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Intellectual Property Transactions in France: Overview

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WIPO - PCT Applicant's Guide FR - France National Institute of Industrial Property (INPI) (France)

Error information warning confirmation, useful information, international phase, annex b - information on contracting states or intergovernmental organization, annex c - receiving office, national phase.

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Patents in France

French patents are granted by the French Patent office after formal examination and establishment of a search report.

Nouvelle procédure d’opposition devant l’INPI : 1re décision publiée

Trainee’s invention, 1st april 2020: post grant opposition introduced in france.

The French patent law defines two different types of protection for technical inventions, namely the patent of invention and the utility certificate.

The patent is granted for a duration of 20 years with a search report.

The utility certificate is granted for a duration of 6 years without search report.

THE GRANTING PROCEDURE

A patent application shall be filed using the prescribed forms and conditions

a) Patent application

The patent application must contain a description of the invention and claims defining the scope of the protection. Drawings may be added for completing the description. The description and claims of the application as filed may be filed in any language. A French translation must be filed within three months.

The claims should normally be drafted in two parts with a preamble defining the generic object of the invention and comprising all technical features which, taken into combination, are already in the prior art, and a characterizing part stating the technical features which form the invention together with the features of the preamble.

Multiple dependent subclaims related to any preceding claim may be provided.

b) Authorization for disclosing and working the invention

For reasons of national defense, all applications filed in France for obtaining a French patent or certificate of utility or a European patent are submitted to an authorization issued by the French Patent Office before any disclosure or working of the invention. Except in cases where the invention is to be kept secret for national defense purposes, such an authorization is automatically issued within a maximum time of 5 months after filing of the application at the French Patent Office.

c) Formal examination

The French Patent Office examines all applications for patents and certificates of utility and may reject the application for the following formal reasons:

  • when the application contains more than one invention or several inventions which do not form a group of inventions sufficiently related together, thus leading to an objection for lack of unity;
  • when the claims do not define an invention, for example if the claims are only directed to an intellectual or mathematical method as such, a computer program as such or a purely intellectual activity as such;
  • when the invention relates to a method of therapeutical treatment or diagnostic for human beings or animals, such kind of inventions not being capable of industrial applicability;
  • when the claims are not fully supported by the description;
  • when contradictions arise between the description and the claims or between parts of the description.

In any case, the applicant will be given a possibility of filing arguments and amending the description and claims before final rejection of the application.

d) Disclosure of prior art

The French Patent Office requests the communication of any pertinent prior art cited abroad for all applications filed in France claiming the priority of a first application filed outside of France. Failure to answer to this request leads to rejection of the application.

d) Search report procedure

In order to obtain a patent of invention with a duration of 20 years, the applicant has to request establishment of a search report and to pay the corresponding fee at the filing of the application.

The French Patent Office issues a draft of search report on the basis of the pertinent references cited by the applicant. If no pertinent references are cited on this draft of search report, the applicant is not compelled to file any answer. He may however take this last opportunity for amending the claims of his application.

On the contrary, if pertinent references are cited on the draft of search report, the applicant is compelled to file an answer containing a technical argumentation and/or an amendment of the initially filed claims. Failing such an answer from the applicant, the French Patent Office will issue a notification giving a last possibility to the applicant for answering. Without any answer, the application is rejected.

The search report is issued together with a written opinion from the Examiner relating to the validity of the claims. Although the French Office has no possibility to reject an application for lack of inventive activity, the Applicant may thus have a first opinion as concerns novelty and inventive step of the invention.

The application may also be rejected if the examiner considers that the claims as maintained or as amended by the applicant define an invention clearly lacking novelty. A further opportunity is then given to the applicant to further amend the claims of his application.

e) Grounds for rejection by the Examiner

A patent application may be rejected on the basis of the following grounds:

  • the applicant fails to divide his application notwithstanding a lack of unity objection from the examiner;
  • a divisional application contains new matter;
  • the invention is excluded from patentability because it is against the public order, against the morality or because it is directed to a part of the human body as such or a gene structure as such or to plant or animal varieties or essentially biological processes for the production of plants or animals (microbiological processes and products thereof are allowable);
  • there is clearly no invention claimed as such. It is the case of discoveries, mathematical methods, aesthetic shapes, methods in the course of intellectual or business activities, computer program or presentations of information;
  • the invention is unclear so that the novelty search cannot be made;
  • no amendment in the claims has been made after an objection of lack of novelty;
  • the claims are not supported by the description;
  • no answer has been filed after receipt of a draft search report citing relevant references.

f) Grant of the patent

After the applicant has answered to the draft of search report and also possibly to observations filed by third parties after publication of the application, the French Patent Office issues a notification requesting the applicant to pay an issue fee.

Upon payment of such a fee, the patent is finally granted together with the search report prepared by the French Patent Office on the basis of the draft of search report and the answer of the applicant.

