A license is a grant (assignment) to the licensee of various licensed rights. The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another. Thus, the first recordation of a license may be recorded as a “license,” while the assignment of those same licensed rights to another entity may be recorded as an “assignment.” The only way to really understand the situation is to review the actual documents, which are all readily available from the recordation branch of the patent office.
Note that the patent office sometimes refers to licenses as a species of assignment. That is correct, because one is assigning license rights.
Not necessarily. Assignments are only needed if you are contractually obligated, by employment or otherwise, to make the assignment.
An important corollary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name. Investors are usually unhappy with that arrangement, but there can be significant advantages. One major advantage is that the patent holder is a “necessary and indispensable” to any litigation over patent validity. Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.
Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications. See the previous FAQ.
Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications. That is a dangerous strategy. In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company, or divorce.
It is not technically necessary to re-file assignments for divisional or straight continuation applications. A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications.
In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications. Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee.
Absolutely. Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues.
Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office.
Note that the office charges US$ 40 for each patent or patent application listed on the recordation form. Thus, if an assignment references a family of 5 patent applications, the recordation fee is US$ 200. Of course paralegal charges would also apply, and possibly attorney time.
Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment. The statute is similar to recording statutes used for recording real property. Thus, although there is no requirement to record an assignment, it is foolish not to do so.
Note that absent some unusual circumstance, patent assignments do not have to be notarized for use within the United States.
Preparing assignments is usually a simple matter of filling in the blanks of a form. Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in Strategic Patenting .
Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document. The recording branch does not generally read the documents to verify the content.
The Patent office will proceed as if the signature had been procured from the inventor, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached. Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights.
In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished. Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact.
One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form.
In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees).
It depends on the wording of the assignment and the recordation laws of the foreign countries. Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications. Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country.
Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments.
Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office. Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages.
The main disadvantage to recording assignments is that many countries (including most or all of Europe) consider assignment of a patent or application to be a taxable transfer, and charge VAT (Value Added Tax) on the estimated value of the application or patent. Since the value is often low in the early days, and can rise considerably during the life of the patent, the disadvantage of recordation can be mitigated by registering early.
Assignments records at the USPTO are available for public inspection , but only for patents and published applications. One can search by reel/frame number, patent or publication number, and assignor or assignee name.
The underlying documents are not available for download, but can be ordered from the assignment branch. Paper mail requests can take months, but faxed requests are usually filled within a day or two.
No. One should never rely upon the designation of “assignee” as set forth on the face of a patent. First, the patent office obtains the “assignment” information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct. The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment. Second, the patent is never altered after it is published. Information that was correct at one point in time may well be superseded down the road. Third, even if the “assignee” information is correct, one cannot know from the face of the patent what rights were assigned. It might well be that only licensed rights were assigned, or that such rights are subject to a reversion.
Yes. But there can be real problems with multiple owners of a patent. Unless there is some other agreement restricting what an entity can do with its ownership interest, a co-owner of any portion of a patent, (whether 99% or 1% or .0001%), can make use of the patent however they want. For example, a .0001% owner of a patent could license out its rights, and keep 100% of the license fee. Absent an agreement to the contrary, there is no duty of a co-owner of the patent to share license fees with any of the other co-owners.
One of the big problems with two entities owning portions of a given patent is that the two entities can compete with each other with respect to license fees. For example, if co-owner A offers to license the patent rights for 7%, co-owner B might choose to undercut the previous offer by offering to license the same rights for 5%. But then co-owner A comes back and offers to license the rights for 2%. Pretty soon the value of the license rights goes to zero. Also, if co-owner A gets upset with co-owner B, co-owner A could unilaterally abandon the patent, which would make it worthless to everyone.
Even if co-owners agree to share license fees 50-50, there can be problems. For example, co-owner A could decide to license out its patent rights for one dollar a year to a licensee that co-owner A owns, has an interest in, or perhaps has a relative with an interest in. Of course co-owner A would be happy to share $0.50 of its annual license fee with co-owner B, but co-owner B would be pretty upset.
