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Who Should I Assign My Patent Rights To?

In order to transfer patent rights from an inventor (Assignor) to an entity (Assignee), the inventor must sign an assignment agreement. Upon execution, the assignment agreement become a legally binding and enforceable contract.

With the assignment, each inventor transfers the patent rights embodied in the patent or patent application to the Assignee. In turn,the Assignee has the right to make/use/sell the invention, or file subsequently patent applications claiming priority to the subject matter disclosed within the assigned patent application. Upon assignment, the inventors will no longer have any rights to the invention.

Having the application assigned to the entity who will be making/using/selling the invention may be recommended. If the rights are not assigned to an entity, then they remain with the inventor. In the case of multiple inventors, the rights remain with the inventors jointly. This means that each inventor may use those patent rights without the consent of the other inventor. This creates problems, friction, and is a recipe for conflict.

To prevent the conflict, the inventors may form an entity together. The each inventor may have a stake and voting rights in that entity. Then, the inventors may assign their patent rights to that entity. In turn, the patent rights will be controlled by a single resolution of the entity. Such resolutions may be collectively enacted by a vote of the members of the entity (e.g., the inventors). Additional details about how a company can control patent rights can be found here.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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