Patent rights transfer around the world - Patent Rights

Patent Assignments

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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The Hague

The European Patent

How to Get a European Patent

Can you get a European Patent on a product designed in the United States? Yes. Can Business Patent Law assist you with that patent application? Absolutely! Here are a few things you need to know about overseas patent applications, to better understand the process.

European Patent Applications

  • Applicants can file European Patent Applications (EPA) via the European Patent Convention.
  • Applicants can file EPAs via the Patent Cooperation Treaty.

Locations of the European Patent Office (EPO) for filing EPAs

  • Munich Germany is the principal office of the EPO. Other EPO offices are in Berlin, Brussels, The Hague, and Vienna.
  • Your EPA can be filed at any location of the EPO.

Professionals (Licensed by the EPO) Represent BPL’s Clients before the EPO

  • Business Patent Law (BPL) has foreign associates around the globe ready to represent BPL’s clients before various foreign Patent Offices.
  • In Europe, BPL has associate European Patent Attorneys licensed by the EPO to represent clients before the EPO.
  • BPL works closely with European associates to monitor and assist with the evolution of the EPA toward the grant of the European Patent(s).

Following Examination EPAs are Denied or Granted

  • After examination by the Examination Division of the EPO; if the Examination Division concludes that the EPA is patentable, the post-examination EPA is published.
  • On the date of publication of the post-examination EPA, the European Patent is granted.
  • The European Patent is a “bundle” of individual member states’ National Patents.

Validation of the European Patent (EP) Required in each Designated Member State

  • After the grant of the European Patent, it must be validated in the designated member states.
  • Among other things, validation requires payment of designated member state’s fees and providing translations or transliterations of the Patent if that state does not accept the validation in one of the three official languages of the EPO.

Official Languages of the EPO

  • English
  • French
  • German

Oppositions Against the Granted EP

For a period of nine months subsequent to the grant of the Patent, a third party can institute an Opposition Proceeding against the EP.  In Opposition Proceedings, filed before the Oppositions Division of the EPO, third parties argue against the patentability of the granted EP.

Member Nations of the EPO – 2022

Member Nation                                                                         EPO Member Since

AL Albania 1 May 2010
AT Austria 1 May 1979
BE Belgium 7 October 1977
BG Bulgaria 1 July 2002
CH Switzerland 7 October 1977
CY Cyprus 1 April 1998
CZ Czech Republic 1 July 2002
DE Germany 7 October 1977
DK Denmark 1 January 1990
EE Estonia 1 July 2002
ES Spain 1 October 1986
FI Finland 1 March 1996
FR France 7 October 1977
GB United Kingdom 7 October 1977
GR Greece 1 October 1986
HR Croatia 1 January 2008
HU Hungary 1 January 2003
IE Ireland 1 August 1992
IS Iceland 1 November 2004
IT Italy 1 December 1978
LI Liechtenstein 1 April 1980
LT Lithuania 1 December 2004
LU Luxembourg 7 October 1977
LV Latvia 1 July 2005
MC Monaco 1 December 1991
MK North Macedonia 1 January 2009
MT Malta 1 March 2007
NL Netherlands 7 October 1977
NO Norway 1 January 2008
PL Poland 1 March 2004
PT Portugal 1 January 1992
RO Romania 1 March 2003
RS Serbia 1 October 2010
SE Sweden 1 May 1978
SI Slovenia 1 December 2002
SK Slovakia 1 July 2002
SM San Marino 1 July 2009
TR Turkey 1 November 2000

Need a European Patent?

If your company needs assistance with European or other foreign jurisdictions’ Patent Applications, we can help.

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

Do you have a topic or question you would like Business Patent Law, PLLC to address in the blog? Please send us an email.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

foreign patent protection

How Much Does a Foreign Patent Cost?

Contemplating Patent Protection in Foreign Jurisdictions

During management’s last meeting, it was clear that our international sales have tripled over the last few years. Some of us expressed concern about potential “knock-offs” in other countries. Some of our suppliers are in Asia and the Pacific. We talked to other friendly companies about the costs of foreign Patents. The information provided by our friendly contacts about costs varied. Their common denominator was conjunctive – but the foreign Patent costs!

Should Our Company File Foreign Patent Applications?

It depends. As a general rule, Business Patent Law advises clients:  If a foreign Patent will not make money for the Company or prevent the Company from losing money, there is no business reason for filing one.

Patent rights create a limited monopoly in the foreign jurisdiction granting the Patent.

General Observations on the Costs of Foreign Patents.

  • Applications that can be filed in the English language tend to cost the least
  • Applications that must be transliterated from English into a non-Roman alphabet language tend to be the cost the most
  • Applications that can be translated into a foreign language using the Roman alphabet tend to cost somewhere between an English language Application and a transliterated language foreign Patent Application
  • Usually, the Parent Patent Application is a United States Patent Application prepared by Business Patent Law. When Business Patent Law’s foreign associates opt to utilize most of Business Patent Law’s United States Parent Patent Application, costs to our clients tend to be less than when foreign associates do not use BPL’s Parent Patent Application

Rankings of Costs of Procuring and Maintaining Foreign Patents in Select Foreign Jurisdictions*

  1. European Patent Office                                            14-17 x USPTO costs
  2. Japan Patent Office                                                   2.5-3 x USPTO costs
  3. Korean Intellectual Property Office                       2-3 x USPTO costs
  4. China National Intellectual Property Admin.      2-2.5 x USPTO costs
  5. Mexican Patent Office                                              1.5-2 x USPTO costs
  6. Brazilian National Institute of Industrial Prop.  1-2 x USPTO costs
  7. Australian Patent Office                                           1.0-2 x USPTO costs
  8. Russian Patent Office                                                1.0-1.5 x USPTO costs
  9. Philippines Patent Office                                          1.0-1.5 x USPTO costs
  10. Canadian Intellectual Property Office                   1.0-1.5 x USPTO costs
  11. Indian Patent Office                                                   1.o-1.5 x USPTO costs

* Estimates are based on Business Patent Law’s experience, and due to other countries’ Patent Office and foreign associates activities, fees can be outside of the above estimated ranges. Ranges are based on everything proceeding smoothly in the other Patent Offices.

If we can assist your Company with developing a foreign strategy, please contact Business Patent Law, PLLC.

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

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.