Still further, if there is a chain of patents, for example with a parent and a child patent in the same family, the ownership of both patents has to remain to the same at all times. If, for example, both a parent patent and a child patent are 100% owned by A, assignment of some or all of the child patent to B will immediately invalidate the child patent. Even if such an assignment is made, and the parties realize the mistake, reassigning the child patent back A would not cure the mistake. The child patent would remain abandoned.
Bottom line, co-ownership of a patent is really problematic.
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Patent Assignment: Everything You Need to Know
A patent assignment is an irrevocable agreement for a patent owner to sell, give away, or transfer interest to an assignee, who can enforce the patent. 6 min read updated on November 05, 2020
Patent Assignment: What Is It?
A patent assignment is a part of how to patent an idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner's interest and gains exclusive rights to intellectual property. He or she can sue others for making or selling the invention or design.
There are four types of patent assignments:
Assignment of Rights - Patent Issued: This is for patents that have already been issued.
Assignment of Rights - Patent Application : This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.
Assignment of Intellectual Property Rights - No Patent Issued or Application Filed: This is for unregistered inventions with no patent.
Exclusive Rights
Advantages of a Patent Assignment
Assignees don't create a unique invention or design. They also don't go through the lengthy patent process. They simply assume exclusive rights to intellectual property.
Profit Potential
Many patents cover intellectual property that can earn the owner money. A patent owner can charge a lump sum sale price for a patent assignment. After the transfer, the assignee can start to earn profits from the patent. Both original owners and assignees can benefit from this business arrangement.
Disadvantages of a Patent Assignment
Too Many or Not Enough Inventors
Patents can have multiple owners who invented the product or design. Sometimes patents list too many or not enough inventors. When this happens, owners can argue about an incorrect filing. This kind of dispute can make a patent assignment impossible.
Limited Recourse
Older patents may already have many infringements. Not all patent assignments include the right to sue for past infringements. This is known as the right to causes of action. This can cost the assignee a lot of potential profit.
Examples of What Happens When You File a Patent Assignment vs. When You File a Patent License
When You File a Patent Assignment
The patent owner changes permanently. You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public.
Many owners charge a one-time fee for a patent assignment. The original owner doesn't receive additional payments or profits in the future. The new owner receives future profits.
When You File a Patent License
The patent owner doesn't change permanently. Most licenses have a time limit. At the end of the period, the original owner takes control again. Licensing information isn't always available through an online USPTO search. Contact the recordation office directly to get information about patent licenses.
The licensee can assign rights to another person or company. This adds another layer of ownership over the intellectual property.
Many owners charge royalties for a patent license. The licensee pays royalty fees throughout the license period. If the royalty fees are high and the license period is long, a patent assignment may be a better choice for earning the new owner more money.
Common Mistakes
Not Filing an Assignment Document
A verbal agreement is not official. File a patent assignment to change patent ownership.
Taking Action Before Filing
The assignee shouldn't make or sell the invention before the patent assignment is official. If an error or another problem happens, this could be patent infringement .
Making a Filing Error
Patent assignments are official documents. The assignee's name must be legal and correct. Before filing, check the spelling of the assignee name. If the assignee is a business, confirm the legal name. Many patents have more than one owner. List all names on the assignment.
Misidentifying the Patent
Include as much information about the patent as you can. List the patent number and title. Describe the intellectual property completely.
Not Searching for Security Interests
Patents can be collateral. A bank or another party can file a security interest in a patent, and this can limit how much an assignee can earn from a patent. Check for security interests before filing a patent assignment.
Not Filing a Proprietary Information Agreement
Many businesses file patents, as this is part of a business plan , and it's especially common for startup businesses. Inventorship problems can happen if employees file patents instead of the business.
Often, employees have an obligation to assign inventions to a company. This is true if they developed the invention on the job.
To avoid confusion, require employees to sign a proprietary information agreement. This automatically assigns inventions and designs to the business. Other options include signing an automatic assignment or an explicit assignment. These all clarify patent ownership.
Not Being Notarized
Make sure all official documents concerning your patent are notarized. There is a huge legal advantage to being notarized. It makes it so that your documents will be accepted as correct until it is proven otherwise. If you can't get your documents notarized, gather two witnesses. Have them attest to the signatures.
You have to file a patent assignment within three months of signing the form. If you don't, the assignee could lose ownership rights.
Frequently Asked Questions
Where Do I Record a Patent Assignment?
