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Ant-Like Persistence

What USPTO should do — make patent assignments viewable

USPTO, in response to pressure from the White House and from big companies that are recipients of cease-and-desist letters, recently published proposed rules with a stated goal of promoting transparency in ownership of patents.  There are many things wrong (blog) with the proposed rules.  But there is a simple thing that the USPTO could do to promote transparency in ownership of patents that would not require rulemaking at all — make patent assignments viewable.

The recent proposed USPTO rules would impose upon all patent applicants a set of very burdensome reporting requirements and related validity risks.  Each applicant would for example have to develop a list of “attributable owners” (individual shareholders of corporate parents, individual partners in partnerships, identities of certain licensees, etc.) and disclose it to the USPTO upon filing of the patent application, and would have to provide updates to the USPTO every few months during the pendency of a patent application.  The mechanism for enforcement would be that at litigation time, a patent would be held invalid because it would be deemed to have gone abandoned years earlier due to some lapse or omission in the applicant’s “attributable owners list” reports filed with the USPTO during pendency of the patent application.  In my comments to the USPTO I expressed the hope that the proposed rules will be scrapped.

Meanwhile, however, there is a simple thing that the USPTO could do to promote transparency in ownership of patents that would not impose large burdens upon patent applicants (like the proposed rules would do) and would not require rulemaking at all.  The USPTO could make patent assignments viewable.

First a bit of background.  If you want to know who owns a US patent or who owns a US trademark registration, for over a decade the way that you would start is by doing a search in the “ Assignments on the Web ” system.  In this system you would plug in a search term and receive one or more search results.  The search term might be the property number itself (the patent number or trademark registration number).  Or it might be an assignee name or an assignor name.  The search results would be one or more “reel and frame numbers”, each of which indicated the microfilm location of images of the pages of the recorded document.  To get to the bottom of things, for each “reel and frame number” you would then have to send money to the USPTO ($25 per document) and wait for the USPTO to mail you a copy of the recorded document.  The $25 fee was tied to the employee time required to go find the correct microfilm reel and load it into a viewer/printer, and to scroll to the correct frame number, click the “print” button on the printer, and to stuff the printed pages into an envelope to be mailed to you.

After a wait of a couple of weeks, the envelope would arrive from the USPTO and you would review the copies of the recorded documents.  A document might list other related properties in which case you might find the need to do more searching and might then need to send more money to the USPTO and wait more weeks for more things to show up in the mail from the USPTO.  Review of a particular document might reveal that it was not actually an assignment at all but was conditioned on later events or was a page from a company employee policy handbook.

In the old days such delays and expense were understandable, given that the information really was trapped on physical reels of microfilm.  It was understandable that the task of getting to the bottom of who owned which patents or trademark registrations was cumbersome and took weeks or months.

But those were the old days.  For over a decade, USPTO has recorded assignments not on physical microfilm but in computer systems.  Instead of snapping a photograph of the document using a microfilm camera, USPTO runs the document through an imaging scanner, just like you or I would do, and stores it in a computer.  (USPTO gives a nod to the old world of microfilm by giving a fictional “reel and frame number” to the location in the computer of each stored scanned image.)  What’s more, USPTO has (wisely) scanned its backfile of microfilm reels (back to 1955) into this same computer system.  So nowadays if a USPTO employee needs to see some assignment document, there is no need to manipulate physical reels of microfilm any more — it can all be done with a few mouse clicks from the employee’s desk.

If the ownership that you are researching is that of a trademark registration , USPTO nowadays lets any member of the general public view the actual recorded document directly.  There is no need to pay $25 and wait a couple of weeks to receive a copy of a recorded document.  Here is an example:

The trademark people at the USPTO are to be commended for making recorded trademark assignments easily viewable in this way.  It’s been this way for more than a year now.  No $25 fee, no waiting a couple of weeks.

Unaccountably, however, the patent people at the USPTO have not followed suit.  To this day, if you want to view a recorded patent assignment, you have to pay the $25 fee and you have to wait a couple of weeks, just as it was in the old days of physical reels of microfilm.

Which gets us back to the main point of this blog post.  If USPTO wants to respond to pressure from the White House and elsewhere to promote transparency in patent ownership, why not respond by providing a “view recorded assignment” link for patent assignments as it already does for trademark assignments?

