Share on Facebook
Share on Twitter
Share on LinkedIn
By J.D. Houvener
Patent Attorney and Founder

So, a patent assignment actually means an ownership change. That’s right, you’re giving up, as the inventor, the ownership of the ability to make, use, and sell your invention. It’s a big deal.

I’m J.D. Houvener, owner, founder, and patent attorney here at Bold Patents Law Firm. I’m here to talk about the Four Keys that you can’t miss about what is involved in a patent assignment.

So, first up, what is a patent assignment? And I should say, before we get started, it’s not just those patents that are issued. You can assign and give up ownership of a patent application as well. So, the overall structure is a legal document. It is usually one or sometimes two pages where you, the inventor or inventors, are giving up your rights to make, use, sell, and import. These are the four bundles of rights you get to exclude others from when you get a patent granted to one or more individuals or entities.

One of the most common places you see this is in employment agreements. Let’s say you’re working at a huge company like Amazon, for example. They’ve got an employment agreement, and in there is definitely a clause where, as you sign on to becoming an employee, you’ll be agreeing to give up the right to give any rights of intellectual property that are developed in furtherance of your job, right, of your skills and your career to the company. So, even if you invent, no matter how wildly successful that invention is commercially or otherwise, you actually assign your rights to the company. They own the ability to monetize or move that into another entity.

The second big key is who executes a patent assignment. I mentioned there are two, at least two parties. There’s going to be the assignee, the one giving up the rights. That’s the inventor or inventors. And the assignor, who’s the one that’s actually receiving that. It is usually a company or another individual in that transaction.

So, why are they valuable? One of the most interesting ways that I explain to inventors and entrepreneurs who are just getting started and opening up their own businesses is the ability to assign your invention that’s owned individually to the company. We usually recommend doing this while it’s still an application. You can assign a pending, a patent-pending invention in the portfolio to a company. And why would you do that? It’s to limit your liability. If you, the individual, are going to contract, let’s say, with a manufacturer or with another third party, and it involves the invention itself, and it’s owned individually, there is the ability for the manufacturer or the third party to sue you, the inventor, individually with respect to the product or whatever happened with the invention. Whereas if it’s now owned by the company, you’ve got that shield, that limitation of liability between you and the third party.

Another good reason is that oftentimes, I know this isn’t always fun to hear, inventors don’t always make the best business owners or the best CEOs. They’re usually heads down, working on the technology, trying to bring about the next version. And the owners are able to see kind of a bigger picture, maybe more comfortable with marketing, operations, sales, and collections. So, that’s where owners can come in, you know, non-technical folks can come in and help grow their company and have an ownership stake in all the IP assets, including the physical assets as well.

The fourth key is where do you find them? Well, patent assignments can be found online. The United States Patent and Trademark Office (USPTO) has an application on their website to go search. You can look by patent number, look by inventor name, and lots of different things. You’ll see a link in the description below to a full-length blog article that’ll show you and provide a link to go look it up.

So, that is patent assignments in a nutshell. If you want to learn more about it, we do have a link below to schedule a free screening session to talk with one of our advisors on our team to see if you need to assign your patent or if you want to get started on the process, no matter where you are. Click for a free 20-minute phone call with our firm. Don’t forget to click below and subscribe. I will be posting videos like this at least once a week.

Again, I’m J.D. Houvener, owner, founder, and patent attorney here at Bold Patents. Have a great day, everyone. Go big, go bold.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/