Post Grant Patent Services

Assignments for Changes in Patent Ownership

One of the more common post grant patent services is an assignment. This is because assignments are how ownership interest in patents and patent applications is changed. An assignment is a transfer of all or part of a person’s or business’ interest in a patent or patent application. An assignment is a legal document signed and notarized by the person transferring all or part of their interest in a patent or patent application. The assignment document is recorded in the USPTO recording office and may be entered into a patent application file.

Monitoring Patents for Potential Infringers

Sometimes patents are allowed and issued in very active or very competitive innovation areas. When this is the case, it might be fruitful to invest in monitoring the art (area/industry) and monitoring the market to ensure no one is infringing. Patent monitoring is generally some form of active prior art searching combined with watching the development of others in the industry. Monitoring patents for potential infringement is not a required activity, but it can offer peace of mind that a professional is monitoring the industry and looking to protect your patented products.

Licensing Agreements and License Contracts

Licensing a patent is a popular topic among inventors. Licensing agreements and licensing contracts can be very beneficial to everyone involved. Inventing something, getting a patent to protect it, and then licensing it to one or more manufacturers to make and sell the invention is a dream for many inventors. There are three different kinds of licensing agreements: exclusive, sole, and non-exclusive. It is highly recommended that you seek advice of legal counsel prior to licensing your patent or signing a licensing agreement or license contract. Read more about licensing agreement types. Read about licensing agreement advantages and disadvantages.

Sale of All or a Percentage of Interest in an Issued Patent

Selling all or part of a patent owner’s interest is usually accomplished by agreement or contract and includes an assignment and recording of the assignment at the USPTO. The execution step of a patent sale is an assignment, and as explained above, post grant patent services transfer ownership interest of a patent (or patent application). When a sale of a patent is being considered, is it recommended to get a patent valuation in order to get an estimate of the valuation of the patent. Read about determining patent value.

Ex Parte Reexamination of an Issued Patent

Ex parte reexamination is one of several ways to have the claims of an issued patent reviewed and possibly invalidated (un-patented). If you are aware of prior art that was not considered by the patent examiner that makes the claims of a patent either not novel or obvious, you can file an ex parte reexamination to get the patent reviewed again by the USPTO. Anyone can request an ex parte reexamination at anytime after patent issuance. Unlike inter partes reexamination, the requestor does not participate in the reexamination. Read more about questioning patent validity.

Inter Partes Reexamination of an Issued Patent

Inter partes reexamination is one of several ways to question the validity of an issued patent. If you are aware of prior art that was not considered by the patent examiner that makes the claims of a patent either not novel or obvious, you can file an inter partes reexamination to get the patent reviewed again by the USPTO. Anyone can request an inter partes reexamination within the first 9 months after patent issuance. Unlike ex parte reexamination, the requestor can participate in the reexamination.

Infringement Lawsuits

Infringement lawsuits are a post grant patent service. Infringement is a violation (encroachment or trespass) of a right or privilege (law, regulation, or contract). In the world of intellectual property (patents, trademarks, and copyrights), infringement of rights is making, using, and selling a protected invention, registered mark, or copyright without permission. If there is an infringer on your patent, an infringement lawsuit may be required. Read more about patent litigation.

Even in cases of infringement, there are other options besides filing an infringement lawsuit. When there is an infringer and licensing or sale of the patent to the infringer is not an option, a cease and desist letter may offer a much less expensive option and is a filing requirement to sue for infringement. Of course the better option might be to open a conversation with the infringer and offer to license your patent to them so everyone can benefit. Read more about licensing agreement types.

Alternative Dispute Resolutions (ADR)

Even when an infringement lawsuit is necessary, there are several available alternative dispute resolutions (ADR) that may offer a much less costly solution to a lawsuit. Importantly, even when filing a lawsuit, most courts will require ADR before conducting a trial. Read more about alternative dispute resolutions.

Inventor Wants to Share Ownership of her Patent with Grandson

An inventor and patent owner wanted to share ownership interest in her patent with her grandson. The grandson was instrumental in manufacturing her new appliance and getting her product to market. Therefore, the patent owner wanted to share ownership of the patent with her grandson. The patent owner elected to assign 50% interest in her patent to her grandson. The total cost including the assignment, notary, and recording was $640.

Patent Owner Wants to License Manufacture and Sale of Patented Device

An inventor was issued a patent for her new machine. She wanted to license the manufacture and sale of her machine to three businesses. The patent owner elected to use a non-exclusive license agreement. One licensing contract was written and used with all three businesses. All parties were U.S. citizens and U.S. based corporations. The total cost for all three licensing contracts was $2,880.

Patent Ownership Sharing with Business Partner

“Mr. Carson was very professional, and explained every step. I assigned half of my patent to my partner by email. How cool is that!”

Kim P.

Infringement Lawsuit Upgraded to Licensing Agreement

“We called to sue an infringer, Greg pointed out the licensing opportunity. Long story short – we have a new business partner and we have improved our [device].”

Mary Beth and Alan K.