Patent Application Assignment Agreement

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This Patent Application Assignment Agreement is used by an inventor when assigning a patent application to another party. This agreement sets out the terms including any payment for the patent application. This form is for use in all states and is available for immediate download.

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A patent is a legal device given to an inventor that prohibits others from producing or profiting from his or her invention. Savvy inventors will file a patent application with the United States Patent and Trademark Office (USPTO) in order to protect their rights in and to the invention. This Patent Application Assignment Agreement is between the inventor/owner of a patent application (the “Assignor”) and a party who desires to acquire all rights in that patent application (the “Assignee”). This assignment sets out the specific terms of the agreement including a brief description and name of the invention and the patent application number. It is imperative that this type of legal transaction be set out in writing and recorded with the USPTO. A well-written Patent Application Assignment Agreement will prove invaluable in the event there are disagreements, misunderstandings or litigation.

This Patent Application Assignment Agreement contains the following provisions:
  • Parties: Sets out the identities of the Assignor and Assignee;
  • Patent Application: Brief description of the invention, patent application number, date of application, name of inventor(s) and name of invention;
  • Assignment: Assignor assigns all rights, title and interest in the application to Assignee;
  • Payment: Amount paid by Assignee for the patent application and manner of payment;
  • Assignor’s Warranties: Assignor represents that it has the legal right to assign the patent application;
  • Signatures: Both Assignee and Assignor must sign the assignment agreement in the presence of a notary public.

Protect your Rights and your Property by using our attorney prepared up-to-date forms.

This attorney-prepared packet contains:
  1. General Instructions
  2. General Information
  3. Patent Application Assignment Agreement
State Law Compliance: This form complies with the laws of all states
This is the content of the form and is provided for your convenience. It is not necessarily what the actual form looks like and does not include the information, instructions and other materials that come with the form you would purchase. An actual sample can also be viewed by clicking on the "Sample Form" near the top left of this page.












Patent Application Assignment Agreement










This Packet Includes:
   1. General Instructions
   2. General Information
   3. Patent Application Assignment Agreement





General Instructions
Patent Application Assignment Agreement

   This kit includes tools and guidelines for preparing an assignment of a U.S. patent application.

   A patent is a legal device that protects inventors, prohibiting other persons from producing or profiting from their inventions for a defined period of time.  While the patent owner holds certain exclusive rights to make and market the invention, the owner is entitled to transfer those rights to another party by way of an assignment, and may even transfer its rights to the patent application, before the application is submitted and/or approved by the U.S. Patent and Trademark Office.

   Included in this kit is a sample agreement setting forth the terms of an assignment of a patent application, as well as a basic introduction to patent law.








General Information
Patent Application Assignment Agreement


A patent is a legal device that protects an inventor and his invention.  The patent prohibits other persons or entities from using or profiting from that invention for a specific period of time, during which the inventor has the exclusive right to exploit the invention.

In order to qualify for a patent, the invention must be a new and useful process, machine, manufacture, or composition of matter (or any new and useful improvement thereof).  Further, the material to be patented must be novel and non-obvious.

In addition to having the right to transfer ones interest in a patent, inventors also have the right to transfer their rights in the patent application itself.  When the application is validly assigned and recorded with the U.S. Patent and Trademark Office (USPTO), the patent will be issued to the assignee upon approval of the application.

Recordation with the USPTO also serves to protect the assignee against good faith purchasers who may attempt to take ownership of the patent subsequent to the assignee.  Agreements submitted for recordation may need to be accompanied by a cover sheet, which must include the following information (reproduced from CFR §3.31):

1.   The name of the party conveying the interest;

2.   The name and address of the party receiving the interest;

3.   A description of the interest conveyed or transaction to be recorded;

4.   Identification of the interests involved:

a.   For trademark assignments and trademark name changes:  Each trademark registration number and each trademark application number, if known, against which the U.S. Patent and Trademark Office (USPTO) is to record the document.  If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the USPTO received the application; or



b.    