DIVISIONAL APPLICATIONS

A patent can be granted for one invention only. In reply to a notification from the French Office or on its own volition the applicant may divide his application.

Unity of invention is recognized in the following situations:

  • in the case of a product invention, when the application contains claims directed to the product, a manufacturing process of the product and a use of the product or when the application contains claims directed to the product, a manufacturing process of the product and a machine used in the process ;
  • in the case of a process invention when the application contains claims directed to the process and a machine used during the process.

If the French Patent Office considers during formal examination that there is no unity of invention,the application may be rejected if the applicant does not limit the claims as mentioned above.

The applicant is given a prescribed time limit to file corresponding divisional applications keeping the filing date of the original application.

Independently from such an objection of the Patent Office, the applicant has always the possibility of deciding for himself to divide his application and file corresponding divisional applications as long as payment of the granting fee has not been made.

In filing divisional applications, it is possible to maintain the original description in all divisional applications.

THE RIGHT TO THE PATENT

The right to the patent belongs in France to the true inventor. However, the applicant is deemed without contrary evidence to be the true inventor.

a) Co-ownership

The French patent law defines rules of co-ownership when an application is filed by several persons. These rules are not compulsory and a different organization may be prefered by the parties who can execute among themselves a co-ownership agreement with different provisions.

The provisions of the law in the absence of such an agreement are the following:

  • each co-owner may use the invention without the authorization of the other co-owners. However, he must indemnify the other co-owners who are not using the invention;
  • each co-owner may file an infringement action alone before the Courts as long as he has informed the other co-owners beforehand;
  • each co-owner may conclude a non-exclusive licence as long as he provides for a suitable indemnification of the other co-owners. However, the draft of the agreement must first be communicated to the other co-owners together with an offer to those co-owners of assignment of the co-ownership portion;
  • no exclusive licence may be concluded without any formal authorization of all the co-owners;
  • the co-owners have a prior assignment right preference in case of partial assignment.

b) Employee’s invention

The French patent law contains provisions for employee’s inventions.

Inventions made by an employee performing an inventive task which effectively corresponds to his job belong to the employer. However, a specific reward corresponding to the real value of the invention must be paid to the employee.

All other inventions belong in principle to the employee. However, inventions made with the help of the employer’s facilities or which fall within the business area of the employer may be claimed by the employer. The employer may claim a part of the right to the patent covering the invention such as a co-ownership or a licence. The effective price corresponding to the value of the invention must be paid to the employee.

Disputes between employers and employee relating to those matters can be heard before a special Committee organized within the French Patent Office or before the Courts.

c) Claim for the propriety of an invention

The real proprietor of an invention, i.e. the real inventor or his successor in title, may claim the propriety of a patent which he feels should not have been filed. The claim is brought before the Courts within 3 years after grant of the patent. If the patent application is still pending, the delivery procedure may be deferred.

MAINTAINING THE PROTECTION IN FORCE

In order to maintain a patent or a certificate of utility in force in France, annual fees are to be paid each year at the French Patent Office.

a) Maintenance

The annual fees must be paid before the end of the month corresponding to the filing date of the application.

A further 6 months period is allowed to pay the fee together with a supplemental fee.

b) Restoration procedure

When a French patent or a European patent validated in France or a French patent application or certificate of utility, has lapsed for example after failure to pay an annual fee, restoration can be requested before the French Patent Office on the basis of a detailed explanation and evidence of a legitimate excuse for non payment.

The request for restoration must be filed within two months from the date or removal of the cause of lapse but at the latest within one year from the lapsing date.

THE FRENCH CERTIFICATE OF UTILITY

The patentability requirements are the same in France in the case of a certificate of utility as compared to a patent.

A patent application may be converted in an application for certficate of utility, the contrary not being true.

A certificate of utility can be granted in France for any kind of invention including chemical producs, processes and methods.

The certificate of utility only differs from the French patent on the following points:

  • no search report is required for a certificate of utility;
  • the duration of the certificate of utility is only six years;
  • the claims of the application for a certificate of utility may be amended at any time before grant;
  • in the case of a litigation before the Court, the owner of the certificate of utility must produce to the Court a search report issued by the French Patent Office.

Décideurs – 14 February 2022

Casalonga - patent alert - 1st april 2020, casalonga - ip alert - patent protection strategy in france.

MATÉRIEL SANTÉ ENVIRONNEMENT v/ ST DIZIER ENVIRONNEMENT

GRUPO ANTOLIN FRANCE v/ FAURECIA INTÉRIEUR INDUSTRIE

MACO PHARMA c/ ASAHI KASEI MEDICAL CO LTD

FESQUET - FAF - FAFBOX v/ PLASTIP

ABRISUD v/ ABRIDEAL

ASTATO c/ VTI - ZANIEWSKI

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Patent Assignments

Patent rights transfer around the world - Patent Rights

What are Patent Assignments?

