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How to Assign a Patent Application to Your Startup Company

Detail from an illustration of a machine by Leonardo da Vinci

Detail from an illustration of a machine by Leonardo da Vinci

Your invention is so novel and non-obvious that you have applied for a patent. You have formed a legal entity (see Should I form an LLC or a corporation?) to turn the patent, once it issues, into a revenue stream. How do you assign the patent application to your new entity so your startup company can begin conducting business?

First, you need to prepare an Assignment Agreement. The most important point is that the agreement must assign not just the application, itself, but any patents that are issued with respect to the invention. Here is an example of operative assignment language adapted from Drafting Patent License Agreements by Brian G. Brunsvold and Dennis P. O’Reilly:

I hereby sell and assign to ABC Company the entire right, title and interest in and to the [name of invention] invented by me as described in U.S. patent application number __________, and any and all applications for patent and patents in any and all countries, including all divisions, continuations,reissues and extensions thereof, and all rights of priority resulting from the filing of said U.S. application.

Second, you need to record assignment of the application using the U.S. Patent and Trademark Office’s Electronic Patent Assignment System (EPAS).

Related post: How Can I Switch from a Sole Proprietorship to a Corporation?

Photo credit: HaMyT via flickr

Dana H. Shultz, Attorney at Law  +1 510-547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.