For any other document affecting title to a trademark or patent application, registration or patent:  Each trademark or patent application


number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;

5.   The name and address of the party to whom correspondence concerning the request to record the document should be mailed;

6.   The date the document was executed;

7.   The signature of the party submitting the document.  For an assignment document or name change filed electronically, the person who signs the cover sheet must either;

a.   Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks submission (e.g. /Thomas OMalley III/) in the signature block on the electronic submission; or

b.   Sign the cover sheet using some other form of electronic signature specified by the Director.

For more information about recording your patent application assignment or general information about U.S. patent law, visit the USPTO website.







DISCLAIMER:

FindLegalForms, Inc. (“FLF”) is not a law firm and does not provide legal advice.  The use of these materials is not a substitute for legal advice. Only an attorney can provide legal advice.  An attorney should be consulted for all serious legal matters.  No Attorney-Client relationship is created by use of these materials.  

THESE MATERIALS ARE PROVIDED “AS-IS.  FLF DOES NOT GIVE ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY, SUITABILITY OR COMPLETENESS FOR ANY OF THE MATERIALS FOR YOUR PARTICULAR NEEDS.  THE MATERIALS ARE USED AT YOUR OWN RISK.  IN NO EVENT WILL:  I) FLF, ITS AGENTS, PARTNERS, OR AFFILIATES; OR II) THE PROVIDERS, AUTHORS OR PUBLISHERS OF ITS MATERIALS, BE RESPONSIBLE OR LIABLE FOR ANY DIRECT, INDIRECT, INCIDENTAL, SPECIAL, EXEMPLARY, OR CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT LIMITED TO, PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES; LOSS OF USE, DATE OR PROFITS; OR BUSINESS INTERRUPTION) HOWEVER USED AND ON ANY THEORY OF LIABILITY, WHETHER IN CONTRACT, STRICT LIABILITY, OR TORT (INCLUDING NEGLIGENCE OR OTHERWISE) ARISING IN ANY WAY OUT OF THE USE OF THESE MATERIALS. 



Patent Application Assignment Agreement

THIS AGREEMENT is made this        day of       , 20   , by and between                       (“Assignor”) whose business address is                                   and                             (“Assignee”, and collectively, the “Parties”) whose address is                                               .

WHEREAS, Assignor is has invented    (Brief description of invention)    (the “Invention”), disclosed in an application for United States Letters Patent (the “Patent Application”) identified below.

WHEREAS, Assignee wishes to acquire all right, title and interest in the Patent Application, and Assignor wishes to sell its interest in the Patent Application to Assignee.

NOW THEREFORE, in consideration of the mutual promises, covenants, warranties, and other good and valuable consideration set forth herein, the Parties agree as follows:

1.  Patent Application.  The Patent Application can be identified by:

?   (if this Agreement is executed after Patent Application is submitted to U.S. Patent and Trademark Office)
Patent application number                

?   (if this Agreement is executed concurrent to or subsequent to the execution of the Patent Application, but before the Patent Application is filed)
   Date of execution of Patent Application                   
   Name(s) of inventor(s)                         
                                    
                                    
   Name of invention                        

2.     Assignment.  Assignor hereby assigns to Assignee, its successors, representatives and assigns, all right, title and interest in the Patent Application and in all divisions, renewals and continuations thereof, and in all letters patent granted thereon, including all reexaminations, extensions and reissues thereof.  Assignor hereby requests the Commissioner of Patents of the United States to issue all Letters Patent granted pursuant to the Patent Application to Assignee, its successors, representatives and assigns.

3.     Payment.  In consideration of the assignment of the Patent Application pursuant to this Agreement, and of the promises and covenants contained herein, Assignee shall pay to Assignor a fee in the amount of $            , payable as follows:                                                                                       .