I know part of the answer to this question.  All trademark assignments are by law a matter of public record, so there is no legal problem with making it easy for a member of the public to simply click and view the assignment.  In contrast, a fraction of patent assignments (those directed to patent applications that have not been published or issued) are by law kept secret within the USPTO until such time as the property involved is published or patented.  This means that USPTO can’t simply let a member of the public see any randomly selected reel and frame number.  It’s a matter of writing the computer program so that it gets the right answer as to which patent assignments can be viewed and which cannot.

But this computer program has already been written and it already gets the right answer.  The present-day “ Assignments on the Web ” system for patent assignments already figures out which reel-and-frame-numbers it should tell you about and which ones it shouldn’t tell you about (based on whether the property has been published or issued).  So it really is just a matter of adding a “view recorded assignment” link on a web page that already exists.  Adding this link to the web page would be one way for the USPTO to respond to the White House and to the members of the public who have been clamoring for greater transparency of patent ownership.

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One reply to “what uspto should do — make patent assignments viewable”.

Great idea. Have their been any movements towards publishing the assignments?

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Patent Assignment Database: Everything You Need to Know

The Patent Assignment Database has all recorded patent information from August 1980 until now, added by the United States Patent and Trademark Office (USPTO). 8 min read updated on February 01, 2023

What Is the Patent Assignment Database?

The Patent Assignment Database has all recorded patent information from August 1980 until now. Any time someone adds information to one of the patent records, the United States Patent and Trademark Office (USPTO) adds it to the database. However, it doesn't check to make sure that the new information is correct.

How Do Patent Assignments Work?

Assignments offer flexibility. Different people can acquire different rights to a patent. One person could have the patent assignment, but a prior owner could keep a license to use the technology for free.

An interested party could only look at these documents at the USPTO. They're not available online. The best practice is for the owner of a patent to show all current and previous assignments. This is a chain of title that starts with the inventor. The most recent entry should be the current owner.

Each license agreement should also have a record. If the current owner lacks this information, they should contact previous owners. Most assignments come from the patent attorneys of startups.

One ongoing issue is that many assignments are years or even decades old. Patent law could have changed in the interim. The owner should try to keep an assignment as current as possible.

The most likely omission to an assignment is the right to causes of action. It's important because this right gives someone the ability to sue for past damages. Inventors don't have to worry about the right to causes of action since prior infringement is impossible. Once patents change hands, it's a key concern.

Interested parties should also check assignments to see if any security interests exist. In rare instances, inventors do put patents up for collateral, generally in bank transactions. The assignments database will show this information.

What Happens If No Assignments Exist?

First time inventors and new startups often have no assignments. A potential investor should wait three months in such situations. That's because a person has three months to file an assignment. It's a rate/notice policy. An assignment that was filed sooner has priority.

The danger is that someone else earned the patent assignment during those three months. They simply haven't filed with the USPTO yet. 

An older patent application without an assignment also has a requirement. The owner must file an assignment and wait three months to see if anyone else files an assignment. Assuming they don't, the assignment becomes valid.

A solid chain of title is important. It prevents infringement claims or questions of ownership. 

What Are Inventorship Issues?

Probably the worst thing that can happen with a patent claim is that someone isn't listed correctly. These situations can lead to long, expensive legal battles. An attorney can defeat a patent by proving an incorrect listing of the inventors.

There are two types of inventorship issues. Sometimes people are left off the document. One or more people could be listed as inventors even if they had nothing to do with the actual invention. The other issue is that an inventor could exclude people from the listing who deserve inventor status. 

Which Issues Arise From Having Too Many or Too Few Inventors Listed?

Inventor listings include some degree of politics. The owner of a company might expect an inventor listing for anything his employees create.

The opposite is also true. Some leaders are so generous that they credit a lot of employees as inventors, even if these workers added little to the project. 

Problems arise when someone buys the company or acquires rights to the patent. The owner of the patent has to get approval from every inventor listed.

If this happens a long time after the invention, several of these employees might work for different companies now. An investigator must contact each of them to get approval. If a single person refuses, an affadavit could negate the entire patent. 

