Establishing secure connection…Loading editor…Preparing document…

Assignment of Rights Under Patent Application

This template is fully customizable. Edit the text, fill out the fields, and send it for signature. Give it a try!

Assignment of Rights under Patent Application and Patents that may be Issued

Assignment made on the by

, referred to herein as Inventor, and

, a corporation organized and existing under the laws of the state of , with its principal office located at

, referred to herein as Assignee.

Whereas, Inventor has invented one or more inventions, hereinafter referred to as Inventions, disclosed in an Application for a Patent of the United States titled , hereinafter referred to as Application, said Application having been filed on , Application No. ; and

Whereas, Assignee is desirous of obtaining all right, title and interest in, to and under said Inventions and said Application;

Now therefore, for good and valuable considerations, the receipt and sufficiency of which is hereby acknowledged, Inventor has sold, assigned, transferred and set over, and by these presents hereby sells, assigns, transfers and sets over to Assignee all right, title and interest in, to and under said Inventions and said Application, including the right to apply for any Letters of Patent of the United States of America and in any and all foreign countries on said Inventions, and any and all other applications for Letters of Patent on said Inventions, in whatsoever countries, including all divisional, renewal, substitute, continuation, continuation-in-part and convention applications based in whole or in part upon said Inventions or upon said Application, and any and all Letters of Patent which may issue thereon in the United States and foreign countries, and any and all reissues, extensions, renewals, divisions, continuations or continuations-in-part of Letters of Patent granted for said Inventions or upon said Applications, to the full term or terms for which said Letters of Patent may be issued, and every priority right that is or may be predicated upon or arise from said Inventions, said Application and said Letters of Patent, the same to be held and enjoyed by the Assignee for its own use and benefit fully and entirely as if the same would have been held and enjoyed by Inventor had this Assignment not been made.

Inventor hereby authorizes the Assignee to file patent applications in any and all countries on any or all of said Inventions in the name of Inventor, or in its name, or otherwise as the Assignee may deem advisable.

Inventor hereby authorizes the Commissioner of Patents and Trademarks of the United States, and any official of any other country empowered to issue patents, to record this Assignment, and to issue or transfer all said Letters of Patent on said Invention to the Assignee as owner of all right, title and interest therein, or otherwise as the Assignee may direct, in accordance with the terms of this Assignment.

Inventor hereby represents and warrants that Inventor has the full right to convey the entire right and interest herein assigned, that there are no rights or interests outstanding inconsistent with the rights and interests granted herein, and that Inventor will not execute any instrument or grant or transfer any rights or interests inconsistent with the rights and interests granted herein.

Inventor hereby covenants and agrees that Inventor will, upon request of the Assignee, communicate to the Assignee any facts known to Inventor relating to said Inventions and the history thereof, testify in any legal proceeding, execute all lawful papers including without limitation all divisional, continuing and reissue applications and all rightful oaths and declarations, and generally do all further acts which may be deemed necessary by the Assignee to obtain and enforce proper patent protection for said Inventions in all countries.

WITNESS my signature as of the day and date first above stated.

__________________

(Signature of Inventor)

__________________________

(Printed Name of Inventor)

Enter text✕

What an Assignment of Rights Under Patent Application Is

An Assignment of Rights Under Patent Application is a written instrument in which an assignor transfers ownership or specified rights in a pending patent application to an assignee. The document identifies the parties, the application by number and title, the scope of rights transferred, any consideration, and execution details. Recording the assignment with the USPTO preserves a public chain of title and helps prevent downstream ownership disputes; state execution and notarization practices may also affect enforceability.

Why a Clear Assignment Matters for Patent Rights

A properly drafted and executed assignment clarifies legal ownership, enables licensing or enforcement, and reduces commercial and litigation risk. Recording with the USPTO and keeping accurate records protects purchasers and licensees and supports clear chain-of-title for due diligence.

Why a Clear Assignment Matters for Patent Rights

Who Commonly Prepares and Signs These Assignments

These assignments are used by inventors, companies, universities, and legal counsel involved in transferring patent application rights.

  • Startup founders transferring rights to a corporate entity during incorporation or financing.
  • University technology transfer offices assigning rights after sponsored research or invention disclosure.
  • Patent attorneys and corporate counsel preparing assignments for licensing, M&A, or investor diligence.

Parties should confirm signatory authority, entity names, and any institutional approval processes before execution.

Core Elements to Include in a Professional Assignment

A complete assignment is concise but comprehensive: it identifies the application, states exactly what is transferred, records consideration, confirms execution formalities, and provides a recordation instruction.

Parties

Full legal names and entity types for assignor and assignee, including jurisdiction of incorporation or residence and contact information.

Application Details

Patent application number, filing date, title of invention, and inventor names to precisely identify the subject matter being assigned.

Assignment Language

Clear transfer clause stating the assignor assigns all right, title, and interest in the specified patent application and related continuations or divisionals, if intended.

