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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Post Trademark Registration Junk Mail

Post Trademark Registration: Beware Fraud, Scam & Junk Mail

What is a Post-Trademark Registration Junk Mail Barrage?

In part, the post-Trademark Registration junk mail barrage is a type of direct mail marketing. (In the US, the estimated response rate for direct mail campaigns is 3.5% to 4.24%. Thus, direct mail can be an inexpensive way to obtain a customer and/or make a sale.) Direct mail campaigns continue to creep into postal boxes, some of which are honest and aboveboard and others that are not.

Following your Trademark Registration, your company may receive legitimate-looking “bills” or “invoices” by mail that appear to be related to your trademark registration. Those may be a scam. Here’s what you need to know:

A Trademark Registration Scenario 

Trademark Registrations are part of the Public Record.

Our marketing department initially filed three US Trademark Applications. About a year after filing the US Trademark Applications for the “Yes,” “No,” and “Maybe” Marks, our Louisville Company received three Trademark Registrations from the United States Trademark Office. Marketing and sales quickly added the ® to our labels and continued marketing and selling our products.

Our company’s protocol has been that the mailroom sorts the incoming mail and sends anything appearing to be an invoice to accounting for payment. Accounting was trained to look for suspicious invoices.

Within weeks of receiving our US Trademark Applications, unbeknownst to management, accounting paid several invoices that appeared to be related to United States Trademark Office business.

Those invoices appeared to be associated the US Trademark Office, but were not.

Types of Post Trademark Registration Solicitations

As a general rule, the US Trademark Office will not utilize the postal service to solicit payments from the Trademark Owner.

Under Title 15 of the United States Code, USPTO post Registration fees become due at five years, nine years, nineteen years, twenty nine years, etc. Any USPTO fee requested by a third party not associated with these dates is suspicious.

Solicitations attempting to induce the Trademark owner to pay fees may come in many ways. (Some third parties solicit the transfer of funds outside the United States, others solicit funds to roaming US postal box locations and some have apparent legitimate street addresses.)

  • Some solicitations are for actual services, albeit not those likely needed by the Trademark owner. (These are like the old yellow page ads for a regional rather than a local telephone book.)
  • Other direct mail campaigns induce the Trademark owner to actually pay for something in a country outside the United States while making the payment appear to be for something in the United States.
  • Still others encourage payment for some service in the United States, where the service is not actually needed to maintain the Trademark Registration in full force and effect.

If you have a question about the post-Trademark Registration barrage of mailed materials and junk mail, please contact Business Patent Law, PLLC., for guidance.

If you have a topic or question you would like Business Patent Law, PLLC 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.

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.