Kentucky Contract for Assignment of Patent Rights

State:
Multi-State
Control #:
US-0556BG
Format:
Word; 
Rich Text
Instant download

Description

Patents and patent applications are assignable by the owner or in the owner's name by anyone acting under legal authority. In the case of patent applications, where the conveyance precedes the granting of the patent, the patent may be issued to the assignee if the patent assignment has first been entered of record in the Patent and Trademark Office. The assignment of patent rights is a contract and is, accordingly, construed so as to carry out the intentions of the parties to the assignment.

The Kentucky Contract for Assignment of Patent Rights is a legal document that outlines the transfer of patent rights from one party to another in the state of Kentucky. This contract establishes an agreement between the assignor and assignee regarding the ownership and rights associated with a specific patent. Keywords: Kentucky, Contract for Assignment of Patent Rights, transfer, patent rights, agreement, assignor, assignee, ownership, rights There are two main types of Kentucky Contract for Assignment of Patent Rights: 1. General Assignment of Patent Rights: This type of contract involves the complete transfer of all rights, title, and interest in the patent from the assignor to the assignee. The assignor relinquishes any claim or ownership over the patent, while the assignee obtains full control and ownership rights. 2. Limited Assignment of Patent Rights: In this type of contract, only specific rights or a limited scope of the patent's rights are transferred from the assignor to the assignee. The assignor retains partial ownership or limited rights over the patent, while the assignee gains the designated rights mentioned in the contract. Both types of contracts typically include the following essential elements: 1. Parties: The contract identifies the assignor (original patent holder) and the assignee (the individual or entity receiving the patent rights). 2. Description of the Patent: The contract provides a detailed description of the patent, including its title, registration number (if applicable), and a brief summary of its invention or design. 3. Assignment Clause: This clause states that the assignor is transferring the patent rights to the assignee, mentioning whether it is a general or limited assignment. 4. Consideration: The contract describes the consideration or compensation provided by the assignee to the assignor for the transfer of patent rights. It can be a monetary payment, royalties, equity shares, or any other agreed-upon form of consideration. 5. Effective Date and Term: The contract specifies the effective date when the assignment takes effect and may include a duration or term for which the assignment remains valid. 6. Representations and Warranties: Both parties make certain representations and warranties regarding their authority to enter into the contract, the ownership of the patent, and the absence of any legal disputes or encumbrances. 7. Governing Law and Jurisdiction: The contract identifies that it is governed by the laws of the state of Kentucky and stipulates the jurisdiction in case of any legal disputes. It is essential to consult with a legal professional experienced in patent law when drafting or entering into a Kentucky Contract for Assignment of Patent Rights to ensure compliance with state laws and protect the interests of both parties involved.

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FAQ

The USPTO does not require patent assignments to be notarized. The patent office only requires that the assignment be executed and signed by both the assignor and the assignee. Once an agreement is executed and signed by the parties, the assignment must be recorded with the patent office.

Steps to File a Patent AssignmentFill Out a Recordation Form Cover Sheet. The Recordation Form Cover Sheet is an official USPTO document.Complete a Patent Assignment Agreement.Sign the Patent Assignment Agreement.Submit the Patent Assignment.

Ownership in IP (trademarks, copyrights, trade secrets, and patents) does not automatically transfer to a company, even when the creator becomes an owner of the company. The only way to transfer the IP to the company is for the founder to sign and deliver an assignment of intellectual property rights to the company.

All parties must sign the agreement, with limited exceptions in situations where the assignor cannot be reached but where enough evidence exists that documents their intentions and rights. File the patent assignment with the USPTO within three months after the agreement is signed, paying the then-current fee.

A patent assignment is an agreement where one entity (the assignor) transfers all or part of their right, title and interest in a patent or application to another entity (the assignee).

Basically speaking, a patent assignment is a legal way for an inventor to transfer ownership of a patent to a business. As you may recall, in the United States, only a person (or group of people) can be listed as the inventor of a patent; a business cannot be listed as the inventor.

Assigning your patent rights to your company helps to build the asset valuation of your company, which will be important to any investors or lenders you may seek. Investors and lenders will often require you to assign patent rights to your company before they will complete a transaction with your company.

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. Be signed by the assignors.

Patent assignment transfers your ownership rights in your patent from yourself to your company. This means that once you assign the patent, you transfer all ownership and control of that patent and its intellectual property rights as the patent inventor to another entity/company, known as an assignee.

For a patent assignment agreement to be valid in the U.S., it must be notarizedor at least signed in front of two witnesses.

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Kentucky Contract for Assignment of Patent Rights