensive, especially when the employee has moved away or becomes unreachable. Additionally, the passing of an inventor prior to adequate assignment also raises issues. In order to avoid these complications, providing assignments in addition to clauses in employment contracts, is always advisable.

Companies, especially those dealing in research and development, should take care to investigate whether a new employee is still under an existing obligation with a previous employer to assign any inventions they may create, even while not directly under their employment. Certain employment contracts may include enduring clauses which relate to inventions created using the knowledge and experience they have gained with the previous employer. If a presumption may not be rebutted that the invention was created as a result of the previous employer’s influence, the new company may not be entitled to the invention.

Assignment of Patents

An assignee of a patent would usually expect to be able to litigate for acts of infringement which took place prior to taking ownership of the patent. However, it should not be assumed that such a right is part and parcel of the assignment. The terms as to who is entitled to bring an infringement action under the patent should be expressly contained in the Deed of Assignment. If such a clause does not exist, an assignee could find themselves having fewer rights than they intended, as well has an inability to litigate for past or continuing infringers.

Further, an assignor should provide a warranty to the assignee that it is not aware of any acts of infringement and that no infringement matters in relation to the patent are currently pending. Further, it is also advisable to include a clause indemnifying the assignee against any potential matters which may arise after the transfer of the patent.

It is important to ensure that all the requirements are properly met when preparing, executing and recording an assignment of a patent or Patent application. Failure to do so could result in the loss of rights and potential exposure to third parties.

螢幕快照 2020-07-24 下午8.45.11

W: www.cwblegal.com E: [email protected]

E: [email protected] T: (971) 4 381 6888

partial assignment of patent

Patent Rebel

What is a Patent Assignment?

Whether you’re curious about assigning a patent to someone else or having a patent assigned to you, you might be wondering what a patent assignment is? Patent law allows patent holders to assign patents to other parties. Patent assignments often take place between an employee and his company, however, it’s not uncommon for a person to assign his interest to a patent to a third party. So, what exactly is a patent assignment? We will cover this below.

What is a Patent Assignment ?

A patent assignment is an agreement by the patent holder (assignor) to transfer his interest and ownership of a patent to another party known as the assignee (party receiving patent rights). Once a patent holder executes an assignment agreement assigning his interest in a patent to another party, the assignor loses his rights under the patent. The assignor (transferor) will no longer be able to stop others from using, making, and selling the patent invention. Instead, the assignee gains these rights.

In the United States, patent assignments are very common between an employee and his company because a company or business cannot apply for a patent. An inventor has to apply for a patent and then the inventor then assigns his interest under a patent to the company for which he is working.

An assignment transfers the ownership of the patent from the inventor or employee to the company for which he is working. That said, assignments can also be made by any two parties that agree to transfer ownership of a patent.

So, now we know that a patent holder can transfer his patent rights to a third party, can an inventor assign a pending patent application? Absolutely, yes! An inventor can assign his rights under a pending patent application to another party.

If you’re an inventor and you want to assign your patent to another party, just remember that patent assignments are final. Once an inventor assigns (transfers) his interest in a patent to another party, the assignment (transfer of rights) cannot be undone, it’s final.

What is a Patent Assignor?

A patent assignor is a party that transfers it’s interest and right to the patent to the transferee (assignee) or the party receiving the patent. Once an agreement is executed and recorded with the patent office, the assignee becomes the patent right holder.

What is a Patent Assignee?

A patent assignee is a person to whom the patent rights are transferred to. Said differently, the assignee is the new owner of the patent. An assignee should immediately record an assignment agreement with the patent office to establish his rights as the new patent owner.

Requirements to Execute a Patent Assignment Agreement

For a patent holder to assign (transfer) his interest in a patent to another party, the assignor (person transferring patent rights) must execute a written agreement that includes details, such as the name of the assignor and the assignee, as well as the patent that is to be assigned (transferred) to the assignee.

Once the assignment agreement is executed, it must be filed with the USPTO for the agreement to take effect. Please remember that the agreement needs to be in writing, oral agreements are not sufficient to transfer the rights from the patent holder to the assignee.

The assignment agreement must include the following information:

  • The agreement must contain the legal names of both the assignor (person transferring patent rights) and the assignee (person receiving patent rights).
  • The agreement must clearly identify the patent by stating the name of the patent, as well as the patent number.
  • The terms of the agreement must be included in the assignment agreement.
  • Both the assignor(s) and assignee(s) must sign the agreement.

Who Owns the Patent After a Patent Assignment?

Once the assignor and assignee execute an assignment agreement and file the assignment with the USPTO, the assignee owns the patent. As the new patent owner, the assignee will have the right to stops others from using, making, and selling the patented invention for the remaining patent term.

The assignor (person who transferred his rights) loses his rights under the patent and will no longer be able to enforce the patent. Assigning a patent is similar to selling a car and registering the title in someone else’s name. Once the patent is assigned, similar to registering the title of a vehicle in someone else’s name, the new owner is the assignee (person to whom the patent was transferred to). Once the assignment is recorded with the patent office, the records will be updated to show the assignee (new owner) of the patent. This information will then be made available to the public.

Assigning a Patent vs Licensing a Patent

Assigning a patent is much different than licensing a patent. When a patent holder assigns his interest in a patent to another party, he is usually transferring ownership of the patent to the other party. Patent licensing is different in that a license is merely a transfer of the right to use the patent in the manner specified in the licensing agreement. Assignments transfer ownership while a license transfers the right to use the patented invention. That said, if a patent is assigned, the information of the assignor and assignee will become part of the public record. Whereas if an inventor licenses his patent, that information is not typically published to the public.

Does a Patent Assignment Need to be Notarized?

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.

If the assignee fails to record the assignment, there is nothing to protect the assignee from the assignor assigning the patent to a third party. So, if you’re an assignee, make sure to record your assignment as soon as it’s executed to avoid problems.

Although a patent assignment does not need to be notarized, notarizing it can be beneficial in the event that the previous patent holder claims that he did not make the assignment. It’s an added layer of protection that could prove to be very valuable.

Can Multiple People Own a Patent?

Yes, multiple people can own a patent. For example, if three inventors make a single invention, all three are considered joint inventors and their names should appear on the patent application, as well as the issued patent.

If there are multiple inventors on a patent application, all inventors must execute an assignment agreement to assign each of their interest to the assignee for the assignee to own the entire patent.

For example, if only 1 of 3 inventors assigns his interest, the assignment would be a partial assignment until all 3 inventors each assign (transfer) their interest to the assignee.

Patent Assignment Tips

1) hire an attorney to assist you with your patent assignment.

Any individual who’s either an assignor or assignee should hire an attorney to assist with the assignment of a patent. Attorneys will ensure that the assignment agreement complies with the law and contains all of the information that is required for a successful patent assignment. Although it’s not unheard of for parties to execute an assignment agreement on their own, making a mistake could cause legal troubles down the road.

2) Don’t Forget to Record A Patent Assignment

If you have been assigned a patent, don’t forget to record your assignment with the USPTO. We say this because patent assignments don’t go into effect unless the assignment is recorded with the patent office. Recording a patent assignment tells the patent office that you are the new owner of the patent.

If an assignee does not record the assignment with the patent office, it is as if the assignment never took place. Also, if it’s not recorded, the assignor could possibly assign the patent to a third party. So, make sure to record your assignment as quick as possible.

3) Notarize Your Assignment Agreement

It’s good practice to have an assignment agreement notarized. This helps in a situation where the assignor claims that he did not execute the assignment agreement. In the event that an assignor claims he did not execute the assignment agreement, you will have evidence to show otherwise. The burden may shift to the assignor to prove that he did not execute the assignment agreement. So, notarize your agreement, as well as other documents relating to the assignment of a patent.

4) How Much Does it Cost to Record an Assignment with the USPTO?

It’s currently free to record an assignment with the USPTO if a party submits the assignment electronically. However, if a party chooses to record the assignment agreement by paper, there is a $50 fee for the service. So, record your assignment online if you want to avoid paying anything. That said, you may need to publish your assignment in an official gazette, such publication does cost $25.

Patent Assignment

Let’s do a quick recap. A patent assignment is the transfer of ownership of a patent from one party to another. The party transferring its right is known as the assignor and the party receiving the patent rights is known as the assignee.

To assign a patent, both parties must execute a written assignment agreement to reflect the transfer of ownership. Once the parties execute the agreement, they must record it with the patent office to establish the new ownership. If you have any general questions or comments, please feel free to leave them in the comments section below.

partial assignment of patent

My name is Noah and I love everything about patents and patent law. During my law school years, I studied intellectual property law and took courses in patent law, trademark law, and copyright law. I graduated from Loyola Marymount Law School and obtained my Juris Doctorate in 2014.

Similar Posts

Can a Provisional Patent Application be Amended?

Can a Provisional Patent Application be Amended?

Inventors and applicants often file a provisional patent application prior to filing a regular patent application with the USPTO. Applicants often to do this because of the cost of filing…

Software Patents (Everything You Need to Know)

Software Patents (Everything You Need to Know)

Software Patent law is very complex. This article will shed some light as to the patentability of software. We will examine whether software is patentable and the viability of other…

What is a Patent Term Extension?

What is a Patent Term Extension?

If you’ve applied for a patent, you should know that patents don’t last forever. Utility patents, for example, have a patent term of 20 years from the date an applicant…

Rocket Docket Design Patents

Rocket Docket Design Patents

If you’ve just finished working on a design, you probably want to patent it. Patenting a design in the United States takes 20.5 months from the date an applicant files…

Can You Patent a Slogan?

Can You Patent a Slogan?

If you’ve created the best slogan for your business, you may be wondering whether you can protect it by obtaining a patent for it. Although you may not have a…

How to Patent Something?

How to Patent Something?

If you’ve just finished working on an awesome invention, you might be wondering how you can patent that invention. The USPTO allows inventors to patent something so long as it…

Leave a Reply Cancel reply

You must be logged in to post a comment.

partial assignment of patent

Patent assignment—How-to guide

Find out more about business management

partial assignment of patent

by   LegalZoom staff

Read more...

Updated on: February 15, 2024 · 13min read

1. Overview

  • 2. Do's & don’ts checklist

3. Patent assignment instructions

A company’s ability to buy and sell property is essential to its long-term life and vitality. Although it does not take up physical space, too much intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including patents and other inventions) to support their growth must be sure that the seller does, in fact, have title to the desired items. A properly drafted patent assignment can help in both circumstances. 

A patent assignment is the transfer of an owner’s property rights in a given patent or patents, and any applications for such patents. These transfers may occur on their own or as parts of larger asset sales or purchases. Patent assignment agreements provide both records of ownership and transfer and protect the rights of all parties.

If you follow the enclosed sample and guidelines, you will have a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations, and you will be well on your way to establishing a clear record of title for all of your patents. 

