(203) 809-9490 - Send a Message on Homepage - Online Appointments on Homepage
Patent assignment documents can be searched for - and viewed - by using the United States Patent and Trademark Office Patent Assignment Search webpage.
You can search for an assignment by using: the assignor’s name; the assignee’s name, patent application number, patent number, and other information tied to the patent.
A patent assignment is generally considered the transfer of patent rights.
Use this information as a starting point for doing due diligence on investments; or mergers and acquisitions.
There are three main elements you will need to be able to do for research on patent assignments:
The main task is:
In order to do that you will need to:
Assignments of patents are publicly recorded through the United States Patent and Trademark Office (USPTO).
Use the steps below find the chain of title transfer -- and in general researching assignments when doing due diligence for investments.
1. Finding the patents or patent applications:
Start with finding the patents or patent applications which are publicly available (looking up a patent or patent application). All patents are published when issued. Patent applications are usually published 18 months after the filing date of the patent application. In some instances an applicant will request a patent application is not published before issuance.
Find patents or patent applications related to a company or individual by searching under the Field of Assignee or Applicant in the USPTO Database for Patents or the USPTO Database for Patent Applications.
2. Viewing related patents or patent applications
To find information related to the original patent or patent application you will need to go to Public Pair, which allows you to view the full patent file. When viewing the full patent file in Public Pair, go to the Continuity Data tab. In the Continuity Data tab you will see information about any patents or patent applications which came after the patent file you are looking at – and you will see information about any patent or patent application which came before the patent file you are looking at.
3. View the assignments
When searching patents in the Patent Office Assignment Database there will be a list of assignments for that Patent or Patent Application. Start at the first assignment until the last assignment to view the chain of title. Within each assignment document review the cover sheet for accuracy but then continue to the next section to the actual contract transferring the patent rights -- and view the transfer.
You will view: (1) the Patent Assignment Cover Sheet, then (2) the Actual Assignment Contract which shows the transfer of rights.
The Cover Sheet describes the transfer and who the assignment is between.
The parts of the Cover Sheet are:
After the Cover Sheet is the Actual Assignment Contract conveying the interest. The actual agreement can be viewed to determine what the agreement is transferring. There is no verification process by the Patent Office, where the Patent Office will view the actual agreement. The Patent Office only records the assignment.
An assignment of a patent is a transfer of ownership of patent rights. An assignor is the person/entity transferring patent rights to another person/entity. An assignee is the person/entity receiving patent rights from another person/entity. The assignor transfers their patent rights to the assignee.
The patent or patent application may be assigned to another company after what is published in the patent or patent application. Therefore, viewing the assignee information on the Patent Office Assignment Database is important – instead of only looking at what is on the face of a published patent or patent application.
“... Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing."
"An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.”
From the Law Office of John B. Hudak:
From the Patent Office:
From another Law Firm:
Attorney Advertising. This website is for informational purposes only and is not legal advice. Using this site or communicating with the Law Office of John B. Hudak, PLLC through this site does not form an attorney-client relationship. An attorney-client relationship shall be formed only after a documented and signed written representation agreement is made between a lawyer at the Law Office of John B. Hudak, PLLC and a client. Please do not share any unsolicited confidential information with our law firm by email or phone. This site is legal advertising. Copyright © 2021