A U.S. patent has piqued your interest, and you want to know who owns it. How do you do that?
Well, before you get into your Sherlock Holmes mode, be aware that it’s possible that the original owner transferred the patent to someone else without publicizing that transfer (ill-advised as this may be, as we explain below), so it is very difficult to provide a definitive answer to the question “who owns it?” But, there are ways to research it and feel reasonably confident that you have found the owner.
Here’s the breakdown of who might own it, and how to research patent ownership.
The Patent Might Be Owned By:
The Named Inventor(s)
Typically, patent ownership begins with the named inventor. Under U.S. patent law, the original creator of an invention is considered the owner, by default, so the first place to look is on the face of the actual patent itself, where the name of the inventor is clearly printed.
If there are multiple inventors named on the patent, all of them share joint ownership of the entire patent. This means that each named inventor-owner has equal rights to use, license, or sell their interest in the entire patent without needing permission from the other inventors (barring some preexisting agreement that says otherwise).
So, start with the front page of the patent to see the names of the inventors and original owners.
A Non-Inventor Applicant
A step beyond that, you should know that an inventor can transfer ownership of their patent rights. Often, this happens through an employment agreement that requires the employee to give the company ownership of all inventions made on company time or with company resources.
Patent law does allow a company to apply for a patent made by one of its employees. The company still must name the employee as the actual inventor but, if the employee is required to assign ownership to the company (even if the employee hasn’t yet signed the paperwork to make that assignment), the company can name itself as the “applicant” for the patent.
In that case, the company applicant ends up preparing and filing the patent application and, sometime during the patent examination process, the company asks the employee inventor to sign the ownership transfer paper. That ownership transfer document is called an “assignment.” This assignment is then filed with the U.S. Patent & Trademark Office (“Patent Office,” for short).
In such a scenario, the front page of the patent that ultimately is issued lists the company as the “applicant” for the patent. This means either that the company already owns the patent or that the employee is required to assign ownership. Unless there is a dispute later between the employee-inventor and the company-applicant, the named applicant probably owns the patent.
So, if the front page of the patent lists an “applicant” that is different than the “inventor,” then the applicant is probably the owner of the patent, at least on the day that the patent issued.
An Assignee Named on the Patent
On the other hand, maybe the company doesn’t have a signed contract with its employee or maybe the inventor is an independent contractor. In that instance, the company must buy the invention (perhaps by buying the pending patent application). In these circumstances, the company won’t be the applicant but it can acquire ownership.
When the patent is about to issue, the company can file paperwork to list its transferred ownership on the patent. Where such a transfer of ownership occurs, it is usual (but not required) for the patent to list the new owner as the “assignee.”
So, if the front page of the patent lists an “assignee” that is different than both the “inventor” and the “applicant,” then the assignee is probably the owner of the patent, at least on the day that the patent issued.
A Non-Applicant, Un-Listed Assignee Who Has Recorded Their Ownership Rights After Patent Issuance
While the cover page of the patent is a quick and useful way to see who owned a patent on the day it issued, patent ownership can be transferred after the patent is issued. In that instance, the new owner won’t be listed on the patent. So how do you find out if that patent is owned by such a “non-applicant, un-listed assignee”?
The Patent Office allows and encourages patent owners to make their ownership public, by recording the assignment that changes patent ownership. This recordation process also can be used to record a less-than-total property interest in the patent (e.g., a lien that a bank takes when the patent is used as collateral for a loan).
To access the USPTO’s patent assignment records, look up the publicly available online USPTO assignment search tool to search for recorded patent ownership and related property interests by following these steps:
- Go to the USPTO assignment search page by navigating to the official USPTO website. Under the “Patents” section, locate the “Transfer Ownership” link, or the “Search for Assignments” option.
- Access the assignment database by clicking on the link to enter the assignment search tool, called the “Patent Assignment Search” and previously referred to as the “Assignments on the Web” database.
- Enter search criteria to look up assignment records. You can search by patent number, application number, assignee name, assignor name, or recorded date. Ensure you input accurate details to refine your search.
- Review results, which display details such as the names of the assignor and assignee, the date of the transaction, and the recorded documents will be visible.
- Download or print the assignment record for your reference. This can be useful for legal verification or documentation purposes.
Checking USPTO assignment records also is the best way to verify whether the inventor has assigned their rights to someone else, whether the applicant is still the owner, whether the listed assignee is still the owner, etc.
An Un-Recorded Assignee
Notably, while assignments may be recorded with the USPTO, the law does not require assignments to be recorded. This means there may be a change in patent ownership that is not reflected in these records if the parties choose not to record them. So, it is possible that someone bought the patent, but did not record their assignment. This makes their ownership “secret”, but it also puts the un-recorded assignee in jeopardy of losing ownership rights to a later-in-time purchaser. Therefore, additional diligence may be required to confirm the complete ownership history of a patent.
Why You Should Always Record Assignments
Although the law doesn’t require recordation of patent ownership changes, it is strongly recommended that all such changes be recorded at the USPTO. If you don’t, there is a possibility that another purchaser—who doesn’t know about your ownership—buys the patent after you from the (duplicitous) owner who sold it to you. If you haven’t recorded, then the later purchaser might be a good-faith or “bona fide” purchaser and have superior rights to yours!
The concept of a bona fide purchaser is critical when dealing with patents that do not have a recorded assignment. A bona fide purchaser is someone who acquires property—in this case, a patent—without knowing about any earlier claims or disputes regarding its ownership and provides something valuable (consideration) for their part of the transfer. When a patent’s assignment has not been recorded with the USPTO, that creates uncertainty surrounding the chain of title. This means that a bona fide purchaser who takes ownership in good faith and without notice of conflicting rights may be afforded certain protections by law against previous unrecorded interests.
To avoid disputes in the first place, it is vital for potential purchasers to conduct thorough due diligence, including investigating the transaction history and any claims of ownership related to the patent in question.
Conclusion
Doing your homework about patent ownership is a critical step in ensuring clarity and avoiding potential legal disputes. Key methods include reviewing:
- the face (or cover page) of the patent
- the public assignment records maintained by the USPTO and
- the assignment documents themselves.
Consulting a patent attorney and conducting comprehensive due diligence can help uncover any competing claims or unrecorded interests.
By using these strategies, individuals and businesses can gain confidence in the chain of title for the patent that has caught their interest.
Lapple Ubell IP Law is an intellectual property law firm based in Irvine, California, dedicated to helping clients protect, manage, and enforce their innovations and creative assets. The firm provides strategic counsel on patents, trademarks, copyrights, and related IP matters for businesses of all sizes.
The author, Matt Lapple, is an experienced intellectual property attorney and a past-president of the Orange County Intellectual Property Law Association. If you have questions please contact Matt at matt@lappleubell.com or 949-756-4889.
