Rick Neifeld is a Ph.D. (in Physics) patent attorney and managing partner and President of Neifeld IP Law, PC, whose URL is www.Neifeld.com. Neifeld IP Law is located near the USPTO, and it specializes in U.S. and international patent protect ion, licensing, advise, and counseling, and specialty matters at the USPTO. Rick is also a patent interference practitioner, former Chair of the Interference Committee of the AIPLA, and co-owner of the patent related services provided at www.PatentValuePredictor.com.
Comments on United States Patent Assignment Information
The text below is a copy of an email that I sent the Patent Interference User's Group (PIUG) on November 4, 2003, regarding United States Patent Assignment Information. My email was in response to a chain of emails discussing contents and accuracy of assignment information provided by the commercial database providers.
***
I am dissatisfied with the possibility that you all may be relying upon commercial databases for assignee due diligence work. You should all keep in mind HOW the assignee information shown on the face of a U.S. patent gets there, WHAT it signifies, and WHAT you should search when checking on title of U.S. patents.
Someone fills out an "Issue Fee Transmittal form" for an allowed patent application. On that form, they write in the name they want to appear on the patent as the Assignee. Sometimes they get that wrong, for a variety of reasons. The name shown as the assignee on an issued U.S. patent is not conclusive evidence that an assignment exists, and it is not conclusive evidence that the entity listed as the assignee is, even at the time of issuance of the patent, the owner of the patent. It is just a name.
On the other hand, the assignment records, which are kept by the USPTO separate from the patent application files, list all assignments and related transfers of interests (primarily security agreements and licenses) for patent properties recorded in the USPTO. If you are interested in knowing the actual current legal assignee and providing persuasive proof a chain of title, the USPTO's assignment records are the best place to look, as opposed to the face of the published patent, or elsewhere. (BUT, see footnote and caveat below.) The assignment database generated by the USPTO shows the information the person filing a copy of the executed assignment writes on the "RECORDATION FORM COVER SHEET." The "RECORDATION FORM COVER SHEET" is the form they are obliged to file along with the copy of the actual executed assignment document. The USPTO's assignment database does not include the actual assignment document. Thus, the USPTO's assignment database and all databases derived from that database only reflect the information copied onto the recordation sheet. I believe that no database provider has copies of the actual assignment documents in an electronic database. The USPTO stores image copies of the actual assignment documents on micro fiche available at the USPTO, indexed by reel/frame. The micro fiche images can be printed and are the best evidence of assignment. Therefore, the best place to do an assignment search in the first instance, is at the USPTO. You can identify allegedly assigned patents by searching the assignment database, and then pull up the ACTUAL assignment documents by the reel/frame associated with each patent number.
When conducting due diligence assignment work, I often see discrepancies in the chain of title that would or should be resolved to perfect the chain of title. For example, I have seen in an assignment chain, the person executing an assignment on behalf of A to B is actually listed as an officer of company C, not company A. (Why did he sign the document? Maybe C owns A and that person thinks that C, not A, owns the patent and is assigning it. Not!) That assignment document would not result in a valid assignment, and B would not have valid title to the patent. The only way to identify that type of defect is to review the actual assignment documents. In any case, any due diligence assignment search should include review of copies of the actual assignment documents.
FOOTNOTE: You may also find security interests that may include patents filed in the state or county secured transactions recording office for the location of the company identified as the assignee. For example, if the assignee has debt, they may have signed a security agreement, general or specific, that may cover some or all IP rights. This is another place to look when conducting a patent assignment due diligence search.
thanks, RICK
- Related Videos
- Related Articles
- Ask / Related Q&A




Can I really sell my idea?
By: Russell Williams | 06/11/2009Yes; however, it is important to understand what you need to have in place to increase your odds of success. As you move your idea through the invention and patent process, your odds of success increase as your idea becomes more tangible and real.
Company Incorporation -The Procedure for Incorporating A Company in India
By: chaman | 28/10/2009Company incorporation is the act of making an official application to Companies House to create a company, which is well known the process of formation or process of incorporation. Full company name, the officers of the company and the principal address of the company on the register of companies held at Companies House are required to formalize the formation of a company.
