Assignments

A patent or patent application is considered "intellectual property." Rules pertaining to intellectual property often parallel rules pertaining to personal property and real property (land). One of the similarities is that intellectual property can be "transferred." Also, similar to real property transfer rules, all transfers should be "recorded" with an appropriate authority to provide constructive notice (as opposed to actual notice) of ownership.

• Original Ownership: When it is created, a patent application or a patent is "owned" by the inventor(s). If there is more than one inventor, their rights are held as "tenants in common." In other words, in the absence of any agreement to the contrary, each of the joint owners of a patent application or patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners. Simply put, all the inventors own everything - it is not divided so that each inventor owns a specific share. This can often cause problems.
• Transfer of Ownership: Inventors may sell, will, transfer, or give all or any percentage of rights to their intellectual property to anyone. This is called a patent assignment. The assignment can grant and convey exclusive rights or nonexclusive rights. The assignment can also place other limitations as to the use of rights (e.g. geographical). Patents can also be licensed exclusively or non-exclusively.
• Legal Documents: The transfer of intellectual property rights should be accomplished using a formal written legal document. Ideally, the document is acknowledged by a person authorized to administer oaths - i.e., a notary public. Using a real property analogy, would you ever sell your home without a written legal document?
• Recording Legal Documents: Transfers and changes in ownership should be recorded in the Assignments Recordation Branch of the U.S. Patent and Trademark Office. It is important to record these legal documents because "an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage." (35 U.S.C. Sec. 261.) Using a real property analogy, would you ever not record a legal document relating to the sale of your home in the county official records?
• Change of Address: Changes of address should also be recorded at the Assignments Recordation Branch of the U.S. Patent and Trademark Office.

If ownership is changed, the Power of Attorney should be reviewed to verify that representation is still proper and, if necessary, a new Power of Attorney should be filed.