If you have a U.S. patent, record your patent assignment with the USPTO. If you have a foreign patent, file with the correct national patent offices.
I Can't Get a Signature from the Inventor. What Happens Now?
First, it needs to be officially established that:
- Whoever is pursuing the application has the right to do so.
- The inventor cannot be reached.
In order to establish this, the patent office will need a copy of the following:
- the employee agreement
- the assignment
- other evidence of the rights
After that, the patent office will continue as if the signature has been obtained, even though it hasn't.
If the inventor has died, the patent office will try to contact the person in charge of managing the deceased's estate or the heir. If the invented refuses to sign or is missing, the patent office will ask for a declaration from the person who is trying to contact them. They will also look at the following items that have been sent to the inventor:
- Do I Have to File a Patent Assignment if the Owner's Name Changed?
No, you don't need a patent assignment if only the person's or company's name changed. If the company merged with another, you may need a patent assignment.
What if I Make a Mistake on My Patent Assignment?
You can't correct a patent assignment. You have to assign it back to the original owner. Then you have to reassign with the correct information.
How Much Does a Patent Assignment Cost?
The patent assignment fee is $25. Filing electronically doesn't cost extra. You do have to pay an additional $40 fee if you file on paper.
Should I Hire a Lawyer?
Yes, you should get a lawyer to help with a patent assignment. A lawyer will make sure there are no filing errors. A lawyer knows how to describe the patent correctly. Errors and bad descriptions can limit the power of a patent assignment. This could cost the assignee a lot of money in future profits and legal fees.
Steps to File a Patent Assignment
1. Fill Out a Recordation Form Cover Shee t
The Recordation Form Cover Sheet is an official USPTO document. This includes the names of the assignor(s) and the assignee(s). It also includes the patent title and number.
2. Complete a Patent Assignment Agreement
The patent assignment agreement should list the assignor(s) and the assignee(s). It should state that the assignor has the right to assign the patent. It should also describe the intellectual property clearly and completely. It should also explain any financial or other transactions that have to take place. This includes a description of the lump sum payment.
3. Sign the Patent Assignment Agreement
All patent owners and assignees must sign the patent assignment agreement.
4. Submit the Patent Assignment
Finally, submit the patent assignment with the USPTO. You have to pay the assignment fee at this time.
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The following table lists the patent fees charged by the United States Patent and Trademark Office. USPTO Trademark Fees are listed separately. A complete copy of the USPTO's fee schedule is available from their website .
Quick Jump: Patent Trials and Appeals Board (PTAB) | PCT: International Stage - National Stage - WIPO | Hague Convention
USPTO Fee changes : Fees increased effective January 16, 2018 PCT Fee Changes: Some International Stage and National Stage fees changed January 16, 2018 PCT Fee for search by EPO and Rospatent changed as of December, 2017 PCT Fee for search by IPO Singapore changed as of November 1, 2017 PCT Fee for sarch by ILPO changes as of July 1, 2017 PCT Fees for search by JPO and KIPO changed as of March 1, 2017 WIPO fees and International Fees changed January 1, 2017 The "Large Entity Fee", "Small Entity Fee" and "Micro Entity Fee" columns on this page incorporate changes to USPTO fees which became effective through the last update of this page - changes which have been announced, but are not yet effective, are listed in the "pending fees" columns. Upcoming changes will be incorporated as they are announced. See this page on our website for instructions on how to decide if you are entitled to small entity or micro-entity fees. DESCRIPTION Large Entity Fee Small Entity Fee Micro Entity Fee Utility Application Basic Filing Fee 320 128 64 Utility Application Basic Filing Fee (Small Entity) if filed electronically n/a 64 n/a Excess Claims: more than three Independent Claims (per indep. claim over 3) 480 192 96 Excess Claims: more than 20 total claims (per claim over 20) 