What is a patent assignment? In general, a Patent Assignment transfers ownership of the entire patent right, title, and interest owned by one party to a second party.

Patent Assignments are a type of contract between the Assignor (current holder) of Patent rights and the Assignee (new owner) of Patent rights. Recording an executed Assignment in the Patent Offices gives notice of the change in the Patent owner.

Recording ownership of a Patent is similar to recording a deed for real property — like your house. The recording of the deed to your house gives notice of your current ownership and specifies the location of that home in the State. Recording a Patent Assignment gives notice of ownership and the location of your intangible Patent rights.

National and Regional Patent Offices

The European Patent Office is a regional Patent Office and the Japanese and United States Patent Offices are national Patent Offices.

Each national or regional jurisdiction has specific formats and rules associated with recording the ownership of Patent rights. European, Japanese, and United States Patent Offices have required wording and procedures for recording an Assignment in the European, Japanese, or United States Patent Office.

  • For an English language Assignment of Patent Rights, the Japanese Patent Office will accept a Japanese/English bilingual Assignment to record.
  • The European Patent Office will accept an English, French, or German language Assignment. After the European Patent is granted, assignments of the Validations of the European Patent are required in most member states’ Patent Offices where the current owner asserts the European Patent’s rights.
  • The USPTO accepts English language Assignments. (Non-English Assignments must be translated/transliterated into English.)

Patent Applications

Assignments of Patent Applications can also be recorded in Patent Offices. Each jurisdiction will have different rules for recording ownership of Patent Applications. In the United States, when the US Patent Application issues as a US Patent, the ownership of the Patent Application applies to the US Patent until the ownership is assigned to another person/entity.

35 United States Code (U.S.C) 261 Ownership; assignment, reads: “Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor. Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States. A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent. An interest that constitutes 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.”

For Assignments of US Patents and US Patent Applications – because of 35 U.S.C. (U.S.C) 261, Business Patent Law, PLLC advises its clients:

  • In the United States to execute Assignments of Patents or Patent Applications before a notary public.
  • In a jurisdiction other than the United States, to execute the Assignments before the appropriate apostille.

Assignments can become complicated. If your company needs assistance with its Patent Assignments, please contact BPL .

Are you or your business located in the greater Cincinnati, Indianapolis, Lexington, or Louisville areas? Do you have a topic or question you would like us to address in the blog? Please send us an email!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, please contact Business Patent Law, PLLC .

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Patent Assignment Agreement

Québec Anglais Droit civil Non annoté

Contrat de cession de brevet Contrat de cession de brevet

H04800 - Québec Français Droit civil Non annoté

Grille d'analyse - Contrat de cession de... Grille d'analyse - Contrat de cession de brevet

H04801 - Québec Français Droit civil Non annoté

Patent Assignment Agreement Patent Assignment Agreement

H04800a - Québec Anglais Droit civil Non annoté

Persons who wish to assign a patent should record the terms of their agreement in detailed written contract, because the law provides only limited protection for this type of transaction.

A patent licence agreement and patent assignment agreement may appear to be similar. The main difference between the two agreements is under a license agreement, the patent holder remains the owner of the invention and only grants a right to use the patent. In practice, the distinction means that the assignee is entitled to sue a third party for patent infringement, whereas a licensee cannot.

We recommend using this template for the purpose of transfering all of the assignor's rights in the patent to an assignee.

When a party wishes to acquire all the rights to an invention, the patent holder can either grant an exclusive license to the interested party (see our licence to use template H04200 or manufacturing licence template H04300), or assign the patent to that person.

Because an exclusive license grants a personal right to the property in question, rather than a right of ownership, certain issues may be difficult to resolve and could prevent the parties from entering into their licence agreement.