Will Riches Come From Your Invention Submission
By: Oli Osorhan | 27/10/2009Overcome the barriers of making money from your revolutionary idea. The 4 barriers that stand in your way of obtaining a patent and selling it.
What is the difference between an idea and an invention and how do I properly document my idea?
By: Russell Williams | 26/10/2009The dictionary defines an invention as “a device, contrivance or process originated after study and experiment.” An idea is defined as “a formulated thought or opinion.”
What do I need to think about first in taking my idea to market?
By: Russell Williams | 21/10/2009Many inventors believe that they need to spend tens of thousands of dollars developing and manufacturing their ideas on their own to succeed, which is why you read so many stories about inventors who spent their life savings chasing an invention. While manufacturing is one option for certain inventors, it is not the most common option and certainly not the least risky.
Supreme Court of India adjudicates on dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law
By: Sudhir Kumar | 20/10/2009Supreme Court of India in its civil appellate jurisdiction adjudicated on a Patent dispute titled J. Mitra & Co. Pvt. Ltd. versus Asst. Controller of Patents & Design. & Ors.The Supreme Court granted the leave and directed the High Court to adjudicate the matter in interest of justice for only two appeals of such kind were pending in the High Courts. The special circumstances arises because of dichotomy introduced for the first time by the Patents (Amendment) Act, 2005
How to get a Patent
By: NoroIP | 19/10/2009A quick guide to the patent process. Includes important terms. While fairly straightforward, the technical terms and legal aspects of filing a patent application can be confusing. I’ve attempted to outline the patent process step-by-step and include simple explanations of patent terminology you will encounter along the way. It should be noted that getting a Trademark or Copyright follows a very different process.
Tips for preparing a great patent resume
By: NoroIP | 19/10/2009While general rules for preparing a resume also apply to those in the IP field, there are some basic additions that can help you create a great patent resume.
The CAFC Decision in Tafas v. Doll (Fed. Cir. 3/20/2009)
By: Richard A. Neifeld | 19/07/2009 | PatentsOn March 20, 2009, a panel of the Court of Appeal for the Federal Circuit ("CAFC") decided the USPTO's appeal of the District Court decision enjoining the USPTO's rules limiting applicants’ rights to file claims, continuations, and Requests for Continued Examination (RCEs). However, the panel was fractured, with a two panel member majority opinion (Judges Prost and Bryson), a concurrence (Judge Bryson), and a concurrence in part and dissent in part (Judge Radar).
The Decision on Rehearing in Amgen, Inc. v. Human Genome Sciences, Inc. (HGS) -
By: Richard A. Neifeld | 03/07/2009 | PatentsThe Decision on Rehearing in Amgen, Inc. v. Human Genome Sciences, Inc. (HGS) - Interference 105,613 - Teaching Points on Interference Practice
Can you Sue "the State" for Patent Infringement?
By: Richard A. Neifeld | 24/05/2007 | Intellectual PropertyReview of case law regarding protecting patents from infringement by the state.
Strategies for Preparing for a Patent Interference
By: Richard A. Neifeld | 24/04/2007 | PatentsPreparing for a successful patent interference and clues one winning.
Comments on United States Patent Assignment Information
By: Richard A. Neifeld | 24/04/2007 | PatentsThe text below is a copy of an email that I sent the Patent Interference User's Group (PIUG) on November 4, 2003, regarding United States Patent Assignment Information. My email was in response to a chain of emails discussing contents and accuracy of assignment information provided by the commercial database providers.
A Supplemental Note on the Medical Practitioner's Act
By: Richard A. Neifeld | 24/04/2007 | Patentsimmunity from liability from patent infringment
Patent Valuation From a Practical View Point, and Some Interesting Patent Value Statistics From the Patentvaluepredictor Model
By: Richard A. Neifeld | 24/04/2007 | PatentsA review of how to treat patents from a financial and tax reporting standpoint.