2. Do's & don’ts checklist

  • A patent is a set of exclusive rights in an invention given by the government to its inventor for a limited period of time. Essentially, in exchange for the inventor’s agreement to make his or her invention public and allow others to examine and build on that work, the government provides the inventor with a short-term monopoly on his or her creation. In other words, he or she is the only person who can make, use, or sell that invention.
  • A patent assignment can take many forms. It can be the transfer of an individual’s entire interest to another individual or company. It can also be the transfer of a specific part of that interest (e.g., half interest, quarter interest, etc.) or a transfer valid only in a designated area of the country. The exact form of the transfer is specific to the agreement of the parties.
  • Licenses are different than assignments. The individual who receives license rights from the patent holder is not gaining ownership—rather, he or she is getting assurance from the patent holder that he or she will not be sued for making, using, or selling the invention. The terms of the license will vary from agreement to agreement and may address issues of royalties, production, or reversion. If you are looking only to license your invention and not to sell all or part of it, you should not use the enclosed document.
  • A patent transfer is usually accomplished through a contract, like the written agreement form that follows. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the U.S. Patent and Trademark Office (USPTO). The agreement will not be effective if this registration is not made. Moreover, if the transfer is not recorded within three (3) months from the date of the assignment, there can be no later purchasers. In other words, the patent is no longer sellable to a third party by the assignee if it is not recorded quickly and correctly.
  • There is a $40 fee for recording each assignment of a patent or patent application. If you are submitting your transfer papers to the USPTO by mail, you should send them (together with a cover sheet and the fee) to Mail Stop Assignment Recording Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. Note that if you submit your assignment by mail, you should not use the original since the document will not be returned to you. In addition, the copy you submit must be on paper that is “flexible, strong white, non-shiny, and durable.”
  • Although you should feel free to adapt the document to suit your arrangement, you should always identify the patent(s) being assigned by their USPTO number and date and include the name of the inventor and the invention’s title (as stated in the patent itself). This is a requirement of federal law, and failure to follow it could invalidate your assignment.
  • The advantage of selling your invention or patent outright (and not simply licensing or attempting to develop and market it yourself) is that you are guaranteed payment at the price you and the purchaser have negotiated. On the other hand, that one-time payment is all that you will ever receive for your property. You will no longer have the right to control anyone else’s use of your creation. By using it yourself or offering a temporary license, you retain the potential for future income. However, such income is by no means certain, and your opportunities are paralleled by risk. Before selling all of your rights in a patent or patent application, make sure this is the best (and most lucrative) approach for you and your company.
  • Do not enter into an agreement without completing your due diligence. If you are purchasing a patent, conduct searches with the USPTO and online directories to make sure the seller actually has complete and unique rights in the offered property. Has an application already been filed by another person or company? What are the chances that this is a patentable item? Although your findings will not provide guarantees, you may have protection as an “innocent purchaser” if disputes arise. You might also find critical information about the value of the patent. Consider hiring a professional to help in your investigation. Comparing patents and applications often requires a specialized and technical understanding to know how useful and unique each one is. 
  • If you are selling an invention or patent, make sure you own it. Although this may seem obvious, ownership of intellectual property is sometimes not clear-cut. This may be the case if, for example, the invention was created as part of your employment or if it was simply sold or otherwise transferred to somebody else. A thorough search of the USPTO website should be conducted before you attempt to sell your property.
  • Both parties should review the assignment carefully to ensure that all relevant deal points have been included. It is better to be over-inclusive than under-inclusive. Do not assume that certain expectations or terms are agreed to if they are not stated expressly in the document.
  • Sign two copies of the assignment, one for you and one for the other party.
  • It’s a good idea to have your assignment notarized. This will limit later challenges to the validity of a party’s signature or of the transfer itself.
  • If your agreement is complicated, do not use the enclosed form. Contact an attorney to help you draft an assignment that will meet your specific needs. 

The following provision-by-provision instructions will help you understand the terms of your assignment.

The numbers and letters below (e.g., Section 1, Section 2(a), etc.) correspond to the provisions in the agreement. Please review the entire document before starting your step-by-step process. 

  • Introduction of parties. Identifies the document as a patent assignment. Write in the date on which the agreement is signed. Identify the parties and, if applicable, what type of organization(s) they are. Note that each party is given a name (e.g., “Assignor”) that will be used throughout the agreement. The Assignor is the party that is giving (“assigning”) its ownership interest and the Assignee is the party receiving it.
  • Recitals. The “whereas” clauses, referred to as recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the patent.  Remember that the Assignor can transfer all or part of its interest in the Patents. If the entire property is being transferred, use the word “all.” If only part of an Invention or Patent is being transferred, specify the amount being assigned (e.g., one-half, one-quarter, etc.).
  • Section 1: Assignment of patents. This constitutes the assignment and acceptance of the assignment of the Patents and Inventions. Note that the property being assigned is not described in the agreement itself. The Assignment references “Schedule 1” and explains that the full description is located on that schedule. Be as complete and clear as possible in your description of the property being transferred.
  • Section 2: Consideration. In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the Assignee is giving money (sometimes called “consideration”) to receive the Assignor’s property. Enter the amount to be paid, and indicate how long the Assignee has to make that payment after the agreement is signed.
  • Section 3: Authorization to a director. The Assignor’s authorization to issue any Patents in the Assignee’s name. In other words, this tells the head of the USPTO that the transfer is valid and that ownership is changing hands by virtue of the Assignment. The bracketed last sentence is only applicable if the assignment is being recorded before a patent application number has been issued by the USPTO. It allows this application number to be written in after the assignment is recorded. If the applications have already been filed, and there have been application numbers issued, delete this bracketed sentence.
  • 4(a): it is the sole owner of the Inventions and the Patents. If there are other owners who are not transferring their interests, use the bracketed phrase. This means that the only part being transferred is the Assignor’s part.
  • 4(b): it has not sold or transferred the Inventions and the Patents to any third party
  • 4(c): has the authority to enter the agreement.
  • 4(d): does not believe that the Inventions and the Patents have been taken from any third party without authorization (e.g., a knowing copy of another company’s invention).
  • 4(e): does not know of any permissions that have to be obtained in order for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
  • 4(f): the Patents weren’t created while the creator was employed by a third party. In many cases, if an individual is employed by a company and comes up with a product, the company will own that product. This section offers assurance to the Assignee that there are no companies that will make that claim about the Patents being sold. If you and the other Party want to include additional representations and warranties, you can do so here. 
  • 5(a): has the authority to enter the agreement.
  • 5(b) has enough funds to pay for the assignment.  If you and the other Party want to include additional representations and warranties, you can do so here. 
  • Section 6: No early assignment. Prevents the Assignee from re-transferring the inventions or patents, or using any of them as collateral for loans, until it has made complete payment of the money due under the agreement. 
  • Section 7: Documentation. The Assignor’s promise to help with any paperwork needed to complete an assignment (e.g., filing information about the assignment with the USPTO and transferring document titles). The bracketed phrases make the additional promise that the Assignor will help with transfer paperwork for filings outside of the country. If this is not relevant to your agreement, delete the bracketed phrases.
  • Section 8: No further use of inventions or patents . Indicates that after the effective date of the agreement, the Assignor will stop using all of the inventions and patents being transferred and will not challenge the Assignee’s use of those inventions or patents.
  • Section 9: Indemnification. A description of each party’s future obligations if the patent or any application is found to infringe on a third party’s rights. There are two options provided, and you should choose the one that best fits with your situation. In the first, the Assignor takes all responsibility for infringement, promising to pay all expenses and costs relating to the claim. In the second, the Assignor makes its responsibilities conditional, greatly limiting its obligations if a claim is brought. Select only one of these options, and delete the other.
  • Section 10: Successors and assigns. States that the Parties’ rights and obligations will be passed on to successor organizations (if any), or organizations to which rights and obligations have been permissibly assigned.
  • Section 11: No implied waiver. Explains that even if one Party allows the other to ignore or break an obligation under the agreement, it does not mean that the Party waives any future rights to require the other to fulfill those (or any other) obligations.
  • Section 12: Notice. Lists the addresses to which all official or legal correspondence should be delivered. Write a mailing address for both the Assignor and the Assignee.
  • Section 13: Governing law. Allows the parties to choose the state laws that will be used to interpret the document. Note that this is not a venue provision. The included language will not impact where a potential claim can be brought. Write the applicable state law in the blank provided.
  • Section 14: Counterparts/electronic signatures. The title of this provision sounds complicated, but it is simple to explain: it says that even if the Parties sign the agreement in different locations, or use electronic devices to transmit signatures (e.g., fax machines or computers), all of the separate pieces will be considered part of the same agreement. In a modern world where signing parties are often not in the same city—much less the same room—this provision ensures that business can be transacted efficiently without sacrificing the validity of the agreement as a whole.
  • Section 15: Severability. Protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it will not undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.
  • Section 16: Entire agreement. The Parties’ agreement that the document they’re signing is “the agreement” about the issues involved. Unfortunately, the inclusion of this provision will not prevent a Party from arguing that other enforceable promises exist, but it will provide you some protection from these claims.
  • Section 17: Headings. Notes that the headings at the beginning of each section are meant to organize the document and should not be considered operational parts of the note.
  • Schedule 1: List of patents. In order for a patent assignment to be effective, the patents being transferred must be clearly identified. Be thorough in your description and attach any registrations or drawings that you may have. If you do include drawings, reference the inclusion of those items in the schedule (e.g., “*See attached drawing.”). Enter the patent registration number, and the name of all of the registered inventors of the patent(s) (even if they are not parties to this Assignment). If the assignment relates to a patent application, identify the application number (consisting of a series code and a serial number, e.g., 07/123,456). If the assignment relates to a provisional patent application or an application that is being filed at the same time as (or after) the assignment, you must also provide the name of each inventor and the title of the invention.

You may also like

partial assignment of patent

What does 'inc.' mean in a company name?

'Inc.' in a company name means the business is incorporated, but what does that entail, exactly? Here's everything you need to know about incorporating your business.

October 9, 2023 · 10min read

partial assignment of patent

How to write a will: A comprehensive guide to will writing

Writing a will is one of the most important things you can do for yourself and for your loved ones, and it can be done in just minutes. Are you ready to get started?

February 9, 2024 · 11min read

partial assignment of patent

How to get an LLC and start a limited liability company

Considering an LLC for your business? The application process isn't complicated, but to apply for an LLC, you'll have to do some homework first.

February 15, 2024 · 11min read

The Federal Register

The daily journal of the united states government, request access.

Due to aggressive automated scraping of FederalRegister.gov and eCFR.gov, programmatic access to these sites is limited to access to our extensive developer APIs.

If you are human user receiving this message, we can add your IP address to a set of IPs that can access FederalRegister.gov & eCFR.gov; complete the CAPTCHA (bot test) below and click "Request Access". This process will be necessary for each IP address you wish to access the site from, requests are valid for approximately one quarter (three months) after which the process may need to be repeated.

An official website of the United States government.

If you want to request a wider IP range, first request access for your current IP, and then use the "Site Feedback" button found in the lower left-hand side to make the request.

Patent Assignment: Everything You Need to Know

A patent assignment is an irrevocable agreement for a patent owner to sell, give away, or transfer interest to an assignee, who can enforce the patent. 6 min read updated on January 01, 2024

Updated November 5, 2020:

Patent Assignment: What Is It?

A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue others for making or selling the invention or design.

There are four types of patent assignments:

Assignment of Rights - Patent Issued: This is for patents that have already been issued.