0.00 INTERPRETATION 0.01 Definitions 0.01.01 Activities 0.01.02 Agreement 0.01.03 Breach 0.01.04 Change in Control 0.01.05 Confidential Information 0.01.06 Encumber or Encumbrance 0.01.07 Event of Default 0.01.08 Force Majeure 0.01.09 Fundamental Provisions 0.01.10 Improvements 0.01.11 Intellectual Property 0.01.12 Invention 0.01.13 Legal Representatives 0.01.14 PARTY 0.01.15 Patent 0.01.16 Person 0.01.17 Prime Rate 0.01.18 Principal Agreement 0.01.19 Products 0.01.20 Related Person 0.01.21 Subsidiary 0.01.22 Technology 0.01.23 Territory 0.02 Precedence 0.03 Jurisdiction 0.03.01 Governing Law 0.03.02 Non-compliance 0.04 Miscellaneous 0.04.01 Cumulative Rights 0.04.02 Time and Dates 0.04.03 Financial References 0.04.04 References within Agreement 0.04.05 Gender and Number 0.04.06 Headings 0.04.07 Presumptions 0.04.08 Knowledge 0.04.09 Approval 0.04.10 GAAP 1.00 PURPOSE 1.01 Assignment 1.02 Conditions 1.02.01 Required by ASSIGNOR 1.02.02 Required by ASSIGNEE 1.02.03 Choice 2.00 CONSIDERATION 2.01 Base Price 2.02 Adjustment 2.03 License 3.00 TERMS OF PAYMENT 3.01 Initial Instalment 3.02 Balance 3.03 Adjustment 3.04 Interest 3.05 Promissory Note 3.06 Advance Payment 3.07 Loss of Term 3.08 Deposit in Trust 3.08.01 Contest 3.08.02 Payment to ASSIGNOR 3.08.03 Remittance to ASSIGNEE 3.08.04 Adjustment 4.00 SECURITY 4.01 In favour of ASSIGNOR 4.02 In favour of ASSIGNEE 4.03 Movable Hypothec without Delivery 5.00 MUTUAL REPRESENTATIONS AND WARRANTIES 5.01 Status 5.02 Authority 5.03 Binding Agreement 5.04 Canadian Resident 5.05 Commission 5.06 Insurance 5.07 Nominee 5.08 Fundamental Provisions 5.09 Disclosure 6.00 REPRESENTATIONS AND WARRANTIES OF THE ASSIGNOR 6.01 Status 6.02 Authority 6.03 Binding Agreement 6.04 Insurance 6.05 Nominee 6.06 Fundamental Provisions 6.07 Disclosure 6.08 Patentability of the Invention 6.09 Title and Ownership 6.10 Duration of the Patent 6.11 Prescribed Fees 6.12 Option 6.13 Grant of License 6.14 Other Undertakings having an Effect on the Patent 6.15 Proceedings 6.16 Compliance with Notice from the Commissioner 6.17 Abuse of Right 6.18 Bankruptcy 6.19 Warranties 6.19.01 Material Existence 6.19.02 Exclusions 7.00 REPRESENTATIONS AND WARRANTIES OF THE ASSIGNEE 7.01 Status 7.02 Authority 7.03 Binding Agreement 7.04 Insurance 7.05 Nominee 7.06 Fundamental Provisions 7.07 Disclosure 8.00 MUTUAL DUTIES AND OBLIGATIONS 8.01 Confidential Information 8.01.01 Undertaking 8.01.02 End of Agreement 8.02 Insurance 8.02.01 Insured Risks 8.02.02 Amount of Coverage 8.02.03 Issuer 8.02.04 Co-insured 8.02.05 No Limitation 8.03 Indemnification 8.03.01 “Loss” 8.03.02 Scope 8.03.03 Procedure 8.03.04 Deductible 8.03.05 Limitation on Claims 8.04 Disclosure of Agreement 9.00 DUTIES AND OBLIGATIONS OF THE ASSIGNOR 9.01 Delivery 9.02 Technical Support 9.03 Non-use 9.04 Upgrade 9.04.01 Option 9.04.02 New Upgrade 9.04.03 Assignment to a Third Party 9.05 Licenses 9.06 Maintenance of the Patent 9.07 Proceedings 10.00 DUTIES AND OBLIGATIONS OF THE ASSIGNEE 10.01 Protection 10.02 Proceedings 10.03 No Contest 10.04 Acknowledgement 10.05 Licenses 10.06 Inspection 11.00 SPECIAL PROVISIONS 11.01 Assignment 11.01.01 Prohibition 11.01.02 Effect of Breach 11.01.03 Exception 11.02 Force Majeure 11.02.01 No Default 11.02.02 Duty 11.02.03 Rights of Other PARTY 11.03 Relationship 11.03.01 Independent Contractors 11.03.02 No Control over Performance 11.03.03 No Authority to Bind 11.04 Further Assurances 11.05 Other Remedies 11.05.01 Choices 11.05.02 No Limitations 11.06 Prescription 12.00 GENERAL PROVISIONS 12.01 Notice 12.02 Dispute Resolution 12.02.01 Good Faith Negotiations 12.02.02 Mediation 12.02.03 Arbitration 12.03 Election 12.04 Counterparts 12.05 Amendment 12.06 Waiver of Rights 12.07 Electronic Transmission 12.08 Language 13.00 TERMINATION 13.01 Mutual Consent 13.02 Resolution 13.03 Resiliation 14.00 EFFECTIVE DATE 14.01 Retroactivity 14.02 Execution 14.03 Deferral 15.00 DURATION 15.01 Instantaneous 15.02 Survival 16.00 SCOPE SCHEDULE A – EXCERPT FROM A RESOLUTION OF THE ASSIGNOR SCHEDULE B – EXCERPT FROM A RESOLUTION OF THE ASSIGNEE SCHEDULE 0.01.12 - INVENTION SCHEDULE 0.01.15 – PATENT SCHEDULE 0.01.18 – PRINCIPAL AGREEMENT SCHEDULE 3.05 – PROMISSORY NOTE SCHEDULE 4.03 – MOVABLE HYPOTHEC WITHOUT DELIVERY

