Patent Assignment: How to transfer Patent ownership

Owning a patent provides significant legal and financial benefits. These include the exclusive right to prevent others from manufacturing, selling, using, or importing the claimed invention, and the ability to enforce these rights against infringers.

For businesses, it is essential to establish ownership correctly. A company can only be the patent owner if the inventors have formally transferred their rights. This is why a patent assignment is critical, especially when employees create intellectual property (IP) in the course of their work.

What is a Patent Assignment?

A patent assignment occurs when one party (the assignor) transfers all or part of their rights, title, and interest in a patent or patent application to another party (the assignee). The assignee then holds the exclusive rights to:

• seek patent protection,
• license the invention, and
• enforce the patent.

If a company wants to benefit from patent rights, it should ensure that it owns the patents produced by its inventors. This ownership is secured through a proper assignment process.

Patent Assignment vs. Licensing

These two concepts are often confused:

• Patent Assignment: The inventor permanently transfers ownership of the invention to another entity (e.g., the company).
• Patent License: The inventor or patent holder allows another party to use the invention under agreed terms, but does not transfer ownership.

Employment Agreements and Patent Ownership

To secure ownership of employee-created IP, companies should implement strong employment contracts. These should include:

1. Advance assignment of any IP created during employment or using company resources.
2. Obligation to disclose any IP developed under such conditions.
3. Continuing duty to provide information and execute documents related to the invention, even after employment ends.
4. Confidentiality clauses to protect trade secrets and prevent unauthorized disclosures.

Employers should also encourage the use of invention disclosure forms and may offer incentives for innovation.

Non-Employee Innovators

Independent contractors, joint collaborators, or researchers affiliated with academic institutions may also generate inventions. In such cases, formal agreements—similar to employee contracts—are necessary to ensure proper transfer of rights before they begin work.

Assignments for New Patent Applications

Assignments should be obtained for each new patent application, in addition to signed employment contracts. While employment agreements set out general obligations, they may not specify particular patent applications. To avoid disputes, it is best to secure assignments at the time of filing.

Executing a Written Assignment

A valid assignment should:

• Be in writing (oral agreements are not enforceable).
• Identify the assignor and assignee clearly.
• Identify the patent or application (title, inventors, filing date, etc.).
• Be signed by the assignor(s).
• Ideally, be notarized or witnessed for added validity.

In the Philippines, assignments can be recorded with IPOPHL to secure enforceability and provide notice to the public. Failure to record may leave room for disputes over ownership.

Assignments in Foreign Jurisdictions

If patents are filed abroad, it may be necessary to record the assignment in those countries as well, since some jurisdictions only recognize the assignee’s rights upon proper recordation. Each country may have its own formal requirements, so consultation with local IP counsel is recommended.

Handling Refusal to Sign

If an inventor refuses to sign, the company may rely on employment agreements, invention disclosures, or internal policies as supporting evidence of ownership. However, securing written assignments early helps avoid complications.

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