Assignment of Rights - Patent Application : This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.

Assignment of Intellectual Property Rights - No Patent Issued or Application Filed: This is for unregistered inventions with no patent.

Exclusive Rights

Advantages of a Patent Assignment

Assignees don't create a unique invention or design. They also don't go through the lengthy patent process . They simply assume exclusive rights to intellectual property.

Profit Potential

Many patents cover intellectual property that can earn the owner money. A patent owner can charge a lump sum sale price for a patent assignment. After the transfer, the assignee can start to earn profits from the patent. Both original owners and assignees can benefit from this business arrangement.

Disadvantages of a Patent Assignment

Too Many or Not Enough Inventors

Patents can have multiple owners who invented the product or design. Sometimes patents list too many or not enough inventors. When this happens, owners can argue about an incorrect filing. This kind of dispute can make a patent assignment impossible.

Limited Recourse

Older patents may already have many infringements. Not all patent assignments include the right to sue for past infringements. This is known as the right to causes of action. This can cost the assignee a lot of potential profit.

Examples of What Happens When You File a Patent Assignment vs. When You File a Patent License

When You File a Patent Assignment

The patent owner changes permanently. You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public.

Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits.

When You File a Patent License

The patent owner doesn't change permanently. Most licenses have a time limit. At the end of the period, the original owner takes control again. Licensing information isn't always available through an online USPTO search. Contact the recordation office directly to get information about patent licenses.

The licensee can assign rights to another person or company. This adds another layer of ownership over the intellectual property.

Many owners charge royalties for a patent license. The licensee pays royalty fees throughout the license period. If the royalty fees are high and the license period is long, a patent assignment may be a better choice for earning the new owner more money.

Common Mistakes

Not Filing an Assignment Document

A verbal agreement is not official. File a patent assignment to change patent ownership.

Taking Action Before Filing

The assignee shouldn't make or sell the invention before the patent assignment is official. If an error or another problem happens, this could be patent infringement .

Making a Filing Error

Patent assignments are official documents. The assignee's name must be legal and correct. Before filing, check the spelling of the assignee name. If the assignee is a business, confirm the legal name. Many patents have more than one owner. List all names on the assignment.

Misidentifying the Patent

Include as much information about the patent as you can. List the patent number and title. Describe the intellectual property completely.

Not Searching for Security Interests

Patents can be collateral. A bank or another party can file a security interest in a patent, and this can limit how much an assignee can earn from a patent. Check for security interests before filing a patent assignment.

Not Filing a Proprietary Information Agreement

Many businesses file patents, as this is part of a business plan , and it's especially common for startup businesses. Inventorship problems can happen if employees file patents instead of the business.

Often, employees have an obligation to assign inventions to a company. This is true if they developed the invention on the job.

To avoid confusion, require employees to sign a proprietary information agreement. This automatically assigns inventions and designs to the business. Other options include signing an automatic assignment or an explicit assignment. These all clarify patent ownership.

Not Being Notarized

Make sure all official documents concerning your patent are notarized. There is a huge legal advantage to being notarized. It makes it so that your documents will be accepted as correct until it is proven otherwise. If you can't get your documents notarized, gather two witnesses. Have them attest to the signatures.

You have to file a patent assignment within three months of signing the form. If you don't, the assignee could lose ownership rights.

Frequently Asked Questions

Where Do I Record a Patent Assignment?

If you have a U.S. patent, record your patent assignment with the USPTO. If you have a foreign patent, file with the correct national patent offices.

I Can't Get a Signature from the Inventor. What Happens Now?

First, it needs to be officially established that:

  • Whoever is pursuing the application has the right to do so.
  • The inventor cannot be reached.

In order to establish this, the patent office will need a copy of the following:

  • the employee agreement
  • the assignment
  • other evidence of the rights

After that, the patent office will continue as if the signature has been obtained, even though it hasn't.

If the inventor has died, the patent office will try to contact the person in charge of managing the deceased's estate or the heir. If the invented refuses to sign or is missing, the patent office will ask for a declaration from the person who is trying to contact them. They will also look at the following items that have been sent to the inventor:

  • Do I Have to File a Patent Assignment if the Owner's Name Changed?

No, you don't need a patent assignment if only the person's or company's name changed. If the company merged with another, you may need a patent assignment.

What if I Make a Mistake on My Patent Assignment?

You can't correct a patent assignment. You have to assign it back to the original owner. Then you have to reassign with the correct information.

How Much Does a Patent Assignment Cost?

The patent assignment fee is $25. Filing electronically doesn't cost extra. You do have to pay an additional $40 fee if you file on paper.

Should I Hire a Lawyer?

Yes, you should get a lawyer to help with a patent assignment. A lawyer will make sure there are no filing errors. A lawyer knows how to describe the patent correctly. Errors and bad descriptions can limit the power of a patent assignment. This could cost the assignee a lot of money in future profits and legal fees.

Steps to File a Patent Assignment

1. Fill Out a Recordation Form Cover Shee t

The Recordation Form Cover Sheet is an official USPTO document. This includes the names of the assignor(s) and the assignee(s). It also includes the patent title and number.

2. Complete a Patent Assignment Agreement

The patent assignment agreement should list the assignor(s) and the assignee(s). It should state that the assignor has the right to assign the patent. It should also describe the intellectual property clearly and completely. It should also explain any financial or other transactions that have to take place. This includes a description of the lump sum payment.

3. Sign the Patent Assignment Agreement

All patent owners and assignees must sign the patent assignment agreement.

4. Submit the Patent Assignment

Finally, submit the patent assignment with the USPTO. You have to pay the assignment fee at this time.

If you need help with patent assignments, you can post your question or concern on UpCounsel's marketplace . UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

Hire the top business lawyers and save up to 60% on legal fees

Content Approved by UpCounsel

  • Brookfield Patent Lawyers
  • Jackson Patent Lawyers
  • Katy Patent Lawyers
  • Kokomo Patent Lawyers
  • Providence Patent Lawyers
  • Reno Patent Lawyers
  • Southaven Patent Lawyers
  • How to Sell a Patent
  • Patent Assignment Database
  • Patent Companies
  • Patent Pending Infringement
  • Patent Rights
  • Patent Attorney
  • What Does a Patent Do
  • How to File a Patent
  • When Can You Say Patent Pending? Everything You Need to Know
  • Atlanta Patent Lawyers
  • Austin Patent Lawyers
  • Boston Patent Lawyers
  • Chicago Patent Lawyers
  • Dallas Patent Lawyers
  • Houston Patent Lawyers
  • Los Angeles Patent Lawyers
  • New York Patent Lawyers
  • Philadelphia Patent Lawyers
  • San Francisco Patent Lawyers
  • Seattle Patent Lawyers
  • Charlotte Patent Lawyers
  • Denver Patent Lawyers
  • Jacksonville Patent Lawyers
  • Las Vegas Patent Lawyers
  • Phoenix Patent Lawyers
  • Portland Patent Lawyers
  • San Antonio Patent Lawyers
  • San Diego Patent Lawyers
  • San Jose Patent Lawyers
  • View All Patent Lawyers
  • 617.395.7000
  • Artificial Intelligence
  • Chemical & Material Sciences
  • Computer Technology & Software
  • Consumer Products
  • Electronics
  • Life Sciences
  • Mechanical & Industrial
  • Medical Devices

Practice Areas

  • Strategic Counseling
  • Licensing & Transactions
  • Trade Secret
  • News & Events
  • Knowledge Center
  • Entrepreneurship Center
  • Diversity, Equity, and Inclusion
  • Client Portal

T: 617.395.7000

E:  [email protected]

D. Mass. IP Litigation Blog

  • Knowledge Center :
  •   IP Insights

A Potential and Unintended Consequence of ‘Routine’ Patent Assignments

  • April 20, 2022

By: Thomas P. McNulty and Peter C. Lando

This article was originally published on Entrepreneur.com , March 28, 2022.

Patents and patent applications are frequently assigned from one entity to another, for example between inventors and their employers or between companies seeking to collaborate on a project. Like any other contract, there are occasionally disputes between the parties regarding the agreement contemplated by the patent assignment. These instances may reflect the different intentions or understandings of the parties at the time the agreement was entered into or may come about by the diverging interests of the parties over time. Some of these disputes have found their way to the Supreme Court. For example, the Court has held that an inventor must expressly grant his or her rights in an invention, and that standard employment agreement language that includes a promise to assign future inventions did not result in an immediate assignment of future inventions and could be superseded by an assignment using present-tense language.

A recent decision of the Supreme Court draws attention to another issue that may arise with a “routine” patent assignment. In this case, limits of the judicially-created doctrine of assignor estoppel was pivotal. The doctrine has been long understood to prevent one from asserting that the patent he or she assigned is invalid, because the requirements of good faith and fair dealing between contracting parties should prevent one from selling something for value and later asserting that what was sold is worthless.

The Supreme Court’s 2021 Minerva Surgical, Inc. v. Hologic, Inc. decision addressed when the estoppel applies, holding that assignor estoppel is invoked only where an invalidity claim contradicts an explicit or implicit representation in the assignment that the patent was valid. Otherwise, the principle of fair dealing does not come into play. The Court noted several examples where the estoppel might not arise.

Assignment of Future Inventions

The first occasion noted by the Court was the assignment of inventions not yet made. This type of assignment might occur when an employee signs an agreement at the onset of employment that assigns all future inventions and patent applications to the employer. The employee cannot warrant that any claims covering future applications resulting from his or her work are valid, as the inventions have not yet been made and the claims have not yet been drafted or prosecuted.

Post-Assignment Changes in Patent Law

When a significant shift in patent law occurs following an assignment, either by the passage of a new statute or through a change in the interpretation of the patent laws, the doctrine also might not apply, at least with respect to the part of the law that changed. One such instance would be the Supreme Court’s 2014 Alice decision that set a new framework for analyzing patent eligibility for computer-implemented inventions. The validity of a patent in this field may well have been changed through the application of this new framework, and an inventor who assigned prior to the Alice decision could not have been expected to anticipate such a change and warrant that the claims were valid under the new framework.

Patent Claims that were Broadened by the Assignee

A third exception to application of the doctrine is exemplified in the Minerva case. Here, an inventor assigned a patent application to his company, which later assigned it to Hologic. When the inventor opened a new business, Minerva Surgical, to make and sell an improvement on the previously assigned invention, Hologic amended the claims of the assigned patent application to cover the new product. After the patent issued, Hologic sued Minerva for patent infringement, and Minerva then challenged the validity of the patent. Hologic then invoked assignor estoppel to argue that Minerva could not challenge the validity of the patent.

The Supreme Court upheld the principle of assignor estoppel in the abstract, but placed limitations on its application. The Court stated that where a patent application is assigned without foreknowledge of the scope of the claims that would issue, an inventor cannot be held to have attested to the validity of any claim broader than, or significantly different than, those of the application at the time of the assignment. Should the claims be narrowed, estoppel would still apply, as they would fall within the scope of the intellectual property known to be assigned. The Court then remanded the case for consideration of whether Hologic’s claim was materially broadened beyond the claims of the assigned patent application.

