Ownership and Assignment

Ownership and Assignment — 35 USC 261 / MPEP 301 Patents have attributes of personal property and are assignable. Assignment must be in writing. Three ways to own: (1) inventor files, (2) assignee files under 37 CFR 1.46, (3) assignment recorded after filing. Assignment covers entire interest or partial interest (license).

Recording Assignments — MPEP 302 Record with USPTO Assignment Division. Must include cover sheet identifying application/patent number. Recording within 3 months of execution protects against subsequent purchasers. Late recording still valid between parties but not against bona fide purchaser without notice. Non-English documents must include signed English translation.

Effect of Recording — 37 CFR 3.73 / MPEP 306 Assignment of parent application carries over to continuation and divisional applications. CIP: assignment carries over only to extent the CIP claims are directed to same invention as parent. Assignee must establish ownership under 37 CFR 3.73(c) before taking action in prosecution.

Joint Ownership — 35 USC 262 / MPEP 301 Each joint owner may make, use, sell, and license without consent of other owners. No accounting to other owners required. One joint owner cannot assign the entire patent without consent of all owners. Critical exam rule: joint owner can license independently but cannot assign entire patent unilaterally.

Employer-Employee / Obligation to Assign — MPEP 301 Employed-to-invent doctrine: employee hired specifically to invent must assign. Shop right: employer gets royalty-free license when employee invents using employer resources on employer time but not hired to invent. Written assignment agreement controls over common law rules.