In the United States, only natural persons are qualified to apply for patents – and by natural persons, we mean businesses aren’t included in the legal definition. But businesses can own patents, such as when their employees make inventions, particularly when these inventions are in some way related to their employee activities.
For example, if a scientist in a research and development company invents a new process or product, then his company can claim ownership over it. But if a janitor in the same company invents an unrelated product or process in his free time, then his company cannot automatically own the patent rights to it.
For this reason, employees typically have a relevant clause in their employment contracts where they assign all of their patent rights to the companies where they are employed. But herein lies the rub: Do you or do you not actually own the patent rights by virtue of assignment? Here’s how you can check for it.
The agreement between you and the inventor, who may or may not be an employee of your company at the time of the patent issue, for assignment of the patent rights is your best reference material. You should have a patent lawyer read through the agreement to check if, indeed, your patent ownership is still current and valid.
Said agreement should also have been recorded with the USPTO for it to be legally recognized by the government including the courts in case of infringement litigations. For recording purposes, the signed and notarized agreement assignment should be sent to the USPTO along with the appropirtae cover sheet and fee.
Patents are rights of ownership that can be assigned and transferred from one entity to another. The assignments of patents can be searched for in the United States Patent and Trademark Office (USPTO) using either the Google Patents feature or the USPTO Assignments database.
You should have the patent number so as to make the search easier. Just enter the patent number – without commas as these will affect the search results – into the search bar when using Google Patents. When using the USPTO website, enter the 7-digit patent number; if the patent number has less than seven digits, just add the preceding zeros.
For example, in Google patents, a patent number 1,234,567 should be entered as 1234567. For the USPTO database, a patent number 456,789 should be entered as 0456789.
If you’re searching for assignees, you have to enter the name of the individual to whom ownership of the patent was assigned at the time of its issue. You can also ask for the assistance of USPTO staff or a lawyer if you’re experiencing difficulties in your patent assignment search.
Assignment of patent rights can be a tricky subject, especially for non-lawyers, so it’s best to hire a patent lawyer if you want an iron-clad assignment agreement.
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