Contrat de cession de brevet

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IP Law Bulletin

In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

In Europe,  an assignment of a patent application must be in writing and "shall require the signature of the parties to the contract." (Emphasis added.) Thus, according to European law, which was highlighted in a Board of Appeals of the European Patent Office (EPO) on November 14, 2006 , both the assignor and the assignee must sign the assignment document. While contract law in the U.S. and in a number of other countries consider a contract signed by the conveying party to be valid for this type of one-way conveyance, this is not true everywhere in Europe. In many parts of Europe, contract law requires that both parties sign for all conveyances. Thus, an assignment signed only by the inventor may not be effective in countries such as Great Britain and France.

Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it . This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. If, for example, a PCT application claims priority to an earlier-filed U.S. application, the claim must be made by the identical legal person who filed the earlier priority application or a successor in title. This identity or relationship must be valid at the time the PCT application is filed. Where a U.S. priority document is filed in the name of the inventors and the PCT application is filed in the name of the owner, there must be an assignment from the inventors to the owner prior to the filing of the PCT application. This can be particularly problematic when a provisional application is used as a priority document. The provisional application never becomes a patent and does not need to be assigned. Thus, assignments are often only executed after a non-provisional application is filed. While problems with valid claims to priority should be eased under the America Invents Act (AIA) because U.S. applications can now be filed in the name of the owner instead of the inventor , care should be taken to ascertain a proper right to claim priority particularly if there is any difference in the identity of the applicant.

As a practice tip, practitioners should make sure all assignments are signed and dated before the PCT filing date and are signed by both the assignee and assignor. If this cannot be done, or if the right to claim priority is at all uncertain, practitioners should file the PCT application in the name of the "person" who filed the priority application and provide any correction later. Practitioners should also make sure that the assignment specifies the priority application(s) with particularity, includes an assignment of the right to claim priority, and make sure each signature is either witnessed or notarized. These measures should be taken to prevent complications in various jurisdictions, such as some countries in Europe.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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Navigating the USPTO Patent Assignment Search: A Comprehensive Guide

By Babak Akhlaghi on March 28, 2024.

The United States Patent and Trademark Office (USPTO) is a pivotal institution in the realm of intellectual property, playing a crucial role in protecting the innovations that fuel progress. Among its varied services, the USPTO patent assignment search stands out as an essential resource for individuals and organizations navigating the intricacies of patent ownership and assignments. This guide delves deep into the functionality and significance of the USPTO’s patent assignment search tool, shedding light on its utility and operation for all stakeholders involved in the patenting process.

Understanding Patent Assignments

To fully appreciate the value of the USPTO assignment search, one must first understand what a patent assignment entails. Essentially, a patent assignment is the transfer of an owner’s rights, title, and interest in a patent or patent application to another entity or individual. This process can occur through the sale of the patent, a transfer of ownership during a business transaction, or through inheritance. The completion of an assignment confers upon the new owner the exclusive rights to the patent, including the authority to prevent others from exploiting the patented invention.

The Role of the USPTO Patent Assignment Search

Central to the USPTO’s offerings is the USPTO assignment database, a comprehensive repository that records all patent assignment information from August 1980 to the current day. This database becomes indispensable for verifying the present ownership of a patent or patent application whenever the USPTO processes pertinent assignment details.

For inventors, legal professionals, and corporations alike, the USPTO assignment search is vital for various reasons. It facilitates due diligence efforts prior to the acquisition or licensing of patents, aids in the resolution of patent right disputes, and ensures adherence to assignment recording protocols.

Utilizing the USPTO Patent Assignment Search

Thanks to the user-friendly interface of the USPTO assignment search tool , users can effortlessly access detailed records of patent assignments. This tool, part of the broader USPTO Electronic Patent Assignment System (EPAS), allows searches by multiple criteria such as patent number, assignor and assignee names, publication numbers, and reel/frame numbers. Results from this assignee search provide comprehensive details about each assignment, including participant names, assigned patents or applications, and the date of assignment.

The USPTO patent assignment search tool is far more than a mere database; it serves as a critical access point to the legal and commercial dimensions of patenting. By facilitating access to exhaustive records of US patent assignments, the USPTO empowers stakeholders across the innovation landscape to make well-informed decisions. This, in turn, helps in averting disputes and promoting the seamless transfer of technology. Whether you are conducting a US patent assignment search, exploring the USPTO assignment database, or utilizing the USPTO trademark assignment search function, the USPTO’s resources are invaluable for anyone involved in the intricate world of patents and trademarks.