On remand, the Federal Circuit pointed out the trap that the Supreme Court’s holding leaves for inventors. Patent applications are typically written to claim an invention as broadly as the known prior art permits, but having filed broad claims, inventors who assign pending applications might find themselves estopped to argue invalidity of the claims that ultimately issue regardless of how the claims were changed after the assignment, because they will still fall within the scope of the claims as filed and assigned. Consideration should therefore be given to the breadth of claims filed in an application that is likely to be assigned, particularly where the assignee is or is likely to become a competitor of the inventor/assignor.

Entities To Whom the Estoppel Applies

The Minerva case did not address the degree of affiliation necessary for the estoppel to apply, leaving untouched the Federal Circuit’s “privity” analysis. Under that precedent, estoppel applies to each assignor and to everyone in privity with each assignor, with privity being determined by balancing the equities. Generally, if an assignor has a financial interest in the success of the accused activity, either directly or through an ownership stake in the defendant, or participates in the development of the allegedly infringing product or service, estoppel will apply.

If an employee assigned an invention to his employer, both the employee and the employer, and those in privity, would be estopped from challenging validity. In the Minerva case, Minerva was identified by the Court as the “alter-ego” of the assignor, who founded Minerva following the assignment of the relevant application. Other cases have found privity, and thus estoppel, where an inventor/assignor had been hired to work on the technology of the subject patents and had become a vice president and general manager of the division responsible for making the accused products; where an assignor is a principal stockholder, president and general manager of the accused infringer; where an assignor held control over the accused corporation despite lacking voting control of the corporation; where an assignor was married to a partner in the accused entity; and where an assignor provided knowledge and assistance in the accused conduct. Estoppel has been applied where the inventor/assignor was not an employee but consulted directly on the accused activity. On the other hand, hiring an inventor/assignor as a mere employee, with no ownership or control and with no input in the accused activity, may not result in an estoppel.

Consideration Supporting Estoppel

One question is whether the doctrine will be applied in circumstances where the assignor received little or no consideration for the assignment. Many employment contracts require employees to assign their inventions to their employers for some minimal amount or even as a condition of employment; likewise, many standard patent assignments refer to some unspecified “good and valuable consideration,” in which the receipt and sufficiency is acknowledged. The Federal Circuit has determined that employment, salary and/or bonuses are valid consideration for estoppel to apply, so inventors who are subject to such a contract will likely be unable to challenge the validity of their assigned patents.

What Assignor Estoppel Does Not Prohibit

While an assignor may not be able to challenge the validity of an assigned patent in court under this doctrine, some options are available. First, because the doctrine does not apply in actions before the Patent Trial and Appeals Board, an assignor may challenge the validity of a patent through inter partes review (IPR). While this does place some limitations on validity challenges (only anticipation or obviousness based on patents or printed publications can be asserted in an IPR), it does permit a validity challenge that could not be brought in court. The Federal Circuit held this month that parties can contract away their ability to bring an IPR proceeding, so assignees can potentially eliminate this avenue.

While not presented as invalidity arguments, assignors can also use prior art to support a narrow claim construction in a way that might avoid infringement. Similarly, an assignor can argue that the accused product practices the disclosure of an expired patent that anticipates the claims of the assigned patent, determining that to preclude such an argument would wrongfully allow the assignee to recapture subject matter that is dedicated to the public upon the expiration of a patent. This type of argument, which is effectively that the expired patent anticipates the assigned claims, is limited to expired patents, however, and is therefore of limited use.

Finally, as the doctrine of assignor estoppel arises out of the “good faith and fair dealing” that comes with contract law, the parties may be able to contract around its application. The Minerva decision noted that “the assignment of specific patent claims carries with it an implied assurance” of validity, whether this warranty is put in writing or not, but can the assignment expressly disclaim such a warranty? An assignment agreement that contains express language that the intellectual property at issue is being assigned “as is,” with no representations or warranties as to its validity, may suffice to escape application of the doctrine.

Assignees, on the other hand, may wish to take additional steps to ensure that the assignor cannot later challenge an assigned patent. The assignment could include express language preventing the assignor from challenging the validity of the assigned patents in court or at the Patent and Trademark Office, removing one potential loophole to the estoppel. If a full bar cannot be negotiated, terms that deter a validity challenge without an outright bar can be considered. Payment for the assignment can be staged over time, with a validity challenge resulting in forfeiture of any unpaid amounts, or an assignor can be required to pay the assignee’s legal costs associated with a validity challenge. The assignment could also include a noncompete clause, preventing the assignor from working in the field of the patent for a period of time. As noncompete agreements in employment contracts have come under increasing scrutiny, such a clause in connection with an assignment of an invention is more likely to hold up than a conventional employee noncompete.

Assignor estoppel is a potentially damaging surrender of a defense to patent infringement that should be understood and fully considered when entering into a patent assignment. Assignors should carefully consider the terms of an assignment to avoid placing unforeseen limits on their future activities. Likewise, assignees should know whether they are receiving this assurance of validity when signing an agreement, to ensure they are receiving the full scope of benefits for which they bargained. Assignments of patents, patent applications, and inventions therefore should be carefully scrutinized and not be treated simply as “form” agreements.

partial assignment of patent

  • Thomas P. McNulty
  • Peter C. Lando

Professionals

SHARE THIS POST

How can we help you?

  • When Partial IP Assignments Become Murky

partial assignment of patent

"In some cases ... the owner of the IPR may be persuaded to assign a partial interest in the IPR even if it is unwilling to assign its entire interest. Many countries (e.g., Canada) recognize assignments of certain IPR that are limited to a specific field of use or territory. Accordingly, in place of a field of use-limited exclusive license (e.g., an exclusive license in the optical networking field), the parties could agree that the owner of the IPR will assign all IPR within a particular field, while retaining all other rights (e.g., an assignment of all rights in the IPR in the optical networking field only). Note, however, that not all countries recognize field of use-limited assignments with respect to each of the major categories of IPR (e.g., patents, copyrights, and trade secrets). For example, Canada recognizes such partial assignments of patents, but not trade secrets; in such case this approach would work for the patents, but another approach would be necessary for the trade secrets.”

partial assignment of patent

No comments:

All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment. It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow. Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html

The IPKat: Intellectual Property News and Fun for Everyone!

The IPKat: Intellectual Property News and Fun for Everyone!

How many page-views has the IPKat received?

Not just any old ipkat ....

partial assignment of patent

Get the Kat in your Inbox!

The kat that tweets current followers: 22.8k.

partial assignment of patent

Follow the IPKat on LinkedIn

partial assignment of patent

Follow the IPKat on Facebook

Follow the ipkat on reddit.

Follow the IPKat on Reddit!

The IPKat's most-read posts in the past 30 days

Highlights from the new EPO Guidelines for Examination 2024

Search This Blog

Blog archive.