Consideration

Statement of monetary amount or other consideration exchanged; if nominal, state the form of consideration explicitly to avoid ambiguity.

Execution Block

Signed and dated signature blocks for authorized representatives, plus printed names, titles, and any required notarization or witness lines.

Recordation Clause

Instruction to submit the assignment to the USPTO for recordation, with an address for delivery of confirmation or recorded instruments.

Essential Data Fields to Capture

Assignor Name: Exact legal name
Assignee Name: Exact legal name
Application Number: USPTO application number
Invention Title: Full title as filed
Consideration: Specified amount or value
Execution Date: MM/DD/YYYY

Step-by-Step: Completing an Assignment

Follow these steps to prepare, execute, and preserve an assignment of patent application rights.

  • 01
    Prepare document: Draft with precise parties and application data.
  • 02
    Confirm signatory authority: Verify corporate authorization or inventor agreement.
  • 03
    Execute and notarize: Sign in presence of notary or follow RON requirements.
  • 04
    Record with USPTO: Submit for recordation to preserve public chain of title.

How to Configure an Online Assignment Workflow

Set up the digital workflow to collect accurate data, authenticate signers, and retain an audit trail for USPTO recordation and commercial use.

File Format Use PDF/A for long-term preservation
Authentication Email plus SMS code or stronger KBA
Notarization Enable RON session when permitted
Template Fields Pre-fill application number and parties
Attachments Include assignment exhibits and supporting docs

Where to Send and How to Route the Final Assignment

Assignments must be delivered to the appropriate parties and recorded if protection of chain-of-title is required.

  • Signers sign: Authorized representatives execute the document
  • Notarize if needed: Complete in-person or via RON
  • Deliver copies: Provide executed copies to both parties
  • Recordation: Submit assignment to the USPTO for recordation

Technical Requirements for Digital Execution and Submission

Confirm file format, signer authentication, and secure storage before starting an e-signature workflow.

  • File support: PDF, DOCX accepted
  • Signer authentication: Email, SMS, or KBA
  • Security: TLS in transit; AES-256 at rest

Use an audit trail, tamper-evident storage, and backup copies to meet record retention and USPTO submission needs.

Timing Considerations and When to Act

There is no single statutory deadline to assign a pending application, but timing affects enforceability and commercial rights — act promptly.

Effective Date:

Assignment is effective on the execution date unless stated otherwise.

Record Promptly:

Record with USPTO as soon as reasonably possible to protect chain-of-title.

Transaction Closings:

Complete assignment before M&A or licensing due diligence deadlines.

Inventor Obligations:

Ensure inventors have assigned rights per employment or contractor agreements.

Statute of Limitations:

Delays can complicate enforcement and notice to third parties.

Risks and Potential Consequences of Errors

Invalid Transfer: Assignment may be void or avoidable
Title Disputes: Third parties may challenge ownership
Recordation Delay: Purchasers lack constructive notice
Tax Consequences: Consider capital gains or income impact
Noncompliance: Not meeting notarization rules may impair proof
Contract Conflict: Existing agreements may restrict assignment

Common Preparation and Execution Mistakes

  • Using informal or inconsistent party names that differ from formation documents, causing rejection on recordation attempts.
  • Entering an incorrect USPTO application number or filing date, which prevents the USPTO from associating the assignment with the intended application.
  • Failing to confirm signatory authority or corporate approval, creating an invalid or challengeable transfer.
  • Not recording the assignment with the USPTO or failing to retain executed originals and audit trails for due diligence.

Real-World Examples of Digital Document Workflows

Organizations across sectors adopt electronic workflows to accelerate signature capture and preserve auditable records.

Optica Ventures LLC — COO

Optica adopted online signature workflows to simplify customer interactions and internal processing.

  • The interface reduced manual return steps for counterparties.
  • Brian Fitzgibbons says the interface is simple and easy-to-use for our team; more importantly, it is just as easy for our customers.

Tech Data — CEO

Tech Data centralized document execution across teams for faster revenue recognition.

  • Central templates and audit trails ensured consistent signatures.
  • Bob Dutkowsky reports Tech Data uses the platform to improve internal and external customer service while increasing speed to revenue.

FAQs and Troubleshooting for Assignments of Patent Application Rights

Answers to common questions about execution, e-signatures, recordation, and correcting errors when assigning patent application rights.


Need help? Contact support

eSignature Vendor Pricing and Feature Comparison

Head-to-head pricing and common feature availability for document execution platforms; signNow is listed first per comparison conventions.

signNow DocuSign Adobe Sign PandaDoc HelloSign
Starting Price $8/user/mo $15/user/mo $14/user/mo $19/user/mo $15/user/mo
Free Trial Yes, 7-day trial No No Yes, limited Yes, limited
Bulk Send Yes Yes Yes Yes No
Audit Trail Yes Yes Yes Yes Yes
HIPAA Compliant Yes Yes Yes No No
be ready to get more
Join over 28 million airSlate SignNow users