100 40 20 Excess Claims: surcharge if there are any multiple dependent claims 860 344 172 Utility Application Search Fee 700 280 140 Utility Application Examination Fee 800 320 160 Surcharge - Late Filing Fee, search fee, examination fee or oath/declaration 160 64 32 Surcharge - Late Provisional Filing Fee or Cover Sheet 60 24 12 Design Filing Fee or Continuing Prosecution Application (CPA) 220 88 44 Design Search Fee 160 64 32 Design Examination Fee 640 256 128 Reissue Filing Fee 320 128 64 Reissue Search Fee 700 280 140 Reissue Examination Fee 2,320 928 464 Plant Filing Fee 220 88 44 Plant Search Fee 440 176 88 Plant Examination Fee 660 264 132 Provisional Application Filing Fee 300 120 60 Excess pages (all applications) - if more than 100 pages, per add'l 50 pages (note: each page in an electronically filed application counts as 3/4 of a page for the purpose of calculating this fee, so that for electronically filed applications this fee becomes, in effect, $420/168/84 for each additional 66 pages if there are more than 133 electronically filed pages) 420 168 84 Extension - First Month 220 88 44 Extension - Second Month 640 256 128 Extension - Third Month 1,480 592 296 Extension - Fourth Month 2,320 928 464 Extension - Fifth Month 3,160 1,264 632 Request for Continued Examination (RCE) (first request) 1,360 544 272 Request for Continued Examination (RCE) (second or more request) 2,000 800 400 Correcting inventorship after first action on the merits (FAOM) Note: does not apply if inventor(s) are deleted, and statement is filed that correction is solely due to cancelation of claims in the application. 640 256 128 "Request for Prioritized Examination" (a/ka/ "Track I" or "Fast Track") of Utility Application 4,200 1,680 840 Request for Expedited Examination of Design Application 1,600 640 320 Petitions under the following 37 CFR sections (group I): § 1.36(a) - for revocation of a power of attorney by fewer than all applicants § 1.53(e) - to accord a filing date. § 1.57(a) - to accord a filing date. § 1.182 - for decision on a question not specifically provided for. § 1.183 - to suspend the rules. § 1.378(e) - for reconsideration of decision on petition refusing to accept delayed payment of maintenance fee in an expired patent. § 1.741(b) - to accord a filing date to an application under § 1.740 for extension of a patent term. 420 168 84 Petitions under the following 37 CFR sections (group II) § 1.12 -for access to an assignment record. § 1.14 -for access to an application. § 1.47 -for filing by other than all the inventors or a person not the inventor. § 1.59 -for expungement of information. § 1.103(a) - to suspend action in an application. § 1.136(b) - for review of a request for extension of time when the provisions of section 1.136(a) are not available. § 1.295 - for review of refusal to publish a statutory invention registration. § 1.296 - to withdraw a request for publication of a statutory invention registration filed on or after the date the notice of intent to publish issued. § 1.377 - for review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of a patent. § 1.550(c) - for patent owner requests for extension of time in ex parte reexamination proceedings. § 1.956 - for patent owner requests for extension of time in inter partes reexamination proceedings. § 5.12 -for expedited handling of a foreign filing license. § 5.15 - for changing the scope of a license. § 5.25 - for retroactive license. 220 88 44 Petitions under the following 37 CFR sections (Group III) § 1.19(g) -to request documents in a form other than that provided in this part. § 1.84 -for accepting color drawings or photographs. § 1.91 - for entry of a model or exhibit. § 1.102(d) - to make an application special. § 1.138(c) - to expressly abandon an application to avoid publication. § 1.313 - to withdraw an application from issue. § 1.314 - to defer issuance of a patent. 