Who owns the rights to a patent?
When the patent application is filed, examined and approved the entity cited as the inventor(s) is initially granted ownership of the patent. The USPTO glossary defines inventor as “one who contributes to the conception of an invention”. In simple terms the inventor(s) are the creators of the invention. See MPEP 2137.01 I. An inventor must contribute to the conception. See MPEP 2137.01 II. 35 U.S.C. § 100(f) defines the inventor as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”. See FAQs about Inventors, Patent Applicants and Patent Owners. The inventors may be contractually obligated to assign ownership to an assignee. Some employers require employees to sign employment agreements which specify the inventor(s) to assign ownership to the employer.
The patent owner may also assign ownership to an assignee based upon contract terms. The assignment transfers all rights given by that patent to the assignee. The USPTO defines rights of ownership as “[o]wnership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent.”35 U.S.C. 154(a)(1). After the approval of the patent application, the ownership can be transferred to another entity through an assignment. The USPTO defines assignment as, “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.” 37 CFR 3.1.
What could obligate me to assign ownership of my patent?
Most often an assignor (the providing party) assigns ownership of a patent to an assignee (the receiving party) under contractual obligation. Employers may require their employees to sign a contract (such as an employment agreement, confidentiality agreement, etc.) upon hiring which requires that inventors assign patent ownership to the employer. Sometimes the assignment provision is limited to inventions that were developed using the employers time or resources. This is a common practice at universities. In the university setting, often professors, technicians and other employees have an obligation to assign ownership to the university or the tech transfer office. The university then retains all rights given by that patent and is free to license the intellectual property to the inventor, someone affiliated with the inventor(s) or a third party.
Do I maintain any rights to my patent after assignment to another entity?
After the assignment of rights of a patent application to another entity, one relinquishes all ownership rights associated with the assignment. “…the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest…”37 CFR 3 (II). The assignee now owns and retains rights to the intellectual properties and specified in the patent. In the case of joint ownership, “[e]ach individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee… all parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.” 37 CFR 3 (IV). The ownership and rights granted to the joint owners who didn’t assign remain unaffected. This transfer of ownership of the patent does not change the cited inventors or the cited patent applicant.
Is licensing my patent the same as assignment?
No, the licensing of a patent is a process in which the patent owner(s) allow another entity to use the intellectual property specified in a patent under contractual terms, such as in a license agreement. Circumstances stipulated in a license agreement will allow the licensee to make, use, sell or import the intellectual property if the licensee satisfies their contractual obligations. For example monetary compensation may be a contractual obligation. A license agreement may limit the license in factors such as time, geographical area of use and field of use. The USPTO defines licensing as “transfer[ing] a bundle of rights which is less than the entire ownership interest… rights that may be limited as to time, geographical area, or field of use.” 37 CFR 3 (III). When licensing a patent, the owner still retains rights of ownership to the patent. A good way to think about the difference between an assignment and a licensing is analogous to selling (assignment) or renting (licensing) a house. After the sale of a house the previous owner relinquishes all rights to the property to the new owner. When renting a house, the owner allows tenant(s) to use the property for a prespecified purpose and/or time but still retains ownership of the house and certain legal rights to it.
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