4.     Assignors Representations and Warranties.  Assignor hereby represents and warrants that it has the legal right and authority to execute this Agreement, and to validly assign the entire interest in the Patent Application to Assignee.  Assignor further represents and warrants that it has not executed any other agreement that would conflict with the terms of this Agreement, nor shall it execute any such agreement in the future.

5.   Further Actions.  Assignor hereby agrees to execute any further agreements and to take any further actions necessary to aid Assignee in perfecting its interest in the Patent Application, and in any letters patent granted thereon, and in enforcing any and all protections or privileges deriving from the Patent Application or from said letters patent.

6.   Governing Law.  This Agreement shall be construed in accordance with, and governed in all respects by, the laws of the State of ___________________, without regard to conflicts of law principles.

7.   Counterparts.   This Agreement may be executed in several counterparts, each of which shall constitute an original and all of which, when taken together, shall constitute one agreement.

8.   Severability.   If any part or parts of this Agreement shall be held unenforceable for any reason, the remainder of this Agreement shall continue in full force and effect. If any provision of this Agreement is deemed invalid or unenforceable by any court of competent jurisdiction, and if limiting such provision would make the provision valid, then such provision shall be deemed to be construed as so limited.

9.   Notice.   Any notice required or otherwise given pursuant to this Agreement shall be in writing and mailed certified return receipt requested, postage prepaid, or delivered by overnight delivery service, addressed as follows:

   If to Assignor:      
      
      
      

   If to Assignee:         
         
      
      

10.   Headings.   The headings for section herein are for convenience only and shall not affect the meaning of the provisions of this Agreement.

11.   Entire Agreement.   This Agreement constitutes the entire agreement between Assignor and Assignee, and supersedes any prior understanding or representation of any kind preceding the date of this Agreement. There are no other promises, conditions, understandings or other agreements, whether oral or written, relating to the subject matter of this Agreement.

IN WITNESS WHEREOF, the parties have caused this Agreement to be executed the day and year first above written.


ASSIGNOR

                  
Signature
                  
Print Name
ASSIGNEE

                  
Signature
                  
Print Name


State of                )
)
County of __________________________   ) ss


I, the undersigned, a Notary Public in and for said County, in the State aforesaid, DO HEREBY CERTIFY THAT ______________________________________________________________ personally known to me to be the same person whose name is subscribed to the foregoing instrument, appeared before me this day in person, and acknowledged that ________________ signed, sealed and delivered the said instrument as his/her/their free and voluntary act, for the uses and purposes therein set forth.

Given under my hand and notarial seal, this __________ day of ____________, 20____.


_______________________________
Signature of Notary Public

(Seal)
_______________________________
Printed Name of Notary

My commission expires on ______________________________, 20____.


Number of Pages5
DimensionsDesigned for Letter Size (8.5" x 11")
EditableYes (.doc, .wpd and .rtf)
UsageUnlimited number of prints
Product number#28039
This is the content of the form and is provided for your convenience. It is not necessarily what the actual form looks like and does not include the information, instructions and other materials that come with the form you would purchase. An actual sample can also be viewed by clicking on the "Sample Form" near the top left of this page.












Patent Application Assignment Agreement










This Packet Includes:
   1. General Instructions
   2. General Information
   3. Patent Application Assignment Agreement





General Instructions
Patent Application Assignment Agreement

   This kit includes tools and guidelines for preparing an assignment of a U.S. patent application.

   A patent is a legal device that protects inventors, prohibiting other persons from producing or profiting from their inventions for a defined period of time.  While the patent owner holds certain exclusive rights to make and market the invention, the owner is entitled to transfer those rights to another party by way of an assignment, and may even transfer its rights to the patent application, before the application is submitted and/or approved by the U.S. Patent and Trademark Office.

   Included in this kit is a sample agreement setting forth the terms of an assignment of a patent application, as well as a basic introduction to patent law.








General Information
Patent Application Assignment Agreement


A patent is a legal device that protects an inventor and his invention.  The patent prohibits other persons or entities from using or profiting from that invention for a specific period of time, during which the inventor has the exclusive right to exploit the invention.