  • ►  March 2024 (5)
  • ►  February 2024 (37)
  • ►  January 2024 (40)
  • ►  December 2023 (48)
  • ►  November 2023 (40)
  • ►  October 2023 (39)
  • ►  September 2023 (39)
  • ►  August 2023 (36)
  • ►  July 2023 (37)
  • ►  June 2023 (40)
  • ►  May 2023 (46)
  • ►  April 2023 (44)
  • ►  March 2023 (34)
  • ►  February 2023 (39)
  • ►  January 2023 (36)
  • ►  December 2022 (30)
  • ►  November 2022 (35)
  • ►  October 2022 (35)
  • ►  September 2022 (34)
  • ►  August 2022 (24)
  • ►  July 2022 (21)
  • ►  June 2022 (24)
  • ►  May 2022 (24)
  • ►  April 2022 (26)
  • ►  March 2022 (26)
  • ►  February 2022 (39)
  • ►  January 2022 (42)
  • ►  December 2021 (40)
  • ►  November 2021 (40)
  • ►  October 2021 (34)
  • ►  September 2021 (37)
  • ►  August 2021 (36)
  • ►  July 2021 (39)
  • ►  June 2021 (25)
  • ►  May 2021 (40)
  • ►  April 2021 (35)
  • ►  March 2021 (36)
  • ►  February 2021 (28)
  • ►  January 2021 (41)
  • ►  December 2020 (47)
  • ►  November 2020 (37)
  • ►  October 2020 (40)
  • ►  September 2020 (42)
  • ►  August 2020 (44)
  • ►  July 2020 (56)
  • ►  June 2020 (48)
  • ►  May 2020 (50)
  • ►  April 2020 (52)
  • ►  March 2020 (58)
  • ►  February 2020 (54)
  • ►  January 2020 (62)
  • ►  December 2019 (45)
  • ►  November 2019 (60)
  • ►  October 2019 (66)
  • ►  September 2019 (58)
  • ►  August 2019 (54)
  • ►  July 2019 (60)
  • ►  June 2019 (60)
  • ►  May 2019 (66)
  • ►  April 2019 (74)
  • ►  March 2019 (67)
  • ►  February 2019 (69)
  • ►  January 2019 (68)
  • ►  December 2018 (50)
  • ►  November 2018 (42)
  • ►  October 2018 (47)
  • ►  September 2018 (31)
  • ►  August 2018 (29)
  • ►  July 2018 (28)
  • ►  June 2018 (37)
  • ►  May 2018 (44)
  • ►  April 2018 (44)
  • ►  March 2018 (60)
  • ►  February 2018 (58)
  • ►  January 2018 (54)
  • ►  December 2017 (44)
  • ►  November 2017 (61)
  • ►  October 2017 (68)
  • ►  September 2017 (38)
  • ►  August 2017 (30)
  • ►  July 2017 (57)
  • ►  June 2017 (62)
  • ►  May 2017 (57)
  • ►  April 2017 (53)
  • ►  March 2017 (53)
  • ►  February 2017 (41)
  • ►  January 2017 (35)
  • ►  December 2016 (55)
  • ►  November 2016 (45)
  • ►  October 2016 (44)
  • ►  September 2016 (61)
  • ►  August 2016 (33)
  • ►  July 2016 (38)
  • ►  June 2016 (47)
  • ►  May 2016 (62)
  • ►  April 2016 (62)
  • ►  March 2016 (63)
  • ►  February 2016 (41)
  • ►  January 2016 (47)
  • ►  December 2015 (57)
  • ►  November 2015 (76)
  • ►  October 2015 (71)
  • ►  September 2015 (60)
  • ►  August 2015 (69)
  • ►  July 2015 (74)
  • ►  June 2015 (72)
  • ►  May 2015 (67)
  • ►  April 2015 (65)
  • ►  March 2015 (93)
  • ►  February 2015 (73)
  • ►  January 2015 (87)
  • ►  December 2014 (89)
  • ►  November 2014 (58)
  • ►  October 2014 (73)
  • ►  September 2014 (78)
  • ►  August 2014 (68)
  • ►  July 2014 (73)
  • ►  June 2014 (76)
  • ►  May 2014 (72)
  • ►  April 2014 (69)
  • ►  March 2014 (67)
  • ►  February 2014 (78)
  • ►  January 2014 (78)
  • ►  December 2013 (64)
  • ►  November 2013 (78)
  • ►  October 2013 (72)
  • ►  September 2013 (54)
  • ►  August 2013 (57)
  • ►  July 2013 (72)
  • ►  June 2013 (56)
  • ►  May 2013 (63)
  • ►  April 2013 (73)
  • ►  March 2013 (62)
  • ►  February 2013 (55)
  • ►  January 2013 (62)
  • ►  December 2012 (48)
  • ►  November 2012 (77)
  • ►  October 2012 (69)
  • Should We Allow the Overleveraging of IP Rights By...
  • Friday fantasies
  • Breaking: Updated Draft Agreement on Unified Pate...
  • Plain packaging and the European Commission: is th...
  • Teaching IP to blind students: insights wanted
  • Puzzled by comments in the UK, a German lawyer spe...
  • Hermès counterfeiter sentenced to life
  • Unitary Patent Update: It's back to school for the...
  • P2P: Multum in Ipso
  • UN gives WIPO the all-clear over North Korean sanc...
  • Handbags at Dawn 3: ACID, goods in transit and th...
  • Handbags at Dawn 2: fashion economics and design
  • Brief from the AdvoKat: Hunting for IP's Nemesis
  • Handbags at Dawn 1: fashion, copyright and trade m...
  • The IPKat's Septembral weblog round-up
  • Uncertainty in trade mark practice: why do we brin...
  • "Young, wild & free"? Student-(un)friendly fees at...
  • How are catchphrases protected? Just like that
  • Wednesday whimsies
  • Prevailing pomaceous protectionism
  • Yahoo!® drops "®". Is "!" next?
  • BÜRGER and Bürgerbräu
  • Revention - Inventions in a recession?
  • Much ado about CJEU referral costs in the PCC
  • Before or after the storm, patent litigation goes ...
  • Pandora--Is it Still an Unscalable Box?
  • London, Ireland
  • The tasteless in pursuit of the topless: is this a...
  • Is cinema the antidote to the EU democratic deficit?
  • Something else to read: three more IP books ...
  • Orphan works directive approved by EU Parliament
  • Two for the price of one: Court of Appeal affirms ...
  • Plagiarism response: "There are different rules fo...
  • Sensible strategy for crowdfunded innovation
  • EU Observatory gets its first head
  • Two years on, the Patents County Court is ready fo...
  • Beam me out, Scottie? Barroso warns Scotland, but ...
  • Is Google Afraid of the Big Bad Wulff? No
  • At the apex of the Summit: "real world" invoked in...
  • Hard times for soft-serve? Will Mr Whippy whip Mrs...
  • Tuesday tiddlywinks
  • Mixcloud: the radio version of Youtube?
  • Tender Patents
  • So now we're agreed, the European Emblem is protected
  • Starting a Collecting Society
  • Dumb and Dumber? No, Brave and Braver go Disney an...
  • IP protection in the Global Competitiveness Report...
  • Semantic house music turf wars
  • Divide and rule: a new regime for governing Britis...
  • Calling all IP publishers and editors
  • A Comic is Worth a 1,000 Authorities
  • Coming to a school near you ...?
  • BREAKING NEWS: Storck can't register mouse
  • BREAKING NEWS: Appeal's Court decision sees Loubo...
  • Mars meltdown and menu disclaimers
  • Attribution Right? In a Letter of Recommendation?
  • Kat Update: One Direction changes direction
  • Patents County Court small claims track
  • Patentability of Isolated DNA: A Myriad of Analogies
  • Kat update to the Bruce Willis/Apple saga
  • Bruce Willis to sue Apple over who owns his iTunes...
  • Monday miscellany
  • ►  August 2012 (56)
  • ►  July 2012 (70)
  • ►  June 2012 (68)
  • ►  May 2012 (61)
  • ►  April 2012 (70)
  • ►  March 2012 (78)
  • ►  February 2012 (81)
  • ►  January 2012 (81)
  • ►  December 2011 (66)
  • ►  November 2011 (69)
  • ►  October 2011 (62)
  • ►  September 2011 (43)
  • ►  August 2011 (61)
  • ►  July 2011 (68)
  • ►  June 2011 (61)
  • ►  May 2011 (63)
  • ►  April 2011 (68)
  • ►  March 2011 (76)
  • ►  February 2011 (66)
  • ►  January 2011 (64)
  • ►  December 2010 (74)
  • ►  November 2010 (60)
  • ►  October 2010 (67)
  • ►  September 2010 (60)
  • ►  August 2010 (64)
  • ►  July 2010 (62)
  • ►  June 2010 (57)
  • ►  May 2010 (61)
  • ►  April 2010 (75)
  • ►  March 2010 (63)
  • ►  February 2010 (50)
  • ►  January 2010 (54)
  • ►  December 2009 (50)
  • ►  November 2009 (70)
  • ►  October 2009 (58)
  • ►  September 2009 (49)
  • ►  August 2009 (55)
  • ►  July 2009 (59)
  • ►  June 2009 (57)
  • ►  May 2009 (40)
  • ►  April 2009 (51)
  • ►  March 2009 (61)
  • ►  February 2009 (56)
  • ►  January 2009 (60)
  • ►  December 2008 (53)
  • ►  November 2008 (66)
  • ►  October 2008 (60)
  • ►  September 2008 (52)
  • ►  August 2008 (56)
  • ►  July 2008 (60)
  • ►  June 2008 (74)
  • ►  May 2008 (78)
  • ►  April 2008 (72)
  • ►  March 2008 (70)
  • ►  February 2008 (59)
  • ►  January 2008 (75)
  • ►  December 2007 (55)
  • ►  November 2007 (71)
  • ►  October 2007 (64)
  • ►  September 2007 (54)
  • ►  August 2007 (51)
  • ►  July 2007 (77)
  • ►  June 2007 (75)
  • ►  May 2007 (76)
  • ►  April 2007 (62)
  • ►  March 2007 (92)
  • ►  February 2007 (84)
  • ►  January 2007 (83)
  • ►  December 2006 (59)
  • ►  November 2006 (74)
  • ►  October 2006 (57)
  • ►  September 2006 (52)
  • ►  August 2006 (53)
  • ►  July 2006 (61)
  • ►  June 2006 (60)
  • ►  May 2006 (66)
  • ►  April 2006 (64)
  • ►  March 2006 (83)
  • ►  February 2006 (59)
  • ►  January 2006 (78)
  • ►  December 2005 (65)
  • ►  November 2005 (68)
  • ►  October 2005 (56)
  • ►  September 2005 (68)
  • ►  August 2005 (70)
  • ►  July 2005 (74)
  • ►  June 2005 (90)
  • ►  May 2005 (79)
  • ►  April 2005 (84)
  • ►  March 2005 (63)
  • ►  February 2005 (70)
  • ►  January 2005 (83)
  • ►  December 2004 (81)
  • ►  November 2004 (95)
  • ►  October 2004 (81)
  • ►  September 2004 (66)
  • ►  August 2004 (43)
  • ►  July 2004 (63)
  • ►  June 2004 (49)
  • ►  May 2004 (49)
  • ►  April 2004 (46)
  • ►  March 2004 (61)
  • ►  February 2004 (40)
  • ►  January 2004 (59)
  • ►  December 2003 (57)
  • ►  November 2003 (62)
  • ►  October 2003 (52)
  • ►  September 2003 (58)
  • ►  August 2003 (73)
  • ►  July 2003 (40)

Creative Commons Attribution-Non Commercial Licence

Subscribe to the ipkat's posts by email here, feed me ipkat.

' border=

Has the Kat got your tongue?

The ipkat's cousins: some ip-friendly blogs for you, out for the count....

partial assignment of patent

Patent Application Assignment (Partial) (Inventor to Entity)

This template is a Patent Application Assignment used to transfer partial ownership of an invention from the inventors to an entity. An assignment transferring ownership of a patent application is typically used in an employment situation where one or more employee inventors transfer rights in the invention to their employer. This template includes practical guidance, drafting notes, and optional clauses. An assignment transferring ownership of a patent can also be used to transfer ownership from employee inventor(s) to an employer entity. However, transfer of ownership in a patent from the inventor(s) to an entity is more likely to be used when an inventor is selling the invention to an entity such as a company that desires to purchase and manufacture the invention described in the patent.

TMEP 501.06: Partial Assignments

October 2017 Edition of the TMEP

TMEP Chapter Index Chapter 500: Change of Ownership 501 : Assignment of Marks

Previous: §501.05 | Next: §501.07

501.06    Partial Assignments

A trademark may be owned by two or more persons (see TMEP §803.03(d) ), and a co-owner may assign his or her interest in a mark.  Also, a party who is the sole owner of a mark may transfer a portion (e.g., 50%) of his or her interest in the mark to another party.

A trademark owner may also assign a separate portion of a business, together with the good will and trademarks associated with that portion of the business, but retain rights in the mark for uses pertaining to another part of the business. See VISA, U.S.A., Inc. v. Birmingham Trust Nat'l Bank, 696 F.2d 1371, 216 USPQ 649 (Fed. Cir. 1982), cert. denied, 464 U.S. 826, 220 USPQ 385 (1983).  Accordingly, one or more trademarks of a company can be validly assigned if the assignor transfers the good will associated with only some of the goods/services on which that mark appears.  After a registration has been assigned with respect to only some of the goods/services, both owners must file the necessary renewal applications and affidavits of continued use or excusable nonuse under 15 U.S.C. §1058 or §1141k to maintain the registration.  If only one party files, only those goods/services in the registration for which that party owns the mark are continued or renewed.  See TMEP §§1604.11 and 1613.05 regarding affidavits of continued use or excusable nonuse, and TMEP §§1606 and 1614 regarding renewal.

A trademark owner may not use an assignment to impose geographic restrictions on a registration.  This must be done by way of a concurrent use proceeding before the Trademark Trial and Appeal Board, or pursuant to a final determination by a federal court. 15 U.S.C. §1052(d) .  See TMEP §1207.04 and Trademark Trial and Appeal Board Manual of Procedure ("TBMP") Chapter 1100 regarding concurrent use registration.  However, the Assignment Recordation Branch of the USPTO will record an assignment purporting to transfer rights in an unrestricted registration for less than the entire United States, because it is a transfer that may affect title to the registration.  As noted in TMEP §503.01(c) , the Assignment Recordation Branch does not examine the substance of documents submitted for recording.  The act of recording the document is not a determination of the validity or effect of the purported assignment and does not create a concurrent use registration.

A trademark owner who files a partial assignment is strongly encouraged to file a separate request to divide so that the USPTO can more effectively track and administer applications and post registration filings, and ensure that USPTO records accurately reflect current ownership information.  In pending applications in which a partial assignment and a request to divide are filed, the ITU/Divisional Unit will process the request to divide and ensure that the USPTO records reflect current ownership information.  Because the assignment records of the parent application do not appear in the newly created child application, the ITU staff will place a copy of the Trademark Assignment Abstract of Title for the parent application in the trademark records of the child application.  The abstract will be viewable via the Trademark Image Capture Retrieval System ("TICRS") and the Trademark Status and Document Retrieval ("TSDR") portal on the USPTO website at http://tsdr.uspto.gov/ .  The assignment information in the parent application will remain accessible via the Assignment database on the USPTO website at http://assignments.uspto.gov/assignments .  After the request to divide is processed and the child application is created, any new recordations in the child application will appear in the Assignment database.  See TMEP §1615 regarding requests to divide registrations in which ownership has changed with respect to some but not all of the goods/services, and TMEP §1110 regarding request to divide pending applications.