Having too few inventors isn't as big a concern in most instances. The glaring exception is a startup accelerator company. These patents have only half the value. Many of these businesses work in tight quarters.

An employee from one startup could easily give advice to someone from a different firm. This advice could lead to a patent. The person from the second company would expect listing on the patent.

Whether the person is right or not doesn't matter. The fact that they believe it is enough to cause issues. Investors aren't interested in such patents since they appreciate the risk. The second person's claim could invalidate the patent, making it worthless.

Do Any Legal Issues Come Into Play?

Yes. For inventor claims, the safest tactic is to require employee agreements . These agreements are for patents and proprietary information. The contracts generally give the company ownership of an invention. This happens the moment the worker signs the contract.

The USPTO will accept this document as a an assignment, too. It's a preventative measure against inventors trying to take patent claims with them when they leave the company.

How Does the Patent Assignment Database Work?

The Patent Assignment Database has a search button that lets people find information about patents . The site shows assignments, which work almost the same way as a deed that shows the transfer of real estate. A person or business receives an assignment. This document lists the transfer of a patent.

Under the latest update, version 1.4, a person can search and download almost all patent information. A user can also download the original patent assignment and cover sheets. Before this update, people had to buy copies from the USPTO.

The current available searches on the Patent Assignment Database include:

• Assignee name
• Frame/reel number : The government stores patent assignment documents on microfiche. The reel number and frame number show the numbers for the specific reel and frame of the real documents.
• Patent number

The newest search features in version 1.4 include:

• Quick look-up : The user can enter one or more of the search terms above to find the exact document they want to read.
• Quick nav links
• Favorite views : A person can research Legacy Assignments on the Web (AOTW) to see Assignor and Assignee summaries and details.

The USPTO has changed the way it shows information on the Patent Assignment Database website. The earlier version showed ownership information. The updated version shows PDF images of the recorded documents. These include executed assignment documents. The new system is better since the public instead of the USPTO verifies ownership information. The USPTO simply displays the cover sheet record. 

How Does a User Search the Patent Assignment Database?

The Patent Assignment Database is easy to search . It has an ordered setup that lets the user look up intellectual property (IP) assets.

The search engine lets users:

• Search for patents : Specific searches are possible. A user can find basically anything they want if they know how to look for it.
• Set mail alerts : A person can ask for email notifications when the system finds a certain patent listing or update. This immediate alert helps people in the patent industry become the first ones to know about a change that affects their industry.
• Receive alerts about patent assignment updates : A person may want to know when the status of a patent changes. Since the system records every update, a person can ask for alerts about any patents that they're watching.
• Research legal issues : One of the updates that the Patent Assignment Database tracks is lawsuits. When a lawsuit impacts a patent, the database updates the file. Someone researching a specific patent can view all of this information.

What Are the Benefits of Tracking the Patent Assignment Database?

A person who monitors the Patent Assignment Database can benefit greatly. Potential benefits include:

• Seeing technology trends : When a person notices several patent claims in the same industry, they can study it for potential growth. New advances in a field generally lead to economic growth.

For example, a discovery in digital advertising rules allowed Facebook to become one of the most valuable companies in the world. Someone studying the company's patent filings could have bought shares in Facebook at a low cost, making a lot of money over time. They also could have invested in other companies that would benefit from the sales growth of digital advertising.

• Ability to acquire IP and/or company : Patent filings hint at future developments in an industry. A business or investor with extra money can track the Patent Assignment Database to find the next big thing in a field.

Facebook, for example, saw Oculus Rift filings and decided to buy the company for roughly $2 billion . It now owns many of the most important virtual reality patents in the world. Had Facebook waited until later to buy, it might have had to pay a lot more for the same intellectual property.

• Understand company portfolio in greater detail : The various copyrights that a company owns are important to its business standing. By studying current patents and any additions, a person will have a greater understanding of a company's current and future financial positions.

Is Any Information Not Listed in the Patent Assignment Database?

The database records few patent licenses. While a person might want to know the names of every business that licenses a patent, the government doesn't deem this information important. So, no rule requires a person or company to list licensing usages.

This decision is good for businesses. Many licensing deals are confidential. A company would have to break that agreement to register the licensing agreement on the patent record. Some web search engines allow users to search every listed licensing instance, though.