140 56 28 Processing fees under the following 37 CFR sections § 1.28(c)(3) - for processing a non-itemized fee deficiency based on an error in small entity status. § 1.41 - for supplying the name or names of the inventor or inventors after the filing date without an oath or declaration as prescribed by § 1.63, except in provisional applications. § 1.48 - for correcting inventorship, except in provisional applications. - but see new fee for filing change in inventorship after first office action §1.17(d), above § 1.53(b)(3) - to convert a provisional application filed under § 1.53(c) into a nonprovisional application under § 1.53(b). § 1.55 - for entry of late priority papers. § 1.71(g)(2) – to enter an amendment to the specification for purposes of 35 U.S.C. 103(c)(2) if not filed within the cited time periods § 1.99(e) - for processing a belated submission under § 1.99. § 1.103(b) - for requesting limited suspension of action, continued prosecution application (§ 1.53(d)). § 1.103(c) - for requesting limited suspension of action, request for continued examination (§ 1.114). § 1.103(d) - for requesting deferred examination of an application. § 1.217 - for processing a redacted copy of a paper submitted in the file of an application in which a redacted copy was submitted for the patent application publication. § 1.291(c)(5) - for processing a second or subsequent protest by the same real party in interest. § 1.497(d) - for filing an oath or declaration pursuant to 35 U.S.C. 371(c)(4) naming an inventive entity different from the inventive entity set forth in the international stage. § 3.81 - for a patent to issue to assignee, assignment submitted after payment of the issue fee. 140 56 28 §1.52(d) Non-English Specification 140 56 28 §1.221—for requesting voluntary publication or republication of an application. 140 140 140 Petition for Revival of an Abandoned Application for a Patent, for the Delayed Payment of the Fee for Issuing Each Patent, or for the Delayed Response by the Patent Owner in any 1453/2453/3453 1.17(m) Reexamination Proceeding 2,100 840 420 Submission of an Information Disclosure Statement (1.97) or third party submission (1.290(f)) 260 104 52 Processing fee for various actions on Provisional Applications (correcting inventorship, convert nonprovisional to provisional, etc) 50 50 50 Filing a submission after final rejection (1.129(a)) 880 352 176 Per add'l invention to be examined (1.129(b)) 880 352 176 Acceptance of Unintentionally delayed claim for priority 2,100 840 420 Utility or Reissue Issue Fee 1,200 480 240 Design Issue Fee 740 296 148 Plant Issue Fee 840 336 168 Publication fee - early, voluntary or normal 0 0 0 Publication fee - republication 320 320 320 Filing Application for patent term adjustment 210 210 210 Request for reinstatement of term reduced 420 420 420 Copy of Patent or Published Patent Application 3 3 3 Plant Patent Copy in color 15 15 15 Copy of Utility Patent or SIR in Color 25 25 25 Paper Copy of Patent Application as Filed 35 35 35 Paper Copy of File Wrapper (no page limit) 290 290 290 Paper copies of documents in file, other than application, per document 25 25 25 Electronic copy of File Wrapper 60 60 60 Certified or uncertified copy of document, not otherwise provided 25 25 25 For Assignment Records, Abstract of Title and Certification 35 35 35 Library Service 50 50 50 Copy of Non-U.S. Patent Document 25 25 25 Certificate of Correction 160 160 160 Processing fee for correcting inventorship in a patent 160 160 160 Request for ex parte Reexamination - streamlined * Micro-entity not available for third-party requestors 6,300 2,520 1,260* Request for ex parte Reexamination - non streamlined 12,600 5,040 2,520 Reexamination - excess independent claims 480 192 96 Reexamination - excess total claims 100 40 20 Petitions in a reexamination proceeding, except for those specifically enumerated in 37 CFR 1.550(i) and 1.937(d) 2,040 816 408 Statutory Disclaimer note: no small or micro entity discount available 170 170 170 Maintenance Fee - 3.5 Years 2,000 800 400 Maintenance Fee - 7.5 Years 3,760 1,504 752 Maintenance Fee - 11.5 Years 7,700 3,080 1,540 Surcharge - Maintenance Fee - 6 Months 500 200 100 Extension of Term of Patent Under 1.740 note: no small or micro entity discount available 1,180 1,180 1,180 Initial Application for Interim Extension Under 1.790 note: no small or micro entity discount available 440 440 440 Subsequent Application for Interim Extension Under 1.790 note: no small or micro entity discount available 230 230 230 Request for Supplemental Examination 4,620 1,848 924 Reexamination ordered as a result of Supplemental Examination 12,700 5,080 2,540 Supplemental Examination document size - nonpatent reference 21-50 sheets 180 72 36 Supplemental Examination document size - nonpatent reference >50 sheets (per 50 sheets or part thereof) 300 120 60 International Type Search Report 40 40 40 Recording Patent Assignment, Agreement or other document - submitted electronically 0 0 0 Recording Patent Assignment, Agreement or other