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The basics of patent assignments

What is a patent assignment, what are the requirements to make it valid, and why would a business enter into a patent assignment agreement? Read on to find answers to these questions and more.

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by   Cindy DeRuyter, Esq.

Cindy DeRuyter, Esq., has been writing for LegalZoom since 2018. She earned a Juris Doctor from Mitchell Hamline Scho...

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Updated on: December 4, 2023 · 2min read

Defining Patent Assignment

Requirements to assign a patent, searching for patent assignments.

Assigning patents can be a great way for companies to generate revenue and reduce risks associated with intellectual property ownership. If you are considering entering into a patent assignment agreement, understand that it is irrevocable. Because of that, evaluate proposed terms and provisions carefully before moving forward.

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Here's a high-level overview of how patent assignments work: when a patent's owner or applicant assigns it to another individual or company, the assignor agrees to relinquish their rights to enforce or benefit from it in the future.

You can assign rights for applications still pending with the United States Patent and Trademark Office (USPTO). When the USPTO approves the application, the assignee benefits from and may use and enforce the patent, not the assignor. Companies also assign rights for issued patents, which relieves the assignor of the burden of enforcing their intellectual property and provides a source of revenue.

Patent assignments can be lucrative for both parties. While assignors make money right away, assignees can create revenue streams by earning money from royalty payments. After an assignment is complete, the assignee has exclusive rights to such income.

A patent assignment agreement documents the transfer and arrangement between the parties. If you are considering entering into one, know that you need it to be written—a verbal agreement alone is insufficient.

Don't underestimate the importance of this, either. Without a valid agreement on file with the USPTO, an intended assignor remains legally responsible for the patent and an intended assignee gains none of the rights or benefits.

Here are the requirements for a valid written assignment:

  • Confirm that the assignor has the full, legal right to make the assignment and that the assignee can legally assume the rights and obligations.
  • Clearly identify both the assignor and assignee using legal names. If more than one company owns the patent, identify all owners.
  • Identify the underlying patent by title and number and include a complete and accurate description of it.
  • Describe the terms of the agreement, including financial arrangements.
  • All parties must sign the agreement, with limited exceptions in situations where the assignor cannot be reached but where enough evidence exists that documents their intentions and rights.
  • File the patent assignment with the USPTO within three months after the agreement is signed, paying the then-current fee.

Though the agreement is a legal document, it does not need to be notarized. However, obtaining notarization for the signatures provides added protection, limiting the risk of a party later claiming a signature was not valid.

The USPTO maintains a patent assignment database that includes all the assignments recorded since August 1980. Using the database, you can search with the assignor's or assignee's name, the patent number, application number, publication number, or other identifying information.

Properly assigning patents protects both assignors and assignees. If you want to assign a patent, downloading a patent assignment form can help. Alternatively, you can consult an intellectual property attorney .

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▾ dictionary english-french, assignment noun ( plural: assignments ) —, mission f ( plural: missions f ), attribution f, assign ( sb./sth. ) verb ( assigned , assigned ) —, attribuer v, affecter (qqn.) v, assigner qqch./qqn. v, nommer qqn. v, allouer qqch. v, mandater qqch./qqn. v, assign sb./sth. to sb./sth. verb —, assigner qqn./qqch. à qqn./qqch. v, assign sth. to sb. verb —, céder qqch. à qqn. v, assignment agreement n —, international assignment n —, stretch assignment n —, temporary assignment n —, assignment of receivables n —, random assignment n —, special assignment n —, new assignment n —, field assignment n —, group assignment n —, pre-assignment n —, current assignment n —, translation assignment n —, role assignment n —, assignment of personnel n —, assignment of tasks n —, initial assignment n —, priority assignment n —, proposed assignment n —, professional assignment n —, address assignment n —, internal assignment n —, direct assignment n —, product assignment n —, frequency assignment n —, rights assignment n —, core assignment n —, follow-on assignment n —, color assignment ae n —, channel assignment n —, document assignment n —, representation assignment n —, re-assignment n —, operational assignment n —, classic assignment n —, ▸ wikipedia, ▾ external sources (not reviewed).

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Registration of assignments and correction of assignment-related information.

From: Canadian Intellectual Property Office

This practice notice is intended to provide guidance on current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/right holder to decide how to proceed with respect to a particular application or other matter.

Registration

Assignments are often complex and diverse, frequently addressing matters reaching beyond IP rights. The complexity of these documents may necessitate a significant effort from the Patent Office in order to ensure that the documented changes in title are accurately reflected in Office records.

Therefore, in order to assist the Office in its effort to simplify and expedite the processing of assignments while maintaining a high quality standard, the Office has developed new forms for requesting the registration of assignments and strongly recommends their use.