How Does a User Find the Current Owner Information of a Patent?

The Public Pair link at the Patent Assignment Database has information about the current owner of a patent. The user can search for this information using any of the Application Number, Patent Number , or Publication Number.

One note about the process is that it's not always correct. The reporting of an assignment isn't always immediate. Until this happens, the database won't record changes on the patent record. As a safety measure, check a paid database. Otherwise, your best bet is to do a search in Google News.

How Does a User Search the Patent Assignment Database More Effectively?

The system isn't user-friendly. A person will need a lot of practice to master searches. A few tips for searching more effectively include:

• Remove employer assignments : Some employers have contracts that require patent assignments. These lead to pointless results when you do a search. You can remove these assignments with a single click. The results will seem less cluttered.
• Name changes : Corporations change their names from time to time. When this happens, they file the change with the USPTO. The outcome is that all of their patents will show misleading ownership changes. Do a search for "Change of Name" to remove those results from your search.
• Merges and acquisitions : The same issue occurs with these transactions. The patent technically changes hands but not in a meaningful way. Use the Conveyance button to remove "Change of Name" and "Merger" from your results.
• Security agreements : These transactions give the least useful results. Some companies use patents to secure loans. Until they pay the amount owed, the patent's ownership status lists with the wrong company, the money lender. In some cases, thousands of transactions display incorrectly. Remove "Security" from your results to avoid this information overload.

The patent assignment database underscores the difficulty of the patent process . Your best buy is to hire a top attorney to guide you through the process. Post your job on Upcounsel to find the best lawyer for your needs.

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Search for all the patent assignments and changes in ownership for issued patents and published applications.

SEARCHABLE AOTW FIELDS

Reel/Frame Query (Ex:020252/0217) Enter at least 1 digit in the reel field and then tab to the frame field to enter at least 1 numeric digit.

Patent Number Query (Ex:8000000) Search assignments based on Patent issued.

Publication Number Query (Ex:20040002535) Search assignments based on Published Applications.

Assignor Name Query     Assignee Name Query     Assignor/Assignee Name Query User must enter at least 2 characters for a name search. Records that contain the exact data entered at a minimum will be extracted and displayed in a name summary page--> To reduce the number of records returned, more specific search criteria should be entered. Enter the name SMITH (without a comma) all records that contain the name SMITH will be displayed. However if you enter SMITH,(with a comma) only records beginning with SMITH, will be displayed. Individual names are stored in the database by last name followed by first name or first name initial.

Assignee Name Index Query     Assignor Name Index Query Enter at least 1 character (alpha and/or numeric) to execute a name index search. This type of search permits the user to browse the assignment assignee records alphabetically. An index search returns all records starting with the entered character(s) and continuing through all assignment (assignee or assignor) records that follow alphabetically. The results from conducting an Assignee Name Index search provides an Assignee Summary screen and contains additional queries for each property number and each name displayed. Please see "Assignee Name Index Query" above for additional information.

Depending on your query, All data associated with the recorded assignment will be displayed. The search results contain assignment details for a specific recorded assignment.

Additional Queries Available

Select to get and view patents, abstract viewer.

Articles Derwent Innovation: What is US Reassignment?

Derwent innovation: what is us reassignment, jun 27, 2018 • knowledge, information.

US Reassignments are patent assignments reported to the USPTO after initial issuance of the patent (post-issuance).

Reporting is a voluntary process, and, therefore, not comprehensive. Numerous events in addition to true assignments are reported in this manner and these can be important for establishing a chain of title with respect to a particular patent.

The US Reassignment field contains several important details: 

The Assignee is the recipient of the transfer of ownership.

The Assignor is the owner who is transferring the ownership.

The Date is the date the transfer was recorded.

The Conveyance information describes the transaction.  It can include phrases like: assignment of assignor's interest, judgment, license, merger, release, sale, security, agreement, security interest, or settlement.

The Reel-Frame is the microfiche reel and frame that show the record of this reassignment.

The US Reassignment-Latest  is the most recent assignment, based on the latest execution/sign date for the patent record. The format is the same as the other reassignment data.

This data is updated on a weekly basis, usually on Fridays.

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