Digital Signature Lawfulness for Assignment of Intellectual Property

How to eSign a document: digital signature lawfulness for Assignment of intellectual property

this topic has a lot of different aspects to it and this is the topic of patent ownership and assignment so there are at least a few things that you should know about patent ownership and assignment and we're going to talk about those now if you've ever been an employee if you're an engineer or scientist and you've been an employee of a company you've you've most likely been subjected to an employment agreement and within the terms of that employment agreement there's very likely been what's called an obligation to assign inventions so if you work for corporate entity for a business and they're doing research and development or whether it be software development or product development and there's a potentiality there for patentable subject matter if you're an employee and it's possible that you might be creating patentable subject matter than your employer is going to want you to assign those inventions to them so that they have ownership of those inventions and the way they do that is by having as I mentioned here an initial employment agreement that creates an obligation for you to assign your inventions and by the way this could also be the case for written works if you're doing written work then your employment agreement probably will also state that any written work that you create would be a work Made For Hire and that the copyright and those written works or artistic works of any kind would be owned by the business by the corporate entity or by the business entity so in terms of patents the Second Step that usually occurs is that if you do create inventive subject matter and it does become patentable subject matter that's filed in a patent application then the business entity will also have you execute what's called an assignment and an assignment as a contract and the assignment contract basically is equal to a transfer of patent ownership if you create an invention on the job and you have this type of employment agreement that requires you to assign your employer is going to ask you to execute an assignment document that says that patent application number whatever that application number is you're assigning it to the corporation and basically you're transferring all of your ownership rights to the corporation now you're still an inventor you'll be named as an inventor on the patent application but you won't have any ownership rights to ownership rights will be owned by the business so the business will have the right to license that patent and do whatever they want with it sell it license it and so the business entity becomes the owner of the patents that you're creating as an employee no from the standpoint of you as an entrepreneur if you're an entrepreneur or you're a business owner yourself well you're going to want to make sure that you have these types of things in place for your business so if you have a business entity and it doesn't matter what that business entity is whether it be a corporation an LLC partnership whatever business entity you decide to create and by the way if you're interested in knowing more about these types of business entities or a little bit more information take a look at my video here about corporations and LLCs you're going to want to have your employees execute an employment agreement that requires them to assign inventions to your business entity you're going to want your business to own any of the inventions created by your employees in the course of their daily work so you're going to want to have these employment agreements in place and if you do file patent applications you're going to want to have your inventors execute assignments that are signing the patent rights to your business entity so that's an important thing to know as a business owner an entrepreneur where you've got people working for you that are creating patentable or potentially patentable subject matter now the other thing to know is in the situation where you might have a portfolio of patents in your licensing those some people are of the opinion that they want to license their patents through a business entity that they create rather than through themselves as an individual there's an important subtle point to understand about that if you create a business entity and you enter into a license agreement for patents on which let's say you're the inventor and you enter into a licensing agreement licensing those patents and you sign as the corporate entity as let's say you sign as the chief technical officer of your business entity whatever that entity might be the pet ownership has to be in the name of the business entity and not you as an individual so that's another contractual thing that needs to be taken care of before you could license patents to another party through a business entity in other words if you're the inventor on your patents then you as an inventor would have to execute an assignment contract transferring the ownership from yourself as an individual inventor to your business entity your business entity then would become the owner of those patents the business entity can then enter into transactions with those patents such as licensing agreements it needs to be understood that setting up a business entity to license your patents requires that you if you're the individual inventor assign those patent rights to the business entity you would no longer own the patent rights as an individual your business entity would become the owner of the patent rights one other brief point is that you can have multiple assignees so just as you could have joint inventors if you had joint inventors on a patent application and that Pat application issues to a granted patent then the joint inventors would be joint owners of that patent likewise you can have joint assignees so there could be multiple entities multiple business entities that are joint assignees that have joint ownership over a patent just as joint inventors can have joint ownership over patent so there are different scenarios that can occur an assignment is a contract and under contract law you can do business in just about any way that you like to do business as long as it's not illegal or fraudulent or violates any statutes of a state or of the United States you can do business in a contract in any way you want so you can have multiple assignees and an assignment contract you can have percentages of ownership in an assignment contract or however it makes sense for you to make that business deal at the end of the day an assignment is just a business transaction it's a contractual business transaction that transfers ownership of a patent