SOURCE: Wolf Greenfield

Wolf Greenfield

October 13, 2010 07:04 ET

Establishing Patent Ownership Is Too Often Neglected, Wolf Greenfield's Baker Writes in IPTLJ

Poorly Drafted Assignments Can Render Patents Worthless

BOSTON, MA--(Marketwire - October 13, 2010) -  Many patent applicants spend considerable time and money drafting the perfect patent application but spend considerably less time and effort perfecting their ownership of the application, C. Hunter Baker, MD, PhD, counsel at the Boston intellectual property law firm Wolf Greenfield & Sacks, P.C., writes in Intellectual Property and Technology Law Journal.

"Many applicants consider it simply an administrative task to draft, execute, and record an assignment at the US Patent and Trademark Office (USPTO), or worse, they rely on poorly drafted agreements, such as employment agreements, to establish the ownership of patent rights," he writes in his article, "Assignments: Who Owns Patent Rights?"

Getting an assignment properly executed and recorded to effect a change in ownership of a patent application is just as important as drafting the patent application itself, Baker writes. An error in the assignment can make a patent worthless to an applicant.

In the United States, patent applications are owned by -- and patents are issued to -- the inventors, unless there is an agreement to the contrary, such as an assignment. Furthermore, an inventor who has contributed to just a single claim in an issued patent has an ownership interest in the entire patent.

"It's crucial to know where the rights of all the inventors lie," Baker says.

His article covers why applicants need to get an assignment and what constitutes a valid assignment. 

Concluding, Baker offers this advice:

  • Prepare assignments in a timely manner after proper determination of inventorship for all patent applications: provisional, non-provisional, PCT, and foreign applications.
  • Record all assignments at the USPTO within three months.
  • Any time new subject matter is added to an application, draft a new assignment to be signed by the inventors.
  • Employment agreements should be used only as a safety net, and they should provide for a present assignment of an inventor's patent rights by using "does hereby assign" rather than "agrees to assign."
  • When filing a PCT or foreign application, ensure that all the priority rights are held by the named applicants.

Wolf Greenfield, the largest law firm in New England devoted exclusively to intellectual property law, serves companies that make everything from pharmaceuticals to software to electronics to snowboards, as well as representing academic research centers. The firm counsels clients in the areas of patents, trademarks, copyrights, designs, trade secrets, and related licensing and litigation. Web: www.wolfgreenfield.com.

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