document - not submitted electronically 50 50 50 Publication in the OG 25 25 25 Handling Fee - Incomplete Application 140 140 140 Submission of Sequence Listing of 300 MB to 800 MB 1,060 424 212 Submission of Sequence Listing of more than 800 MB 10,500 4,200 2,100 Additional Fee for Overnight Delivery 40 40 40 Additional Fee for Expedited Service 170 170 170 PCT Fees - International Stage Large Entity Fee Small Entity Fee* Micro Entity Fee* Transmittal Fee 260 104 52 PCT Search Fee for USPTO search (note: Discount for prior US search has been eliminated) 2,180 872 436 Supplemental Search (per additional invention) 2,180 872 436 PCT Search Fee for European Patent Office (EPO) search 2,107 2,107 2,107 PCT Search Fee for IP Australia (IPAU) search (Note: IP Australia may only be used for a limited number of technologies - be sure to check our PCT News Page for the latest list before choosing ISA/AU) 1,587 1,587 1,587 PCT Search Fee for Korean Patent Office (KIPO) search (Note: IP Korea has a list of technologies they will not search - see our PCT News Page for the list) 1,003 1,003 1,003 PCT Search Fee for Israel Patent Office (ILPO) search 1,036 1,036 1,036 PCT Search Fee for Japanese Patent Office (JPO) search (note: only for "green technology") 1,457 1,457 1,457 PCT Search Fee for Russian Patent Office (Rospatent) search 537 537 537 PCT Search Fee for IP Office of Singapore (IPOS) search ( 1,622 1,622 1,622 Preliminary Exam Fee (if US was International Searching Agency) 640 256 128 Preliminary Exam Fee (if US was not ISA) 800 320 160 Supplemental Examination (per additional invention) 640 256 128 Non-electronic filing fee (additional fee for applications filed on paper) 400 200 200 Late Furnishing Fee for Providing a Sequence Listing in Response to an Invitation Under PCT Rule 13 ter 320 128 64 For information on which fees need to be paid to file an International Stage application, see the note below. PCT Fees - National Stage Large Entity Fee Small Entity Fee* Micro Entity Fee* Basic Filing Fee Basic National Stage Fee 320 128 64 Fees in addition to Basic Fee National Stage Search Fee (other - i.e. if none of the exceptions below apply) 700 280 140 - Search fee if USPTO issued IPER saying novelty, inventive step (nonobviousness) and industrial applicability have been satisfied for all claims entering the National Stage 0 0 0 - Search fee if USPTO was ISA and Int'l Search fee paid 140 56 28 - Search fee if USPTO not ISA, but Int'l Search Report is provided to USPTO no later than time at which search fee is paid 540 216 108 National Stage Examination Fee 800 320 160 - Exam fee if USPTO issued IPER saying novelty, inventive step (nonobviousness) and industrial applicability have been satisfied for all claims entering the National Stage 0 0 0 Claims - Extra Independent (Over 3) 480 192 96 Claims - Extra Total (Over 20) 100 40 20 Claims - if application has any multiple dependent claim (also affects total fee calculation) 860 344 172 Surcharge - Oath or Declaration filed after 30 months from priority date 160 64 32 English Translation filed after 30 Months from priority date (large or small entity) 140 56 28 Extra pages - for each 50 sheets over 100 420 168 84 Non-electronic filing fee (additional fee for applications filed on paper) 400 200 200 Fee for filing a petition to revive an international application abandoned unintentionally under 37 CFR 1.137(b) 2,100 840 420 Submission of Sequence Listing of 300 MB to 800 MB 1,060 424 212 Submission of Sequence Listing of more than 800 MB 10,500 4,200 2,100 For information on which fees need to be paid to file an International Stage application, see the note below. PCT Fees - to WIPO or EPO Large Entity Fee Small Entity Fee* Micro Entity Fee* Basic application fee (up to 30 pages)# 1,367 n/a n/a Basic application fee (up to 30 pages) filed on paper with PCT-EASY zip file# 1,264 n/a n/a Basic application fee if application is filed electronically with PCT-EASY zip file# 1,161 n/a n/a Basic supplemental fee (each page over 30)# Handling Fee (Chapter II)# 206 n/a n/a International CD Application# 5,200 n/a n/a Fee for requesting restoration of the right of priority (unintentional only) (No Micro Entity discount as of Dec. 18, 2013) 1,700 850 n/a # - Note : These fees are actually paid by the USPTO to WIPO or EPO in Swiss Francs, and therefore they will change from time to time based on the fluctuations in the exchange rate. Treat these dollar amounts as estimates only, and