In order to qualify for a patent, the invention must be a new and useful process, machine, manufacture, or composition of matter (or any new and useful improvement thereof).  Further, the material to be patented must be novel and non-obvious.

In addition to having the right to transfer ones interest in a patent, inventors also have the right to transfer their rights in the patent application itself.  When the application is validly assigned and recorded with the U.S. Patent and Trademark Office (USPTO), the patent will be issued to the assignee upon approval of the application.

Recordation with the USPTO also serves to protect the assignee against good faith purchasers who may attempt to take ownership of the patent subsequent to the assignee.  Agreements submitted for recordation may need to be accompanied by a cover sheet, which must include the following information (reproduced from CFR §3.31):

1.   The name of the party conveying the interest;

2.   The name and address of the party receiving the interest;

3.   A description of the interest conveyed or transaction to be recorded;

4.   Identification of the interests involved:

a.   For trademark assignments and trademark name changes:  Each trademark registration number and each trademark application number, if known, against which the U.S. Patent and Trademark Office (USPTO) is to record the document.  If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the USPTO received the application; or



b.    

For any other document affecting title to a trademark or patent application, registration or patent:  Each trademark or patent application


number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;

5.   The name and address of the party to whom correspondence concerning the request to record the document should be mailed;

6.   The date the document was executed;

7.   The signature of the party submitting the document.  For an assignment document or name change filed electronically, the person who signs the cover sheet must either;

a.   Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks submission (e.g. /Thomas OMalley III/) in the signature block on the electronic submission; or

b.   Sign the cover sheet using some other form of electronic signature specified by the Director.

For more information about recording your patent application assignment or general information about U.S. patent law, visit the USPTO website.







DISCLAIMER:

FindLegalForms, Inc. (“FLF”) is not a law firm and does not provide legal advice.  The use of these materials is not a substitute for legal advice. Only an attorney can provide legal advice.  An attorney should be consulted for all serious legal matters.  No Attorney-Client relationship is created by use of these materials.  

THESE MATERIALS ARE PROVIDED “AS-IS.  FLF DOES NOT GIVE ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY, SUITABILITY OR COMPLETENESS FOR ANY OF THE MATERIALS FOR YOUR PARTICULAR NEEDS.  THE MATERIALS ARE USED AT YOUR OWN RISK.  IN NO EVENT WILL:  I) FLF, ITS AGENTS, PARTNERS, OR AFFILIATES; OR II) THE PROVIDERS, AUTHORS OR PUBLISHERS OF ITS MATERIALS, BE RESPONSIBLE OR LIABLE FOR ANY DIRECT, INDIRECT, INCIDENTAL, SPECIAL, EXEMPLARY, OR CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT LIMITED TO, PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES; LOSS OF USE, DATE OR PROFITS; OR BUSINESS INTERRUPTION) HOWEVER USED AND ON ANY THEORY OF LIABILITY, WHETHER IN CONTRACT, STRICT LIABILITY, OR TORT (INCLUDING NEGLIGENCE OR OTHERWISE) ARISING IN ANY WAY OUT OF THE USE OF THESE MATERIALS. 



Patent Application Assignment Agreement

THIS AGREEMENT is made this        day of       , 20   , by and between                       (“Assignor”) whose business address is                                   and                             (“Assignee”, and collectively, the “Parties”) whose address is                                               .

WHEREAS, Assignor is has invented    (Brief description of invention)    (the “Invention”), disclosed in an application for United States Letters Patent (the “Patent Application”) identified below.

WHEREAS, Assignee wishes to acquire all right, title and interest in the Patent Application, and Assignor wishes to sell its interest in the Patent Application to Assignee.

