Assignments transfer ownership from one entity to another or from an individual to a company, e.g., an inventor to a company. The decision about whether to assign an intellectual property asset such as a patent to a company is particular to your specific situation. Making a patent assignment or other intellectual property assignment to a company has advantages, such as:
- Providing a corporate structure for engaging in licensing/royalty agreements and ownership portions;
- Patent assignments give the company a clear right to exclude others from making, using and selling the patented invention; and
- Certain rights and liabilities exist by virtue of selling a patented product. These rights and liabilities are affected by providing notice of the patent by, for example, properly marking the product with the patent number, “patented” or abbreviation “pat” as reasonable under the circumstances. If a company is selling the product, rights may be strengthened and liabilities reduced by making the assignment and providing the appropriate patent notice.
Assignments can affect a company’s asset valuation, having tax and accounting consequences – consult your accountant and/or tax attorney for a specific evaluation of any assignment.
To transfer patent rights of an inventor, the inventor must sign an assignment agreement to a company. Upon execution, the inventor’s rights in the application transfer to the company. The company will then have the rights to the patent or patent application. This means that the company will receive all of the rights to the patent or patent application and will have the right to file subsequent applications claiming priority to the subject matter disclosed in the assigned application.
If you have any questions about patent assignments, trademark assignments or other intellectual property assignments please contact us.