Patent Owner's Rights and Duties
What rights does the patent give the owner?
The patent contains a grant to the patentee that gives the patentee "the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States" and its territories and possessions for 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application under 35 U.S.C. Sections 120, 121 or 365(c), from the date the earliest application was filed and subject to the payment of maintenance fees as provided by law.
What maintenance fees must be paid?
All utility patents that issue from applications filed on and after Dec. 12, 1980 are subject to the payment of maintenance fees that must be paid to maintain the patent in force. These fees are due at 3˝, 7˝ and 11˝ years from the date the patent is granted.
SIDEBAR: Failure to pay the current maintenance fee on time may result in expiration of the patent. A 6-month grace period is provided during which the maintenance fee may be paid with an additional surcharge.
Can the owner assign, license or sell the patent?
Yes, the patent law provides for the transfer or sale of a patent or of an application for patent by an instrument in writing. The instrument making the transfer is referred to as an assignment and may transfer the entire interest in the patent. The assignee, when the patent is assigned to him or her, becomes the owner of the patent and has the same rights that the original patentee had.
A mortgage or security interest of patent property passes ownership to the mortgagee or lender until the mortgage or security interest has been satisfied and a retransfer from the mortgagee or secured party back to the borrower or debtor is made.
A conditional assignment also passes ownership of the patent and is regarded as absolute until canceled by the parties or by the decree of a competent court.
Can a part interest be assigned?
Yes, the statute also provides for the assignment of a part interest-that is, a half interest, a fourth interest, etc.-in a patent. There also may be a grant that conveys the same character of interest as an assignment but only for a particularly specified part of the United States.
Should an instrument assigning a patent be notarized?
Yes, an assignment, grant or conveyance of any patent or application for patent should be acknowledged before a notary public or officer authorized to administer oaths or perform notarial acts. The certificate of such acknowledgment constitutes prima facie evidence of the execution of the assignment, grant or conveyance.
If the patent owner dies, what happens then?
A patent is personal property that the patent owner may leave to his or her heirs by will, or in the absence of a will, the patent will pass to the heirs of the deceased owner according to state law governing intestate estates.
Does the assignment have to be recorded with the Patent Office?
Yes, the assignment should be recorded with the Patent Office. If an assignment, grant or conveyance of a patent or an interest in a patent or an application for patent is not recorded in the Patent Office within 3 months from its date, it is void against a subsequent purchaser for a valuable consideration without notice, unless it is recorded prior to the subsequent purchase.
What about licensing of the patent?
The owner of a patent may grant licenses to others. Since you as the patentee have the right to exclude others from making, using, offering for sale or selling or importing the invention, no one else may do any of these things without your permission. A patent license agreement is in essence nothing more than a promise by the licensor not to sue the licensee.
SIDEBAR: No particular form of license is required; however, some states do have specific formalities that must be observed in connection with the sale of patent rights. A license is a contract and may include whatever provisions the parties agree upon, including the payment of royalties.
Do I need an attorney to draw up an assignment or license agreement?
While you can find forms for assignments and license agreements of patent rights, you should consider having an attorney draw up these types of agreements, or if they are drafted by the other party, you should have your attorney review them.