MPEP Chapter 300: Ownership and Assignment Flashcards
(13 cards)
When an invention comes into existence, who owns it?
Inventors
Inventorship
-Patent must be applied for in name of true inventors
-If wrong, patent is invalid unless corrected
-Inventors can be excluded from participation by assignee
-PTO determines inventorship through derivation
-Inventors must be humans
Ownership
-Patent can be bought, sold, transferred
-Ownership cannot affect validity, but can determine enforceability
-Owners can control patent and prosecution and exclude inventor
-PTO cannot determine ownership, only courts can
-Owners can be any legal entity
Legal Requirements of an Assignment under 35 USC 261
-Must be in writing
-Need not be in English or recordable (for grants, assignments, and conveyances, does not apply to licenses)
35 USC 261 does not apply to
Licenses, they can be recorded but the failure to do so does not affect those interests
Recording Assignmenta
-Good idea to within 90 days
-Voluntary with the PTO
Requirements for Recording
- Must be in English or with translation
- Must identity all patents assigned
- Be accompanied with fee ($0 if electronically submitted)
- Be legible, only on one side of the paper
- Be an original or certified copy
- Be accompanied by a cover sheet
Assignments follow access…
of the applications they are assigned to
Assignments carry automatically for
CONS, DIVS, and replacement utility apps
Assignments DO NOT CARRY for
CIPS, they require a fresh assignment
USPTO Employees and Patent Interest
Forbidden during employment and 1 year after
Consequences of Recording
A second buyer takes title to a patent over a first buyer if:
1. The first buyer fails to record the assignment with 3 months or prior to second assignment (whichever is later)
2. The second buyer took for consideration (not a gift, bequest)
3. The second buyer did not know of the first sale
Joint Owners
In absence of an agreement between them, each inventor has the right to carry our acts which would otherwise infringe the patent