Law Firm in India

  • Legal Articles

Patent Assignment in India

January 17, 2023 | Corporate & Commercial Law Patents are intellectual properties that provide exclusive rights to the owner for a specific invention, but which can be transferred to someone else through the process of patent assignment that must be duly executed as per legal norms.

partial assignment of patent

What is a Patent?

Need for patents, what is patent assignment, types of patent assignments.

  • Legal Assignment: A legal assignment is where the assignee may enter their name as the patent owner in the government records. A patent created through a deed can only be assigned through a deed. Once the assignor has completed the process, the assignee gains all the rights of the patent.
  • Equitable Assignment: Any form or agreement including a letter in which the proprietor agrees to share a certain share of the patent with another individual is referred to as the equitable assignment of the patent. While the assignee cannot get their name entered in the register as one of the owners, they can notify the register of their interest in the patent.
  • Mortgages: Mortgages are assignments where the owner provides partial or complete right to an assignee in exchange for a certain amount of money. Once the amount is repaid, the owner gains back all rights to the mortgaged property. The lender cannot register themselves as the proprietor in the records, but get their name entered in the register as mortgagee.

Requirements for Patent Assignment

  • As mentioned before, patent assignment can only be considered a valid assignment if it has been drafted in writing and duly executed through the legal process.
  • The written draft must define all the rights and obligations of both the parties with respect to the patent.
  • The assignee shall apply in writing to the Controller of Patents to enter their name into the register of patents. Once the Controller of Patents is satisfied that the assignee has a genuine interest in the patent, they shall enter the details of assignment into their register.
  • Form-16 must be duly filled and filed before the Controller General of Patents, Designs and Trademarks. It records the necessary details that must be mentioned for assignment, such as name of the applicant, details of all parties involved, description of the draft through which assignment is being sought.
  • Two copies of the deed must be attached to the application as well.
  • Fees for the process varies for different individuals and entities and is different when applied physically and through the Internet. A detailed breakdown of the official fees for the process is mentioned in the First Schedule of the Patent Act.

Contents of Patent Assignment Agreement

  • Details of the parties to the agreement, i.e., the assignor and the assignee.
  • Description of the patent – registration number, date of registration, type of patent, etc.
  • Consideration in lieu of assignment.
  • Rights and obligations of all parties involved.
  • An undertaking of the assignor that they have not assigned or otherwise dealt with patent to create a third-party interest in the patent.
  • Termination clause.
  • Dispute resolution clauses.
  • Indemnity clause in favor of the assignee.

Difference between Assignment and Licenses

Amendments and termination.

  • Amending Patent Assignment Agreement
  • Termination of Patent Assignment Agreement

We can assist you with Patent Assignment Agreement concerns. You can get in touch with us by submitting a query below.

  • Definition of Resolution plan will now include provisions for corporate restructuring: The amendment act has inserted an explanation in the definition of resolution plan to clarify that a resolution plan that proposes the insolvency resolution of a corporate debtor may include the provisions for corporate restructuring, including by way of merger, amalgamation and demerger.
  • NCLT will have to record reasons for delay in discarding an application for initiation of CIRP: As per the Code, the NCLT must dispose of an application for initiation of CIRP within a period of 14 days from the receipt of application. However, there have been cases when the NCLT has taken more than 14 days to make a decision on the application. Therefore, to ensure speedy disposal and value maximization of the corporate debtor's assets, a proviso has been added which requires that NCLT to record its reasons in writing in case an application is not disposed within 14 days.
  • Corporate Insolvency Resolution Process to be concluded within 330 days: Earlier, the IBC demanded completion of CIRP within 180 days including a one-time extension of 90 days. However, many a times the Courts have allowed removal of certain periods, for instance, time consumed in litigation, from the compulsory completion period resulting in a lot of unresolved CIRPs well beyond the time duration allowed in the IBC. The Amendment act makes it compulsory for a CIRP to be completed within 330 days including any extension of time granted and time taken under legal proceedings. It further states that any pending CIRPs that have been going on for over 330 days should be completed within 90 days from the date of commencement of the Amendment Act.
  • Voting by authorised representative representing a class of financial creditors: To avoid any confusion and facilitate decision making in the Committee of Creditors, especially in cases where financial creditors are a large group, the Amendment Act provides that an authorized representative representing a class of financial creditors shall vote on behalf of all the financial creditors he/she represents in accordance with the decision approved by more than 50% of such financial creditors. This principle however would not be applicable in case of voting for withdrawal of CIRP.
  • Amount payable to functional creditors and disagreeing financial creditors: The Amendment Act provides that payment of debts of operational creditors shall be the higher of
  • the amount to be paid to these creditors at the time of liquidation of the corporate debtor u/s 53 or
  • the amount that would have been paid to such creditors, if the amount to be distributed under the resolution plan had been distributed in accordance of priority as mentioned u/s 53 (1)
  • NCLT has not approved or rejected a resolution plan
  • an appeal is pending at the Supreme Court or at the NCLAT (National Company Law Appellate Tribunal)
  • a lawsuit has been launched in a court challenging the decision of NCLT in relation to a resolution plan
  • Committee of Creditors (COC) to contemplate way of distribution submitted in the resolution plan: Besides the current need of approval of resolution plan after keeping in mind the practicality and acceptability of the resolution plan, the amendment act requires that the CoC consider the manner of distribution proposed in the resolution plan by taking into account the order of priority amongst creditors, as prescribed u/s 53 (1) relating to liquidation waterfall, including the priority and value of security interest of a secured creditor.
  • NCLT approved resolution plan will be binding on the Central Government, State Government or any local authority to whom corporate debtor owes a statutory debt: As per the Code, the approved resolution plan was only binding on the corporate debtor and its employees, creditors, members, guarantors and other stakeholders included in the resolution plan resulting in instances where the Government used to follow up for the balance dues after the said approval of resolution plan. The Amendment Act has now modified Section 31(1) to illuminate that any NCLT approved resolution plan will be binding on the Central Government, State Government and any local authority to whom a corporate debtor owes a debt in respect of payment of dues arising under any law.
  • Liquidation after setting up the Committee of Creditors (COC): The Amendment Act simplifies by way of an explanation, u/s 33(2) which covers liquidation, that the COC may decide to liquidate the corporate debtor any time after the setting-up of the COC until the confirmation of the resolution plan, including at any time before the development of the information memorandum. This change is pertinent as there have been cases where NCLTs have demanded that a liquidation order may be passed only after failure of the CIRP even though an early liquidation would have resulted in value maximization.

partial assignment of patent

Leave a Comment

How can we help you, write to us with your enquiries, questions or request a meeting with a lawyer to discuss your potential case. one of our experts would review the form and revert back shortly., thank you for getting in touch.

We appreciate you contacting us at India Law Offices. We will review the details that you have submitted and one of our experts will connect with you shortly.

Enquiry Form

Related articles.

Here are some of the other related articles authored by our experts which might be of interest to you.

partial assignment of patent

NRI Tax Residency Status in Pandemic Times

Generally, any individual living less than 182 days during taxable year is considered a non-resident Indian but the pandemic has created con..

partial assignment of patent

United Kingdom - Market Entry & Business Opportunities

The regulatory and business environment in the United Kingdom supports good business, flexible labor market, encourage creativity, innovatio..

partial assignment of patent

ITAT Allows Foreign Taxes Paid as Deduction for International Bank in India

Under the DTAAs, taxpayers can avail reliefs such as claiming tax credits for taxes paid abroad. The rules for claiming FTCs are generally c..

partial assignment of patent

Is LEI Code Mandatory in India?

Any issuer who has issued or proposed to issue listed non-convertible securities, securitized debt instruments, or security receipts must ob..

partial assignment of patent

Income Tax is not Applicable on Allotment of Bonus Shares: Karnataka High Court

Assessing officers have contended that when bonus shares are allotted to existing shareholders, they derive a benefit which should be taxed...

partial assignment of patent

Permits Required for Engineering or Construction Projects in India

Numerous permits such as land title, land clearance, zonal clearance, highway permit, forest permit & so on must be acquired before begi..

The Bar Council of India does not permit advertisement or solicitation by advocates in any form or manner. By accessing this website, www.indialawoffices.com , you acknowledge and confirm that you are seeking information relating to India Law Offices of your own accord and that there has been no form of solicitation, advertisement or inducement by India Law Offices or its members. The content of this website is for information purpose only and should not be interpreted as soliciting or advertisement. No material/information provided on this website should be construed as legal advice. India Law Offices shall not be liable for consequences of any action taken by relying on the material/information provided on this website. The contents of this website are the intellectual property of India Law Offices.

U.S. flag

An official website of the United States government Here’s how you know keyboard_arrow_down

An official website of the United States government

The .gov means it’s official. Federal government websites often end in .gov or .mil. Before sharing sensitive information, make sure you’re on a federal government site.

The site is secure. The https:// ensures that you are connecting to the official website and that any information you provide is encrypted and transmitted securely.

Jump to main content

United States Patent and Trademark Office - An Agency of the Department of Commerce

Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

Patents Assignments: Change & search ownership

Change of owner (assignment) and change of owner name.

During examination of a patent application or after the patent is granted, the owner of the patent may:

  • Transfer ownership to another entity or party through an "assignment;" or
  • Retain ownership but change their name.

The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by going to Assignment Center and filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Change Ownership - Assignment Center

Use Assignment Center to file a Patent Assignment Recordation Cover Sheet and attach the supporting legal documentation as a black-and-white TIFF or PDF file. You may email questions about filing patent assignments to [email protected] .

Patent Assignment Search

Use  Patent Assignment Search  to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching patent assignments to [email protected] .

For further information, you may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 am – 5:00 pm Eastern Time.

Additional information about this page

More From Forbes

‘the tourist’ season 2 twist ending explained – what was in the file.

  • Share to Facebook
  • Share to Twitter
  • Share to Linkedin

Jamie Dornan in "The Tourist" Season 2.

The second season of the Australian thriller The Tourist is now on Netflix. If you’ve finished the action-packed BBC series, learn more about The Tourist’s Season 2 ending , including Elliot’s true identity and what was in the mysterious file.

The first season of The Tourist follows an unnamed man (Jamie Dornan) being chased through the Australian outback. When his vehicle twists off the road, The Man wakes up in a hospital with no recollection of who he is or how he ended up there. When he leaves, it’s clear that people are trying to kill him, so Dornan’s character — with the help of Probationary Constable Helen Chambers (Danielle Macdonald) — set out to discover his true identity before it’s too late.

In the second season, Dornan’s characters, Elliot and Helen, embark on a journey to Ireland, hoping to unravel the mysteries surrounding Elliot’s identity. However, their plans take an unexpected turn when confronted with the dangerous aftermath of Elliot’s past.

