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Welcome to IP in a minute with Richard Gearhart, brought to you by Gearhart law. Today we’re going to be talking about assignments. Not the kind of assignments that you used to get from your teacher, but assignments that relate to your intellectual property.
An assignment is a legal document that transfers the rights from one party to another. In the case of intellectual property, the assignment can transfer the rights in a patent or trademark from one person or entity to another person or entity. A common kind of assignment is the assignment that transfers the ownership of a patent from an inventor to a company.
An assignment is usually a form or template, where the name of the patent, the serial number, the filing date and the title of the patent are provided. The assignment names the name of the current owner, frequently the inventor. The assignment also names the new owner. In a typical example the inventor on a patent application, John Smith, may assign the ownership of the patent to his company, xyz, which is a Limited Liability Corporation (LLC), called xyz,LLC. In this case John Smith has transferred all of his ownership rights from himself to xyz,LLC.
There is another step in the assignment process for patents and trademarks. Once the assignment is executed it gets filed at the US Patent and Trademark Office (USPTO). There is a record there then, of the transfer of ownership from John Smith to xyz,LLC.
Any type of patent can be assigned: provisional patent, pending utility or non-provisional application, or issued patent. Design patents, plant patents, trademarks, copyrights and even trade secrets can also be assigned.
Your patent attorney should ask you if you would like to make an assignment of your invention. This is a legal question, and you should make sure that you get good advice about what’s best for your situation.