NOW THEREFORE, in consideration of the mutual promises, covenants, warranties, and other good and valuable consideration set forth herein, the Parties agree as follows:

1.  Patent Application.  The Patent Application can be identified by:

?   (if this Agreement is executed after Patent Application is submitted to U.S. Patent and Trademark Office)
Patent application number                

?   (if this Agreement is executed concurrent to or subsequent to the execution of the Patent Application, but before the Patent Application is filed)
   Date of execution of Patent Application                   
   Name(s) of inventor(s)                         
                                    
                                    
   Name of invention                        

2.     Assignment.  Assignor hereby assigns to Assignee, its successors, representatives and assigns, all right, title and interest in the Patent Application and in all divisions, renewals and continuations thereof, and in all letters patent granted thereon, including all reexaminations, extensions and reissues thereof.  Assignor hereby requests the Commissioner of Patents of the United States to issue all Letters Patent granted pursuant to the Patent Application to Assignee, its successors, representatives and assigns.

3.     Payment.  In consideration of the assignment of the Patent Application pursuant to this Agreement, and of the promises and covenants contained herein, Assignee shall pay to Assignor a fee in the amount of $            , payable as follows:                                                                                       .

4.     Assignors Representations and Warranties.  Assignor hereby represents and warrants that it has the legal right and authority to execute this Agreement, and to validly assign the entire interest in the Patent Application to Assignee.  Assignor further represents and warrants that it has not executed any other agreement that would conflict with the terms of this Agreement, nor shall it execute any such agreement in the future.

5.   Further Actions.  Assignor hereby agrees to execute any further agreements and to take any further actions necessary to aid Assignee in perfecting its interest in the Patent Application, and in any letters patent granted thereon, and in enforcing any and all protections or privileges deriving from the Patent Application or from said letters patent.

6.   Governing Law.  This Agreement shall be construed in accordance with, and governed in all respects by, the laws of the State of ___________________, without regard to conflicts of law principles.

7.   Counterparts.   This Agreement may be executed in several counterparts, each of which shall constitute an original and all of which, when taken together, shall constitute one agreement.

8.   Severability.   If any part or parts of this Agreement shall be held unenforceable for any reason, the remainder of this Agreement shall continue in full force and effect. If any provision of this Agreement is deemed invalid or unenforceable by any court of competent jurisdiction, and if limiting such provision would make the provision valid, then such provision shall be deemed to be construed as so limited.

9.   Notice.   Any notice required or otherwise given pursuant to this Agreement shall be in writing and mailed certified return receipt requested, postage prepaid, or delivered by overnight delivery service, addressed as follows:

   If to Assignor:      
      
      
      

   If to Assignee:         
         
      
      

10.   Headings.   The headings for section herein are for convenience only and shall not affect the meaning of the provisions of this Agreement.

11.   Entire Agreement.   This Agreement constitutes the entire agreement between Assignor and Assignee, and supersedes any prior understanding or representation of any kind preceding the date of this Agreement. There are no other promises, conditions, understandings or other agreements, whether oral or written, relating to the subject matter of this Agreement.

IN WITNESS WHEREOF, the parties have caused this Agreement to be executed the day and year first above written.


ASSIGNOR

                  
Signature
                  
Print Name
ASSIGNEE

                  
Signature
                  
Print Name


State of                )
)
County of __________________________   ) ss


I, the undersigned, a Notary Public in and for said County, in the State aforesaid, DO HEREBY CERTIFY THAT ______________________________________________________________ personally known to me to be the same person whose name is subscribed to the foregoing instrument, appeared before me this day in person, and acknowledged that ________________ signed, sealed and delivered the said instrument as his/her/their free and voluntary act, for the uses and purposes therein set forth.

Given under my hand and notarial seal, this __________ day of ____________, 20____.


_______________________________
Signature of Notary Public

(Seal)
_______________________________
Printed Name of Notary

My commission expires on ______________________________, 20____.


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Thank you for your excellent services. My legal documment worked out fine. I was able to edit the form to my needs.


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Found it to be very useful in organizing my thoughts in relation to a potential patent assignment, and liked the way in which it could be modified to suit particular needs and circumstances.


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