check when paying fees as to what they actually are at that time. No small entity or micro entity discounts are applicable to WIPO or EPO fees. * - Small Entity and Micro Entity discounts are only available for some (not all) fees charged by USPTO. Other authorities do not offer these discounts. If the fee in the "Small Entity Fee" or "Micro Entity Fee" column is "n/a", this means that the discount is not available, and the next-larger fee must be paid. Note on Fees for Filing PCT Applications Not all of the fees listed in the various PCT sections will actually be paid in any given application. When filing an International Stage PCT application in the USPTO as receiving office, at least the following fees are required: Basic Application Fee (from this WIPO section) Transmittal Fee (from PCT Fees - International Stage ) Search Fee - depends on which search authority is chosen (US, EP, KR, AU or RU) see PCT Fees - International Stage When entering a PCT application into the National Stage in the USPTO, at least the following fees are required (from the PCT Fees - National Stage list, above): Basic National Stage Fee National Stage Examination Fee National Stage Search Fee Other application fees may apply, depending on the application, but these are the only ones which every PCT application filed in the USPTO will pay. Of course, the fees on this table are only the government fees. Attorney fees and expenses are in addition to these fees - for a more complete explanation, see our Patent Budget Estimator Patent Trials and Appeals Board Fees Large Entity Fees Small Entity Fees Micro Entity Fee Petitions to the Chief Judge under 37 CFR 41.3 420 420 420 Notice of Appeal 840 336 168 Filing a Brief - appeal of application or Ex Parte Reexamination 0 0 0 Filing a Brief - appeal of Inter Partes Reexamination 2,100 840 420 Request for Oral Hearing 1,360 544 272 Forwarding an appeal in an application or Ex Parte Reexamination * Third-Party Filers Are Not Eligible for the Micro Entity Fee. 2,360 944 472* Inter partes review (IPR) - request fee, up to 20 claims 19,000 19,000 19,000 IPR - Post-institution fee, up to 20 claims 22,500 22,500 22,500 IPR - claims in excess of 20 for inter partes review - in addition to request fee (per claim) 375 375 375 IPR - claims in excess of 20 for inter partes review - in addition to post-institution fee (per claim) 750 750 750 Post-grant Review (PGR) or a covered business method (CBM) review - request fee, up to 20 claims 20,000 20,000 20,000 PGR or CBM - post-institution fee, up to 20 claims 27,500 27,500 27,500 PGR or CBM - claims in excess of 20, in addition to request fee (per claim) 475 475 475 PGR or CBM - claims in excess of 20, in addition to post-institution fee (per claim) 1,050 1,050 1,050 Derivation Petition 420 420 420 Request to make a settlement agreement and other requests filed in a patent trial proceeding 420 420 420 Hague Convention Fees Transmittal Fee 120 48 24 International design application fees payable to WIPO - see WIPO Fee Calculator var var var Notes: For further information regarding fee amounts or to request a copy of the PTO fee schedule, please contact the USPTO General Information Services Division by phone at (800) 786-9199 [PTO-9199] or (703) 308-4357 [308-HELP], or by fax at (703) 305-7786. PTO fees are subject to change. Usually, new fees take effect in the Fall, typically October-December. Be sure to check for the latest fees before filing anything. PCT fees change more or less quarterly, as exchange rates change. See note above in " PCT Fees to WIPO or EPO " The preceding table was taken from information supplied by the USPTO web site . Additional legal and handling fees may apply for preparing and processing paperwork for payment of these fees. Back to Patents Page Back to Patent Budget Estimator
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- Title 37 —Patents, Trademarks, and Copyrights
- Chapter I —United States Patent and Trademark Office, Department of Commerce
- Subchapter A —General
Enhanced Content - Table of Contents
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IMAGES
VIDEO
COMMENTS
Effective December 29, 2022 (Last revised July 1, 2024) The fee schedule provides information and fee rates for USPTO's products and services. All payments must be paid in U.S. dollars for the full amount of the fee required. View the Accepted payment methods page or call the USPTO Contact Center at 571-272-1000 or 800-786-9199 for assistance.
