A patent is a piece of legal property and has similar attributes to other types of property, such as real property i.e. real estate or personal property i.e. an automobile. However, the difference with a patent is that a patent is an “intangible” piece of property that is reduced to a set of legal rights. A true intangible asset or property would be something like a company’s customer goodwill or the value of a well-trained workforce that cannot be reduced to a set of legal rights. Thus even though a patent is an intangible asset, it has a tangible legal existence through the enforcement of its exclusionary rights.
An assignment of a patent is essentially a “sale” of the patent, keeping in mind that the inventor listed on the patent can be the owner of the patent if no assignment is made or the patent can be assigned or “sold” to another entity. This is the situation wherein an individual(s) are the inventor(s) listed on the patent with another entity owning the patent, such as in the case on an employee in a company who invents a device that is patented and the company owns the patent.
Similar to real property the patent assignment must be recorded for a proper public notice and record to be kept of patent ownership over time. Although real property is recorded locally, usually at the county clerks office, patents are all recorded at the United States Patent Office and similarly foreign patent assignments are recorded at the corresponding foreign patent offices.
A patent has several phases in its life; first the patent application is filed and is a pending application and second later issues into a patent. The assignment can occur in either phase.
The assignment itself is a contract that states for valuable consideration the inventor(s) assign all of their rights in the invention to the assignee. It is important to remember that even if there is a consultant’s or employee agreement for the inventor to assign ownership in the invention while the invention is being developed i.e. prior to the filing of the patent application, an actual patent assignment or as applicable, patent application assignment must later be filed and recorded with the Patent Office to perfect the assignment.