Getting a patent granted requires a comprehensive patent strategy, and even after obtaining patent registration certificate, during the stage of patent assignment, it is essential to perform a freedom to operate search to ensure that the patent will not infringe upon third party patent rights.
Owning a patent is much like owning property. Just as you can sell or lease your property, you could do the same with your patent with assignment or license, respectively. Patent assignment is an inventor’s granting of all of his patent rights (or future patent rights) to another person or entity. In contrast, a license only grants another person or entity a portion of the patent rights for a limited period of time. The portion and duration of those rights is something the licensor and licensee can negotiate.
A patent assignment is an irrevocable agreement for a patent owner to sell, give away, or transfer interest to an assignee, who can enforce the patent.
A patent assignment is a part of how to patent and idea and is an irrevocable agreement for a patent owner to sell, give away, or transfer his or her interest to an assignee, who can benefit from and enforce the patent. The assignee receives the original owner’s interest and gains the exclusive rights to the intellectual property. He or she can sue others for making or selling the invention or design.
There are four types of patent assignments:
- Assignment of Rights – Patent Issued: This is for patents that have already been issued.
- Assignment of Rights – Patent Application: This is for patents still in the application process. After filing this form, the assignee can be listed as the patent applicant.
- Assignment of Intellectual Property Rights – No Patent Issued or Application Filed: This is for unregistered inventions with no patent.
- Exclusive Rights
Patent Assignment vs. Licensing
Practically, patent assignment is very similar to patent licensing, especially exclusive licenses. Both transfer patent rights to another person or company. While licenses are temporary, however, assignment is permanent. Licensing patent rights is like renting property. Royalties are collected over time, but ownership does not transfer. Patent assignment agreements permanently transfer ownership. You can review and download a free template Patent Assignment Agreement or Patent License Agreement in Priori Legal Document & Form Learning Center.
Freedom to Operate Patent Search
Freedom-to-Operate (FTO) patent search, also known as Clearance Patent Search or Right to Use research ensures that a particular patent or an innovation does not infringe upon any prior patents within a specific market or jurisdiction. The Freedom-to-Operate (FTO) patent search report identifies patent results with patent claims that may relate to a technology. So the scope of work would determine whether you have the freedom-to-operate your technology product or service in a given marketplace.
Information Required for FTO
Description of the technology (product or service), including a list of main elements is required for clearance. For example, components of a juicer if you plan to launch a juicer apparatus. Patent rights are territorial in nature. Therefore, the patent research has to be performed where you are manufacturing your technology product or service and plan to launch the same. So different geographic region(s) details has to be provided to the patent attorney. In case you know your competitors, it would be helpful to provide the details of the same to analyse their patent portfolio.
It is always advisable to get Freedom-to-Operate (FTO) patent search before launching or manufacturing your technology product or service in a particular country (i.e., Europe, Canada, the United States, India, Singapore and the like). Once your prototype is ready hire a patent attorney to confirm and finalise all the embodiments of the prototype.
Our experienced patent attorneys provide Freedom-to-Operate (FTO) patent search opinion after analysing patent claims of the identified patent results and map the same with the technology in question. We at Law Office of Patent Attorney Rahul Dev provide our IP clients proactive advice to identify the pain points. All the patent searches are performed in the respective patent databases of the countries list provided by the client, using public and private patent search tools.
It shall be noted that in contrast to FTO, a patentability search of an invention is able to determine whether or not an idea is new. The results of the prior art patent search can determine whether the innovation is patent worthy and can the inventor apply for a patent.
Law Office of Patent Attorney Rahul Dev offers high value contract drafting and patent due diligence services to clients by using proprietary and efficiently proven process along with a fixed fee costs, for performing comprehensive patent investigations and providing clients with strong patent reports for decision making.
We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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