Baker Donelson - USA
The US Patent and Trademark Office (USPTO) now makes copies of patent assignments available for immediate download. This is a deviation from prior practice, under which interested parties were forced to order assignments from the USPTO, pay a fee of $25 per request and then wait for US mail delivery. Although a seemingly small gesture, the new USPTO service is valuable to patent practitioners and IP professionals who often need expedited access to assignment records for diligence purposes or otherwise to diagnose inventorship or ownership issues.
Any due diligence of a company’s IP rights identifies and confirms the assignment status of patent assets. This is because the proper assignment of patent rights pre-emptively circumvents numerous IP pitfalls. As just one example, executed patent or patent application assignments prevent employee inventors from later claiming ownership of an invention or from practising or developing covered technology individually or through a competing entity. During a critical diligence process, it is now quicker and cheaper to obtain assignment documentation directly from the USPTO.
Assignment documents are available through the USPTO patent assignment search page. However, the location of the document is not immediately apparent. An interested party may use the search page itself to search for assignment documents by patent number, patent application number, patent application publication number, assignor name or assignee name. The search page then provides a history of conveyances (along with corresponding reel and frame numbers) for the particular patent or patent application. A PDF icon appears next to the name of each conveyance (eg, security agreement or assignment of assignor’s interest), which then provides click-through access to a PDF copy of the conveyance document. Otherwise, a searching party may simply click the reel and frame number of a particular conveyance to view summary data regarding that particular document. A PDF copy of the document is then similarly available from the individual summary page.
Assignment documents are not accessible through the assignments tab of the Patent Application Information Retrieval system (known as 'Public Pair'). Further, the USPTO patent assignment search page provides access to patent assignment documents for issued patents and published patent applications.
The public availability of assignment documents is in line with patent file history information available through Public Pair. The new service is welcome news to patent practitioners and IP professionals. Under prior practice, last minute diligence projects faced potential delay while awaiting mail delivery of ordered assignment documents; now, the information is available with the click of a button.
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