“Helen is still curious about who Elliot is. She got this really shocking news about him at the end of Season 1, and it didn’t seem like something she could get over. And then they go off and they’re living in this fantasy world [traveling the globe], but there’s a nagging thought of, ‘What is his past, though?’” Macdonald told The Wrap in February 2024. “There is also an element of wanting to explore who he is that’s encouraged by Helen.”

The Dumplin’ actress continued, “So yeah, they unknowingly opened Pandora’s box in Season 2. And the moment they do, they’re trying to close it. But once it’s opened, you’ve got to go through the whole ride. And yeah, it’s bonkers. Season 2 is definitely even more wild than Season 1.”

Google s Surprise Update Just Made Android More Like iPhone

New samsung leak reveals important galaxy z fold 6 decision, aew revolution 2024 results winners and grades in sting s last match.

There are six episodes in Season 2 of The Tourist , just like the first season. Read on to dive into the conclusion second season, including that twist at the very end. (Warning: Spoilers ahead of The Tourist Season 2.)

The Tourist Season 2 Ending Explained

During the second season of The Tourist , Elliot and Helen are traveling through Southeast Asia after leaving Australia. Things take an unexpected turn when they pursue a lead who offers information on Elliot’s mysterious past. When they reach Ireland, Elliot is abducted, and the clue is revealed to be a trap.

The orchestrators of Elliot’s kidnapping are none other than the McDonnells, who discover that Elliot is, in fact, Eugene Cassidy — a member of the rival Cassidy family. Eugene’s mother, Niamh Cassidy (Olwen Fouéré), is their leader and is entangled in a longtime feud with the McDonnells, headed by patriarch Frank (Francis Magee).

In Season 2, it comes to light that Eugene skipped town years earlier after fathering a child named Fergal with Donal McDonnell’s wife, Claire. Out of revenge, Donal shot Eugene’s brother, having mistaken him for Eugene. Claire wants Elliot to kill Donal, who was emotionally and physically abusive to her.

Does Helen Die In The Tourist Season 2?

Danielle Macdonald as Helen Chambers in "The Tourist" Season 2.

No, Helen does not die in The Tourist Season 2. In Episode 5, viewers see Helen get shot in the stomach by Lena (the woman who tricked them into going to Ireland in the first place) and is sent to the hospital. But after a speedy recovery, Elliot and Helen head back to Australia. Shortly after, it becomes clear that it was all a dream. The dream was meant to stimulate Helen’s subconscious feelings about Eugene and whether she could really trust him.

How Does The Tourist Season 2 End?

Jamie Dornan and Danielle Macdonald in The Tourist.

The rival families are on the brink of an all-out war. Niamh kills Donal, but everyone assumes that it is Eugene, and he is arrested for Donal’s murder. Helen doesn’t believe Eugene when he tells her he didn’t do it, so she breaks up with him.

Helen eventually comes around when she learns the truth, which is that Frank McDonnell hired the real Elliot Stanley to investigate the aftermath of the plane crash that claimed his father’s life. But Niamh killed him to hide what Frank and Elliot discovered: love letters exchanged between Frank’s father and Niamh’s mother.

There’s proof that Niamh and Frank are siblings, which “complicated things massively, and muddied the water in a huge way,” Dornan told Tudum of the big plot twist. “Elliot’s come in and just been thrown into the middle of all this with zero understanding of why it’s like this, and how he’s so caught up in it.”

After realizing the truth and Eugene’s innocence, Helen gets back together with him, and they relocate to a flat in Amsterdam. But that’s not all. When Eugene was arrested for Donal’s murder, an article had been published in the local newspaper. In response, someone tracked down Eugene and sent him a file with more details about his past.

What Was In The File In The Tourist Season 2?

Eugene and Helen decide not to read the file about his past as they no longer care what it says. Eugene places the envelope in the fire and lets it burn as the couple goes to test whether Eugene retained any of his dancing skills post-memory loss. (In Season 2, Niamh told Helen that Eugene used to be a fantastic dancer).

Thankfully, viewers catch a glimpse of the cover of the envelope before it burns away. There, it reveals Eugene’s true identity: He was a special agent as far back as 2005 and is on a “general assignment” for the “Sentinel” bureau, potentially setting up a third season of The Tourist .

“I think it’s purposely open-ended,” Dornan explained to Tudum . “I think this time they are leaving that to all kinds of factors – of if and when and how that would happen to do more – and to see if people want more. But that’s also a timing thing. Everyone’s busy! I’m busy, Danielle’s busy. So we will see, but they’ve definitely left the option open, I think.”

As for the dance sequence at the end, the actor said that “there’s very few shows that could get away with an ending like that.” He went on, “I think they’re allowed [it] because of the unhinged, off-kilterness of the whole entire arc of the show — you grant them that strangeness of that dance at the end.”

The Tourist Season 2 is now streaming on Netflix.

Monica Mercuri

  • Editorial Standards
  • Reprints & Permissions

Advertisement

Supported by

Critic’s pick

‘Dune: Part Two’ Review: Bigger, Wormier and Way Far Out

Timothée Chalamet and Zendaya make an appealing pair in Denis Villeneuve’s follow-up film, and the actors fit together with tangible ease.

  • Share full article

In a sci-fi-looking scene set in the desert, Zendaya holds a gloved hand to Timothée Chalamet’s cheek.

By Manohla Dargis

Having gone big in “Dune,” his 2021 adaptation of Frank Herbert’s futuristic opus, the director Denis Villeneuve has gone bigger and more far out in the follow up. Set in the aftermath of the first movie, the sequel resumes the story boldly, delivering visions both phantasmagoric and familiar. Like Timothée Chalamet’s dashingly coifed hero — who steers monstrous sandworms over the desert like a charioteer — Villeneuve puts on a great show. The art of cinematic spectacle is alive and rocking in “Dune: Part Two,” and it’s a blast.

It’s a surprisingly nimble moonshot, even with all its gloom and doom and brutality. Big-screen enterprises, particularly those adapted from books with a huge, fiercely loyal readership, often have a ponderousness built in to every image. In some, you can feel the enormous effort it takes as filmmakers try to turn reams of pages into moving images that have commensurate life, artistry and pop on the screen. Adaptations can be especially deadly when moviemakers are too precious with the source material; they’re torpedoed by fealty.

“Dune” made it clear that Villeneuve isn’t that kind of textualist. As he did in the original , he has again taken plentiful liberties with Herbert’s behemoth (one hardcover edition runs 528 pages) to make “Part Two,” which he wrote with the returning Jon Spaihts. Characters, subplots and volumes of dialogue (interior and otherwise) have again been reduced or excised altogether. (I was sorry that the great character actor Stephen McKinley Henderson, who played an eerie adviser in the first movie, didn’t make the cut here.) The story — its trajectory, protagonist and concerns — remains recognizable yet also different.

6 Films Our Critics Are Talking About

book cover for Problemista

Problemista

This film from the writer and comedian Julio Torres is a social problem drama with the frippery of a Michel Gondry romance.

Read our full review.

book cover for Mea Culpa

R | Thriller

Tyler Perry is back with a willfully steamy, decidedly silly thriller.

book cover for Shayda

PG-13 | Drama

This stirring film from Noora Niasari follows an Iranian woman and her daughter living in a women’s shelter in Australia.

book cover for As We Speak

As We Speak

Not rated | Documentary

Lyrics that contain references to violence have been used as legal evidence, a practice this documentary condemns as prejudicial.

book cover for Code 8: Part II

Code 8: Part II

Not rated | Sci-fi

In this Netflix sequel, the acting cousins Robbie and Stephen Amell again play gruff men of action — physical and psychic.

book cover for Outlaw Posse

Outlaw Posse

R | Western

Two decades after his previous Black western, Mario Van Peebles is back in the saddle again. This time, his son, Mandela, is with him.

“Dune” turns on Paul Atreides (Chalamet), an aristocrat who becomes a guerrilla and crusader, and whose destiny weighs as heavily on him as any crown. In adapting “Dune,” Villeneuve effectively cleaved Herbert’s novel in half. (Herbert wrote six “Dune” books, a series that has morphed into a multimedia franchise since his death in 1986.) The first part makes introductions and sketches in Paul’s back story as the beloved only son of a duke, Leto (Oscar Isaac), and his concubine, Lady Jessica (Rebecca Ferguson). When it opens, the royals, on orders from the universe’s emperor, are preparing to vacate their home planet, a watery world called Caladan, to the parched planet of Arrakis, a.k.a. Dune.

The move to Arrakis goes catastrophically wrong; many members of House Atreides are murdered by their enemies, most notably the pallid, villainous House Harkonnen, and Paul’s father dies. Paul and the Lady Jessica escape into the desert where — after much side-eyeing and muttering along with one of those climactic mano-a-mano duels that turn fictional boys into men — they find uneasy allies in a group of Fremen, the planet’s Indigenous population. A tribal people who have adapted to Dune’s harsh conditions with clever survival tactics, like form-fitting suits that conserve bodily moisture, the Fremen are scattered across the planet under the emperor’s rule. Some fight to be free; many pray for a messiah.

“Part Two” opens with Paul and his mother hunkered down in the desert, hiding behind a sandy crest amid a company of Fremen warriors. Among these are Chani (Zendaya) and Stilgar (Javier Bardem), who personify the Fremen’s divergent ideas about liberation. Stilgar is a man of faith who, not long into the sequel, starts to believe that Paul is the Fremen messiah. This requires Bardem to keep repeating variations of the same true-believer line (basically, Paul is the one!), which he does with expressive, at times humorous animation. Chani, who in turn believes that a Fremen must lead them to freedom, initially views Paul with enough knitted-brow skepticism to give their inevitable romance a little frisson.

Chalamet and Zendaya make an appealing duo, and the two performers fit together with tangible ease as their characters grow close. Both actors are fun to look at, and every bit as watchable and glamorous as old-fashioned Hollywood stars (I kept wondering what product he uses to tame his curls), which is amusing but makes sense for their outsize roles. Chalamet and Zendaya tend to overwork their glowers and puppy eyes in their less chatty scenes (the desert quiet can make loose talk deadly), but together they humanize the story, giving it the necessary personal stakes and a warmth that helps balance the chilling violence.

Herbert’s novel is a great juicy slab of a book, a meticulously detailed and enjoyably engrossing fantasy about belief and doubt, survival and struggle, idealism and nihilism. Herbert was a worldbuilder par excellence and he drew from an astonishment of references to create a fantastical realm. The results are unusual enough to inspire curiosity and, at times, a sense of wonder, even as the story retains a connection to the reality outside its pages. It’s a dense palimpsest, with influences ranging from Greek mythology to Shakespearean tragedy and Jungian psychology. Time and again, especially in its representations of a hostile environment and religious fanaticism, it can also seem like a warning to the present day.

Villeneuve’s approach in adapting the novel is, effectively, one of judicious distillation. Like the first movie, “Part Two” advances the plot fluently (it’s easy to follow), through both dialogue and action sequences that are true to the spirit of the book, its overarching narrative arc, vibe and weirdness. The dialogue sounds natural, even when characters are throwing around names like the Bene Gesserit, the misterioso religious sorority that assumes greater prominence in “Part Two.” As crucially, the action sequences don’t stop the movie dead or make the rest of it seem irrelevant. Mainstream adventure films often toggle between expository and action sequences with wearyingly predictability; here, everything flows.

