Patent Assignments- They Are All the Same, Right?

These materials are public information and have
been prepared for entertainment purposes only to
contribute to the fascinating study of intellectual
property law. No rights, warranties, or other
guarantees are provided herein. Everyone else’s
disclaimers are hereby incorporated by reference in
their entirety.
Let’s make it of record
 Yo, I own this right, right?
 Divided ownership is no ownership
 Let’s vacation in the Cayman Islands
“Applications for patent, patents, or any interests
therein, shall be assignable in law by an instrument
in writing . . . .” 35 U.S.C. § 261.
The USPTO follows a
race-notice recording
procedure in which a
three month notice
period is provided for
assignment recording,
otherwise the first to
record is considered the
superior party against a
subsequent bona-fide
purchaser. 35 U.S.C. §§
Federal Circuit has held
that recordation of an
assignment creates a
rebuttable presumption
that the assignment is
valid. SIRF Technology v.
ITC and Broadcom
The fee for recording
electronically with the
USPTO was eliminated in
January, 2014
Just about anything:
Letters disputing ownership.
License Agreements.
Notes and other security interests.
A recording with the
USPTO is not required for
perfecting a security
interest in a patent and
perfection is instead
governed by the Uniform
Commercial Code, though
the USPTO provides for
recording of security
interests and it may be
best practices to consider
doing so.
State law governs the application of assignment
obligations***. Minco, Inc. v. Combustion Eng'g, Inc
 *** Feds have usurped that power in certain
The conveyance of a patent does not normally include
the right to recover for injuries occurring before the
conveyance. Crown Die & Tool Co. v. Nye Tool & Mach.
As the Supreme Court has stated, “it is a great mistake
to suppose that the assignment of a patent carries with
it the right to sue for past infringement.”
Assignments must include “right to sue for past
infringement language” if that right is conveyed (in most
Rights that exist when no written agreement:
Shop Rights
 Hired-to-invent doctrine
Shop right is a common law
doctrine founded in
equitable principles that
allows an employer to use
the employee’s invention
without payment to the
employee if that invention
was made using the
employer’s time, materials,
facilities, or equipment.
Lariscey v. United States
Not assignable.
Not licensable.
May not survive sale of
You are on your own here. Google is your friend.
Hired-to-Invent usually applies to patents, and workfor-hire usually applies to copyrights.
“I will assign and do hereby
assign… my right, title, and
interest in each of the ideas,
inventions and
improvements” effected a
present assignment of the
inventor’s future inventions
and therefore the assignee
immediately acquired
equitable title to the
 The CAFC has addressed this
many times and has endorsed
this language each time!
1st Assignment:“I agree to assign or confirm in
writing to Stanford and/or Sponsors that right, title
and interest in . . . such inventions”
 Later Assignment: “I will assign and do hereby assign
to CETUS, my right, title, and interest in each of the
ideas, inventions and improvements.”
Courts will try to construe
assignments to generally
cover downstream
applications unless
language clearly excludes
those downstream
Same general rule applies
to license agreements and
downstream applications.
General Protecht Group,
Inc. v. Leviton Mfg. Co..
*** if you license a parent
application, you have
probably licensed any
downstream applications.
Carve Out provisions
exclude certain
technologies from either
assignments or license
CAFC has held that carve
outs only applied if the
particular claim in a
patent was only directed
to the carved out
technology. If other
features were included in
the claim, then the Carve
Out did not apply. MHL
Patent Application issues
with claims 1-10 directed
towards a widget and
claims 11-20 directed
towards a doodad.
Claims 1-10 assigned to
Claims 11-20 assigned to
An assignment of only
certain claims in a patent
is, in fact, not an
assignment. This logically
follows from 37 CFR 3.1,
which reads “An
assignment of a patent, or
patent application, is the
transfer to another of a
party’s entire ownership
Rights are severely limited when you have coowners. No standing to sue individually and either
party can grant non-exclusive licenses– creates a
race to the bottom for royalty rates.
Can limit your ability to collect lost profits since your
Cayman Island company doesn’t have profits
associated with the sale of products to lose.
 Also brings up standing issues.
Grants a first licensee a matching royalty if a later
licensee gets a lower royalty rate.
 Be careful with paid up royalties to settle litigations
as this can trigger a Most Favored Nations clause.

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