Patents are intangible property and personal property. They can be assigned or licensed by submitting/filing a notarized document (recording the assignment) to the USPTO. (An assignment must be recorded within 3 mos. with the USPTO from the date of execution.)
Assignability of Patents and Applications
The rights of a patent or pending patent may be assigned to another party of the United States by means of a notarized document. The assignment is void unless it is recorded at the PTO within 3 months of its execution.
Barring any agreement to the contrary, each of the joint owners of a patent may exercise the rights of a patent holder without the consent or accounting to the other owners.
Accessibility of Assignment Records
All assignment documents relating to patents and registrations of trademarks are open to public inspection. Assignment records of pending or abandoned patent applications generally are not available to the public and may only be viewed upon written consent of the applicant or assignee.
Recording of Assignment Documents
Assignments of applications, patents and trademark registrations will be recorded in the PTO. Each applicant must:
- Provide an original or certified true copy of the assignment
- Provide an English language translation signed by the translator if the assignment is in a foreign language
- Include all appropriate fees
- Provide a cover sheet for each assignment
Facsimile Submission of Assignment Documents
The PTO permits assignments and other documents affecting title via facsimile. The date of receipt is the date the complete transmission is received in the PTO. Any assignment related document submitted by facsimile must include:
- An identified application or patent number
- One cover sheet to record a single transaction
- Payment of the recordation fee by a PTO deposit account
The following documents cannot be submitted by facsimile:
- Assignments submitted concurrently with newly filed patent applications
- Documents with two or more cover sheets
- Requests for corrections to previously recorded documents
- Requests for “at cost” recordation services
- Documents with payment of the recordation fee by credit card
Amendments and assignment documents can be submitted with fax. new applications cannot be filed via fax, and an assignment filed concurrently with a new application cannot be filed via fax. Documents with multiple cover sheets cannot be faxed, corrections to already filed documents cannot be faxed, and payment via credit card cannot be faxed. You must have a PTO serial number for the application and PTO deposit account to fax. Fax must include the single cover sheet, the serial number and deposit number.
Assignment of Divisional, Continuation, Substitute, Continuation-In Part and Provisional Applications
In the case of a division or continuation, a prior assignment recorded against the original application is applied. A prior assignment of the original application is not applied to the substitute or continuation-in part application. When a perfected application based on a provisional application contains subject matter not disclosed in the provisional application, a new assignment must be submitted with respect to this later application. Basically, If you add new matter, you need a new assignment.
Restrictions on PTO Employees
Employees of the PTO shall be incapable, during the period of their appointment and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any rights or interest in any patent, issued or to be issued by the PTO.