571-273-8300. Maintenance Fee Branch. Patent maintenance fees. 571-273-6500. The mailing address depends on the type of payment you wish to make. We accept check or money order, credit and debit card, or deposit account when paying by mail. For credit and debit card payments, include the Credit Card Payment Form.
Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.
An official website of the United States government. Here's how you know keyboard_arrow_down. ... The U.S. Patent and Trademark Office (USPTO) is streamlining the process for recording assignments and other documents relating to interests in patents and trademarks. ... Trademark Assignment Fees (Fee codes: 8521 and 8522) Manual of Patent ...
Sample of a Patent Assignment (PDF) Sample of a Trademark Assignment (PDF) Resources. Upload a Document (PDF) Trademark Assignment Fees (Fee codes: 8521 and 8522) Manual of Patent Examining Procedure (MPEP) Trademark Manual of Examining Procedures (TMEP) Assignment Search ; Tutorial. Assignment Center Patent Training Guide (PDF)
Assignment Center is the USPTO's online system for filing and managing patent and trademark assignments. Learn how to use it with our tutorial videos and FAQs.
You may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 a.m. to 5 p.m. ET. You may email questions about electronic assignment filing to [email protected].
How much does it cost to assign a patent application. Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office. Note that the office charges US$ 40 for each patent or patent application listed on the recordation form.
You file the paperwork with the United States Patent and Trademark Office (USPTO). Information about the new owner is available to the public. ... How Much Does a Patent Assignment Cost? The patent assignment fee is $25. Filing electronically doesn't cost extra. You do have to pay an additional $40 fee if you file on paper.
Effective December 29, 2022 (Last revised on July 1, 2024) The fee schedule provides information and fee rates for USPTO's products and services. All payments must be paid in U.S. dollars for the full amount of the fee required. View the Accepted payment methods page or call the USPTO Contact Center at 571-272-1000 or 800-786-9199 for assistance.
The following table lists the patent fees charged by the United States Patent and Trademark Office. ... Recording Patent Assignment, Agreement or other document - not submitted electronically. 50: 50: 50: Publication in the OG. 25: 25: 25: Handling Fee - Incomplete Application. 140: 140: 140:
An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international ...
Here's a high-level overview of how patent assignments work: when a patent's owner or applicant assigns it to another individual or company, the assignor agrees to relinquish their rights to enforce or benefit from it in the future. You can assign rights for applications still pending with the United States Patent and Trademark Office (USPTO).
In the United States, patent assignments are very common between an employee and his company because a company or business cannot apply for a patent. ... there is a $50 fee for the service. So, record your assignment online if you want to avoid paying anything. That said, you may need to publish your assignment in an official gazette, such ...
signment will be recorded. Customers who desire to have an assignment application stopped, prior to recordation, should submit a Stop/Hold Request, immediately. upon recognizing the need. A stop/hold request must be submitted via email to. [email protected]. If the subject matter of your conveyance type; is not indicated on the list of ...
The fee schedule provides information and fee rates for USPTO's products and services. All payments must be paid in U.S. dollars for the full amount of the fee required. View the. Accepted payment methodspage or call the USPTO Contact Center at 571-272- 1000 or 800-786-9199 for assistance. SCAM ALERT - Warning about non-USPTO ...
Be in writing: Oral agreements to assign patent rights are typically not enforceable in the United States. Clearly identify all parties: Include the names, addresses, and relationship of the assignor (s) and assignee. Clearly identify the patent being assigned: State the patent or patent application number, title, inventors, and filing date.
United States Patent and Trademark Office. Select one. Enter assignment information in any field or combination of fields. The number assigned when a patent application is filed at USPTO. The person, group of persons, or organization that recieved ownership rights of the patent application or patent. The nature of the transfer of ownership of ...
A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee (s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261. II. ASSIGNMENT. "Assignment," in general, is the act of transferring to another the ...
An assignment provides documentary evidence that the rights in the invention have been transferred from the inventor to the applicant, and that the applicant is the rightful owner of any patent granted for the claimed invention. If a signed assignment is not submitted by each inventor before payment of the Issue Fee, the application could grant ...
Recording an assignment may be necessary to permit the assignee to "take action" in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1. ...
Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.