Patent Assignments: Difficult Decisions in a Difficult Time

July 6, 2020 – Article

Assignments are important and necessary because they protect the ownership interests in inventions and provide the right to prosecute patent applications and enforce patent rights. But many issues can arise with the assignment of inventions and patent rights and even more issues arise in the era of COVID-19 social distancing. 

The issues that can arise are numerous and may vary from country to country, or even state to state:
  • The requirements for an assignment may vary from country to country;
  • The majority of countries require the assignment to be in writing, but the form could vary, e.g., a separate assignment agreement, a clause in an employment agreement, a separate provision assigning priority rights, etc.;
  • Determining inventorship at the time of an assignment is important to make sure that all rights are properly transferred;
  • Whether payment beyond the inventor’s continued employment is required for the assignment and the form and acknowledgment of that payment may vary;
  • Determining who should be the assignee is important (e.g. the determination of what company within a company group should receive the patent rights may affect the type of damages that are available for infringement);
  • The requisite wording of the contract to effect an assignment may vary from country to country;
  • Whose signatures are required on a patent assignment may vary from country to country;
  • In the age of COVID-19, whether it is possible or advisable to have an inventor sign an assignment electronically may vary from country to country;
  • The requirements for an electronic signature may vary from jurisdiction to jurisdiction;
  • Whether notarization of assignments is required may vary from country to country;
  • Timing of the execution of an assignment can affect the ability to claim priority to an earlier filed application;
  • Whether a separate assignment is needed for provisional and non-provisional applications;
  • The requirements for registration/recordation may vary from country to country;
  • Whether legal effect of the assignment may be contingent upon its registration/recordation may depend upon the country;
  • Whether government approval is required to assign rights; and
  • Whether a process exists to correct mistakes on an assignment (this happens more frequently than realized).
These are but a few of the issues that may arise when contemplating assignment of employee-inventions.  There are many others.  Oblon is well versed in the assignment of patent rights and can assist if you have any question or concerns.