The forms will be part of the record and will help ensure that all the required information has been submitted to the Office. The Office will use the content of the forms to assist with the registration of the assignment.

Please note that the assignments submitted will continue to be made available to the public. Parts of these documents may display personal information that is not relevant to the assignment being registered and the Office will accept that requesters omit or obscure any such information.

In the case where the forms are not used, the Office urges any requester to submit clear instructions. More specifically, in addition to the prescribed fee a request should include the following information, ideally on a cover sheet:

  • the name of the assignor(s);
  • the name and complete address of the assignee(s);
  • the application or patent number against which the assignment is to be registered;
  • specific information identifying which rights are being assigned and whether the interest in a right is being transferred in whole or in part.

A copy of the document effecting the transfer and either an affidavit or another proof satisfactory to the Commissioner that the assignment has been signed and executed must be submitted as per sections 49 and 50 of the Patent Act . The following proofs are all considered to be satisfactory:

  • with respect to a patent, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by all parties;
  • with respect to a patent application, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
  • a similar statement of a witness;
  • the signature of a witness or the presence of a corporate seal on the assignment document;
  • a document showing that the assignment was registered in a patent office of another country.

Occasionally, an error is present in an assignment (in the document effecting the change in ownership) and/or an error is made in the entry of information in the Patent Office's records.

It is important to note that despite the fact that, as discussed below, many errors can be corrected; all documents that are registered by the Office will remain on record subject to a court order to the contrary.

Error introduced by the Office

Where the registered document provides the correct information but an error is introduced in the process of extracting the information from the document and reflecting it in Office records, the Office will correct the error upon receipt of a request from any person providing details about the error and referring to the registered document containing the accurate information. No fee will be required for the correction.

Error in an assignment document

In accordance with sections 49 and 50 of the Patent Act , the Office will proceed with the registration of an assignment provided that the request for registration complies with all procedural requirements. The Office takes the position, however, that an assignment may be registered without necessarily being recognized or, in other words, without being given effect. The Office will consequently not give effect to an assignment where it is satisfied that the assignment is invalid or where the assignor identified in the assignment does not correspond to the owner currently recognized by the Office.

Therefore, where a wrong document has been registered or where a registered document contains a mistake, Office records may be updated to reflect the correct situation following the receipt of:

  • a request for the registration of a newly submitted correct assignment, which complies with all formal requirements for the registration of an assignment; and

To be considered acceptable, a request under b) must meet the following requirements:

  • originate from one of the parties identified in the correct assignment; and
  • contain a statement signed by the requester to the effect that the previously registered assignment contains a mistake and containing information describing the mistake.
  • originate from one of the parties identified in the correct assignment;
  • the assignee was incorrectly identified in the previously registered assignment;
  • the error in the incorrect assignment was due to inadvertence or mistake without any intention to mislead; and
  • the incorrectly identified assignee does not exist; or
  • the incorrectly identified assignee is the same entity as the assignee identified in the correct assignment
  • contain a statement signed by the mistakenly identified assignee to the effect that their name appeared in error on the incorrect assignment; and
  • contain a statement signed by the assignee identified in the correct assignment to the effect that the error in the incorrect assignment was due to inadvertence or mistake without any intention to mislead

This mechanism cannot be used after the grant of a patent to correct errors that were introduced during the application stage.

Clerical errors

Certain errors in assignment documents may qualify as clerical errors that arose in the mechanical process of typewriting or transcribing.

These errors may be corrected under section 8 of the Patent Act rather than via the mechanism set out above. A request for a correction under section 8 of the Patent Act should be accompanied by the required supporting information and the prescribed fee.

The applicant must determine which correction mechanism applies to their particular situation and submit their request accordingly.

If a request for correction under section 8 of the Patent Act has already been submitted but is not the appropriate mechanism, a new request will be necessary and will have to refer explicitly to the appropriate mechanism.

Jurisdiction of the Federal Court

In order to obtain a change that will further alter the content of Office records, such as the removal of a previously registered document, a requester may need to seek an order from the Federal Court.

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

In response to public feedback regarding the retirement of the legacy search systems, a new simplified interface of Patent Public Search named Basic Search is now available. Basic Search is recommended for users new to Patent Public Search, or for users who only need to perform a quick look up.

PatFT, AppFT, PubEAST and PubWEST were retired on September 30. Preexisting links to U.S. patents and pre-grant publications are no longer available. You will need to create new links for saved documents. Read through this  step-by-step guide  on how to set up a web link to access a saved document, as well as set up saved search queries. For questions regarding Patent Public Search, please contact the Public Search Facility at  [email protected] .

