FAQs & Links
FAQ
The following information forms a collection of information which we have compiled according to frequently asked questions (FAQs) of our clients. This collection therefore does not claim to be exhaustive of all topics relevant to applicants and inventors. In the previous web pages, you will find general regulations for intellectual property rights proceedings. This web page is rather intended to clarify further questions of inventors and applicants arising from the "daily" cooperation with you - after all, as an applicant or inventor, you want to know what you are signing and what intentions and legal consequences certain documents to be signed by you have for you. On this page, we therefore explain in "colloquial language" procedures and documents that are of general interest to all applicants and inventors.
Upon your request we will be happy to post more information.
We assume no liability for the accuracy and timeliness of the following information. Please clarify detailed questions directly with our office in individual cases!
Summary of the contents
In principle, the inventor is always the owner of a patent application or a granted patent in the USA. A patent is therefore a personal property that can, however, be transferred to others. How such a transfer takes place is regulated on a country-specific basis. If the country of application is the USA, the so-called assignment form must be signed by the inventor to transfer the property right to the applicant (usually, the emplyer). This is usually done at the beginning of the patent application procedure in the USA.
The Assignment is therefore a declaration of transfer of rights.
The assignment form is prepared by the U.S. patent attorney responsible for the U.S. patent application, provided with the respective file data for clear assignment:
attorney docket number, title of invention, inventor name/residence, applicant name/residence; if not already assigned by the Office at the time of signature, the U.S. Attorney is authorized by the inventors to subsequently enter in the assignment: filing date and application/filing number.
The assignment form must be signed by all inventors, regardless of each inventor's share of the invention.
The US attorney files the signed assignment with the US Patent and Trademark Office (USPTO). After filing with and subsequent registration by the USPTO, the applicant (usually, the employer) becomes the owner of the IP right.
Other common contents of the assignment form (in addition to the above file data):
The inventors confirm that they are involved in the said invention.
The inventors authorize the applicants (assignees) to obtain all rights and obligations arising from the property right, for all further property right applications of any kind based on the named invention in all countries worldwide. In doing so, all already obtained as well as future priority rights to the first application(s) (for our German clients usually in Germany or Europe) are also transferred to the applicants.
The most important right for the owner, for example, is that only he/she can prohibit third parties from using the IP right without express permission (for example, by granting a license).
Obligations are, for example, that the owner of the IP right submits the required documents and pays the fees for the maintenance of the intellectual property right in due time (both usually via the appointed patent attorneys).
The inventors authorize the U.S. Patent and Trademark Office and all agents of other relevant states to make or exchange the necessary communications and documents directly with the applicants.
Example 1: First (priority) application in Germany (DE), then international patent application (PCT/WO) filed with the European Patent Office (EPO), finally nationalization of the international application in the USA. This authorization allows the EPO to send the priority document required for the US to the German first application directly to the US Patent and Trademark Office without going via the inventors.
Example 2: Office actions in the examination proceedings and other notices or communications from the U.S. Patent and Trademark Office are sent to applicants through the assigned patent attorneys, not to the inventors. However, disclosure notices and patent documents should also be forwarded to the inventors. In case of withdrawal of the patent right, the inventors are always asked as well!
The inventors confirm that they have not already assigned the above rights and obligations elsewhere.
For more information from the USPTO click here.
Links
Here you find links to the most important patent and trademark offices including their databases. Furthermore, you find links to organizations and professional associations.
Please note that Reichert & Lindner Partnerschaft Patentanwälte does not assume any liability for the accessibility, completeness, up-to-dateness, correctness and provision of the databases, their contents and functionalities as well as for the understanding and interpretation of search results for the links mentioned below. The selected links do not constitute a recommendation, but are only exemplary information.
Courts
Court of Justice of the European Union (CJEU)
U.K. High Court (Great Britain)
German Federal Court of Justice (Bundesgerichtshof, BGH, Karlsruhe, Germany)
German Federal Patent Court (Bundespatentgericht, Munich, Germany)
US Court of Appeals for the Federal Circuit (USA)
Legal texts / case law
German laws
European Patent Convention (EPC)
Patent Cooperation Treaty (PCT)
Case law of der Boards of Appel of EPO
Decisions of Board of Appeal of EPO (full text)
Decisions of German Federal Court of Justice (full text)