“Dune” is finally a war story, like many contemporary screen spectacles, and it isn’t long into “Part Two” before bodies begin to fall. In the swiftly paced opener, Harkonnen soldiers, led by a bald shouter called the Beast Rabban (Dave Bautista), descend to the desert floor from their flying machines. Wearing bulky uniforms that make them seem as lumbering as old-school deep-sea divers, the soldiers seem too ungainly to take on the Fremen, agile fighters with parkour moves and billy goat balance. Villeneuve is good at surprises, though, and he knows how to marshal contrasts — light and dark, immensity and puniness — to create interest and tension. Soon enough the Harkonnen are rapidly jetpacking through the air, and it’s on.

“Part Two” moves with comparable dexterity despite all the weightiness, the byzantine complexities and knotty conspiracies shared among different factions. The sequel brings back a number of familiar faces, including Josh Brolin as the Atreides loyalist Gurney Halleck and Stellan Skarsgard as the monstrous Baron. The leader of House Harkonnen, the Baron spends much of his time killing his minions or marinating his often-bared, massively spherical body in a tub of what looks like crude oil. Rabban, his inept nephew, is soon overshadowed by the most striking addition to the “Dune” detachment, another nephew, Feyd-Rautha, a malignancy played by an unrecognizable, utterly creepy Austin Butler.

As spectrally white and seemingly hairless as his uncle, Feyd-Rautha looks like a bulked-up worm. He’s a warrior and every bit as wicked as his uncle. Yet he isn’t the usual sexed-up antihero despite the curves of Butler’s muscles and his sensual pout, and the character remains a disturbing narrative question mark. Feyd-Rautha becomes Paul’s challenger, but he also serves as a counterpart to the huge sandworms that travel beneath Arrakis’s surface and produce the planet’s invaluable natural resource, known as melange or spice. As crucial as petroleum, as addictive as smack, spice sparkles like pixie dust, alters minds, turns eyes vivid blue but mostly it keeps this universe running — and violently churning.

Our world is never far from that of “Dune,” with its cruelty, greed, fearmongering, sectarian divisions, battle cries and power plays. (The sandworms by contrast are wonderfully otherworldly; they’re fantastic creatures with long meaty bodies and bristly, baleenlike maws, which make for a fearsome if playful confusion of mammalian, slightly gendered images.) Part of the story’s potency is its familiarity. Like Herbert, Villeneuve has tapped assorted influences to create the world of “Dune,” drawing from myths, westerns, war films and so on. There’s even a nod to David Lynch , who directed the 1984 “Dune,” though the obvious touchstone is David Lean’s 1962 epic “Lawrence of Arabia,” with its own blue-eyed hero.

Lean’s movie is based on the life of T.E. Lawrence, who played a role in the Arab Revolt of 1916, in which British-backed Arab forces expelled the Ottomans from parts of the Middle East. That film, with its white savior and the anguished colonialist history it evokes, hangs over “Dune” provocatively. For all the challenges that Villeneuve has faced in adapting the novel to the screen none have seemed more insurmountable than remaining faithful to the complexity of Herbert’s Paul Atreides, whose power is less than triumphant. Disturbed by his mother’s ambitions and haunted by apocalyptic visions, Paul remains as unsure of his destiny as you are. Don’t expect many answers by the end of “Part Two” — as I said, Herbert wrote five additional books — though, like me, you may want to put your money on Zendaya.

Dune: Part Two Rated PG-13 for warfare and worms. Running time: 2 hours 46 minutes. In theaters.

Manohla Dargis is the chief film critic of The Times, which she joined in 2004. She has an M.A. in cinema studies from New York University, and her work has been anthologized in several books. More about Manohla Dargis

IMAGES

  1. Partial Assignment of Life Insurance Policy as Collateral

    partial assignment of patent

  2. Assignment Of Judgment Form

    partial assignment of patent

  3. Delaware Partial Assignment of Special Declarant’s Rights

    partial assignment of patent

  4. Patent Assignment Template

    partial assignment of patent

  5. Partial Assignment of Production Payment Interests, Reversionary

    partial assignment of patent

  6. Patent Assignment Agreement Sample

    partial assignment of patent

VIDEO

  1. 3 Things you don’t know about a Provisional Patent Application

  2. What is a Provisional Patent?

  3. Partial Derivative Assignment Delon and Zulfitrah

  4. Partial differential equations|video assignment 2|#svce

  5. 05 Patent Classification

  6. #partial Diferencal equation # video assignment #mathematic 2 # galpin # svce

COMMENTS

  1. 301-Ownership/Assignability of Patents and Applications

    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. 35 U.S.C. 261 . II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ...

  2. PDF Chapter 300 Ownership and Assignment

    Assignments and other documents are contracts that are governed by the relevant state or jurisdictional law. In 37 CFR 3.1 , assignment of patent rights is defined as "a transfer by a party of all or part of its right, title and interest in a patent [or] patent application...." An assignment of a patent, or patent application, is

  3. Managing a patent

    Assignments. The transfer or sale of a patent or application is executed through an assignment. Patent law also provides for assignment of part interests (half, fourth, etc.) in a patent. Upon assignment, the assignee becomes the owner of the patent and has the same rights as the original owner.

  4. Patent Assignment: How to Transfer Ownership of a Patent

    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 simpler terms, the assignee receives the original owner's interest and gains the exclusive rights to pursue patent protection (through filing ...

  5. Patent Ownership in the United States

    Patent Assignments. In patents, selling a patent (or a partial ownership in a patent) is called an assignment. Inventors of patents or any current owner can assign their interest in a patent or patent application to another party, such as a corporate owner or another person, at any time during the life of the patent. With an assignment ...

  6. MPEP 301: Ownership/Assignability of Patents and Applications ...

    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. 35 U.S.C. 261. II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ownership ...

  7. Intellectual Property: Assignments and Transfers

    A Practice Note discussing the legal requirements for the assignment or transfer of intellectual property (IP), including patents, trademarks, and copyrights, and key considerations for an IP transferee or assignee. This Note discusses transfers by operation of law, partial assignments, nunc pro tunc assignments, priority between conflicting transfers, accrued claims for past infringement ...

  8. Assignment of Patent Rights

    Dividing up patent rights can instead be effected by providing partial licenses to the patent. When assigning the patent or patent application it is important to cover all aspects of the transfer in a written instrument, known as a Deed of Assignment. The Deed of Assignment should also ensure that the patent or patent application is transferred ...

  9. Patent Assignment (Partial) (Inventor to Entity)

    This template is a Patent Assignment used to transfer partial ownership of an invention from the inventors to an entity. An assignment transferring ownership of a patent application is typically used in an employment situation where one or more employee inventors transfer rights in the invention to their employer. This template contains practical guidance, drafting notes, and alternate clauses.

  10. What is a Patent Assignment? (Detailed Answer)

    A patent assignment is the transfer of ownership of a patent from one party to another. The party transferring its right is known as the assignor and the party receiving the patent rights is known as the assignee. To assign a patent, both parties must execute a written assignment agreement to reflect the transfer of ownership.

  11. Patent assignment—How-to guide

    Enter the patent registration number, and the name of all of the registered inventors of the patent (s) (even if they are not parties to this Assignment). If the assignment relates to a patent application, identify the application number (consisting of a series code and a serial number, e.g., 07/123,456).

  12. 37 CFR Part 3 -- Assignment, Recording and Rights of Assignee

    Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed. Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application ...

  13. Patent Assignment

    A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue ...

  14. Sample Patent Assignments

    6210 Stoneridge Mall Road, Ste 240. Pleasanton, CA 94588. ASSIGNMENT OF RIGHTS OF PATENT: An assignment is intended for use for a patent that has been issued by the U.S. Patent and Trademark Office (USPTO). ASSIGNMENT OF RIGHTS TO APPLICATION: This type of assignment is for the rights to an invention for which a patent application has been ...

  15. A Potential and Unintended Consequence of 'Routine' Patent Assignments

    Post-Assignment Changes in Patent Law. When a significant shift in patent law occurs following an assignment, either by the passage of a new statute or through a change in the interpretation of the patent laws, the doctrine also might not apply, at least with respect to the part of the law that changed.

  16. Assignment of patent rights

    The assignment of patents plays an important role in facilitating the maintenance, defence and enforcement of owners' rights. While patent licensing involves providing limited permission to use a ...

  17. Assigning patent rights to others

    An assignment of a patent or patent application is void unless it is in writing. Post 1 January 2005, the need for assignments to be signed by both assignees and assignors was removed for assignments of UK patents. This change was effected via the Regulatory Reform (Patents) Order 2004. Nevertheless, it is still common for both parties and not ...

  18. 302-Recording of Assignment Documents

    37 CFR 3.11 Documents which will be recorded. (a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31 , will be recorded in the Office. Other documents, accompanied by completed cover ...

  19. When Partial IP Assignments Become Murky

    The upshot of the foregoing is that any such contemplated partial assignment of patent rights needs to be carefully scrutinized in light of the provisions of the relevant jurisdiction. The wide differences in treatment argue in favor of exercising particular care whenever such a partial assignment is contemplated in multiple jurisdictions.

  20. Patent Application Assignment (Partial) (Inventor to Entity)

    This template is a Patent Application Assignment used to transfer partial ownership of an invention from the inventors to an entity. An assignment transferring ownership of a patent application is typically used in an employment situation where one or more employee inventors transfer rights in the invention to their employer. This template includes practical guidance, drafting notes, and ...

  21. TMEP 501.06: Partial Assignments, Oct. 2017 Ed. (BitLaw)

    501.06 Partial Assignments. A trademark may be owned by two or more persons (see TMEP §803.03 (d) ), and a co-owner may assign his or her interest in a mark. Also, a party who is the sole owner of a mark may transfer a portion (e.g., 50%) of his or her interest in the mark to another party. A trademark owner may also assign a separate portion ...

  22. Patent Assignment in India

    Mortgages: Mortgages are assignments where the owner provides partial or complete right to an assignee in exchange for a certain amount of money. Once the amount is repaid, the owner gains back all rights to the mortgaged property. ... Amendments in the patent assignments can majorly be processed in the equitable assignment deed. The deed ...

  23. Patents Assignments: Change & search ownership

    Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.

  24. Revolutionizing Innovations: New Hampshire Leads with Fresh Federal

    The recent patent assignments not only reflect the ingenuity of New Hampshire's inventors and companies but also position the state as a burgeoning hub for innovation across multiple sectors. From enhancing public safety and revolutionizing construction to improving healthcare and lifestyle products, these patents are indicative of a broader ...

  25. 'The Tourist' Season 2 Twist Ending Explained

    Danielle Macdonald as Helen Chambers in "The Tourist" Season 2. Getty Images. No, Helen does not die in The Tourist Season 2.In Episode 5, viewers see Helen get shot in the stomach by Lena (the ...

  26. 'Dune: Part Two' Review: Bigger, Wormier and Way Far Out

    The first part makes introductions and sketches in Paul's back story as the beloved only son of a duke, Leto (Oscar Isaac), and his concubine, Lady Jessica (Rebecca Ferguson). When it opens, the ...