Search for patents

New to Patent Searching? See this important information about searching for patents:

How to Conduct a Preliminary U.S. Patent Search: A Step by Step Strategy  - Web Based Tutorial (38 minutes)

The Seven Step Strategy  - Outlines a suggested procedure for patent searching

  • A detailed handout of the Seven Step Strategy with examples and screen shots.

Patents may be searched using the following resources:

Patent Public Search

The Patent Public Search tool is a new web-based patent search application that will replace internal legacy search tools PubEast and PubWest and external legacy search tools PatFT and AppFT. Patent Public Search has two user selectable modern interfaces that provide enhanced access to prior art. The new, powerful, and flexible capabilities of the application will improve the overall patent searching process.

Global Dossier

Global Dossier is a set of business services aimed at modernizing the global patent system and delivering benefits to all stakeholders through a single portal/user interface .  Through this secure service, users have access to the file histories of related applications from participating IP Offices, which currently include the IP5 Offices.

By using this service, users can see the patent family for a specific application, containing all related applications filed at participating IP Offices, along with the dossier, classification, and citation data for these applications. This service also provides Office Action Indicators to help users identify applications that contain office actions, a Collections View for saving documents and applications for review later on in the session, and the ability to download the documents in an application.

Patent Application Information Retrieval (PAIR)

The Patent Application Information Retrieval (PAIR) system provides IP customers a safe, simple, and secure way to retrieve and download information regarding patent application status.

Public Search Facility

The United States Patent and Trademark Office (USPTO) Public Search Facility located in Alexandria, VA provides the public access to patent and trademark information in a variety of formats including on-line, microfilm, and print. Trained staff are available to assist public users.

Patent and Trademark Resource Centers (PTRCs)

Your nearest Patent and Trademark Resource Center (PTRC) maintains local search resources and may offer training in patent search techniques.

  • Find your nearest PTRC
  • 7 Steps to Searching at a PTRC

Patent Official Gazette

The Electronic Official Gazette allows users to browse through the issued patents for the current week. The Official Gazette can be browsed by classification or type of patent, for example, utility, design, and plant.

Common Citation Document (CCD)

The Common Citation Document (CCD) application aims to provide single point access to up-to-date citation data relating to the patent applications of the IP5 Offices. It consolidates the prior art cited by all participating offices for the family members of a patent application, thus enabling the search results for the same invention produced by several offices to be visualized on a single page. The creation of the CCD application is part of an ongoing process of technical harmonization at international level aimed at establishing an appropriate infrastructure to facilitate greater integration of the global patent system.

Search International Patent Offices

To see if your idea has been patented abroad, you'll want to refer to searchable databases made available from other International Intellectual Property offices. Free online access to patent collections is provided by many countries. Some available databases include:

  • European Patent Office (EPO) provides esp@cenet a network of Europe's patent databases- This site also provides access to machine translation of European patents for some languages. 
  • Japan Patent Office (JPO) - This site also provides access to machine translations of Japanese patents.
  • World Intellectual Property Organization (WIPO) provides PATENTSCOPE ® Search Service, which features a full-text search of published international patent applications and machine translations for some documents as well as a list of international patent databases.
  • Korean Intellectual Property Rights Information Service (KIPRIS)
  • China National Intellectual Property Administration (CNIPA) - This site also provides access to machine translation of Chinese patents.
  • Other International Intellectual Property Offices that provide searchable patent databases include: Australia , Canada , Denmark , Finland , France , Germany , Great Britain , India , Israel , Netherlands , Norway , Sweden , Switzerland and Taiwan .

Stopfakes.Gov provides informative Toolkits that give an overview of the Intellectual Property Rights (IPR) environment in various countries around the world.

For additional search resources, contact your local Patent and Trademark Resource Center , visit the USPTO Public Search Facility or the USPTO Main STIC Library . The staff in the Main STIC Library are experts on foreign patents and able to help the public as needed.

Search Published Sequences

The Publication Site for Issued and Published Sequences (PSIPS) website provides Sequence Listings, tables, and other mega items for granted US patents or published US patent applications.

All sequences (SEQ ID NOs.) and tables for listed patents or publications are available for viewing, without downloading, by accessing the proper document detail page and then submitting a SEQ ID NO or a mega table ID number.

Patent Assignment Search

Visit the Patent Assignment Search website to search for patent assignments and changes in ownership.

Patent Examination Data System (PEDS)

The Patent Examination Data System (PEDS) in the Amazon Cloud provides public users the ability to search, view and download bibliographic data for all publicly available Patent applications in a secure manner. The solution allows public users to search and download bibliographic data in bulk as well as manage the volume of data that can be downloaded at any given period of time by a particular user.

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    Alleshouse,981 F.3d 1045, the CAFC held that an assignment agreement executed by a former employee that filed a set of provisional patent applications on personal inventions for his own venture within two mont hs of leaving his former employer was void. In that case, the former employer then sued the former employee, arguing that the employment ...

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    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.

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