Registering Patent Ownership
Updated: Apr 22
You’d think that ownership of Intellectual Property is the business of lawyers. After all, they handle the contractual relationships between the parties. However, as a patent attorney, I find myself dealing with all sorts of legal questions which come as an adjunct to my work and, surprisingly, take up a lot of my time.
My law firm has tax, corporate, employment and capital markets departments helping Israeli firms and I find that I have dealings with most of them. I also deal with multi-country issues.
Whenever we file a patent application, we need to know who the inventors are and who the patent owner, or the applicant, is. The question of inventorship isn’t easy, but it is one of fact and is not the question for this article.
Usually, the company where the inventors work is the patent owner. But sometimes, there is no company. Or one of the inventors is a consultant to the company. Or, the company is a subsidiary. Or the company received money from the Office of the Chief Scientist. Or the inventor is a graduate student at a university. Or the inventor is just starting out and hasn’t decided yet whether or not the idea is strong enough to use as the basis of a new company.
All of these situations affect who owns the invention and the situations need to be solved before I can file the patent application. By ‘solved’, I mean that the necessary contractual obligations are in place and signed, or that the relevant tax issues have been considered, or that the employment lawyer has agreed that the inventor, and not his previous employer, owns the invention.
Now that we know who the patent owner is, it would seem a simple issue to register the ownership. Would that it were so easy …
Most of the time it is. For assignments from inventors to companies, the inventors are usually at the company, so signing the document, with a witness who isn’t a family member, can be done at work. Then there are the folks who work at home. It is a great difficulty for them to find a witness, since they can’t use an easily available, family member. And signing in front of a notary is even more complicated, especially in Israel where notaries aren’t as inexpensive and common as they are in the US.
When the inventor has left the company on bad terms, as so happens in startups, getting the inventor to agree to sign is not easy. I often have to act as the go-between, talking to both the company and the inventor, to smooth ruffled feathers and to explain that the inventor is not giving away any new rights in this new document. The assignment I have them sign is a formal document discussing only the assignment of the patent rights, as opposed to the employment or consulting contract I would otherwise have to file, which lists the other arrangements between the inventor and the company.
Our assignment, though, is only formal if the employment/consulting agreement contains the same clauses. These cover assignment of rights in all inventions and in all of the patent applications which stem from them (a patent application may be filed in multiple countries, may have ‘children’ applications, etc). The clauses also include the inventor’s agreement to help the company establish its rights in the invention, to appear in court, furnish documents, etc. These clauses need to be in the original contract.
It’s not just inventor-company assignments that give me trouble. Corporate contracts, where buying patents is part of the contract, are also fraught with trouble. Here, the corporate lawyer have to write the contract properly to provide me with a separate schedule listing the patents / applications being transferred so that the new owner can register its title in each of the affected patents and applications.
There is also a problem when the company is buying patents that have been used as collateral for a loan, a common practice. The bank providing the loan usually registers a lien on the patents, noting its interest in the patents. Whenever a client tells me that they are in the process of buying patents, I check the status of the patents and check if there is a lien which has to be removed as part of the sale.
Releasing the lien isn’t complicated, but the contract has to be written with the release as a separate schedule, with a separate list of the affected patents and applications, so that its removal can be separately registered in the affected patents and applications. It also needs to be registered as a release separately from the registration of the assignment of rights to the new owners.
It seems obvious that all of the documents we are discussing need to be signed. It seems obvious that they all need to be dated as well. However, for some reason, many of the signed documents sent to our office are not dated and we have to send them back for dating.
Finally, many signed documents require notarization –proof that the signature is from the person who is listed on the document. When such a signed and notarized document is sent to another country, the other country doesn’t recognize the notary and requires some sort of government approval of the notary. Some countries require an ‘apostille’ statement, others require other forms of approval. The apostille procedure is relatively simple; the other procedures require running between government and consular offices.
While none of this work is difficult, it requires dealing gently with many different people – the inventors, the legal department, the secretaries, the consultants, etc., and helping them solve the logistical issues which occur, particularly when the people who are required to sign are not easily available. Over the years, I have become an expert at this.