Comments on United States Patent Assignment Information

Comments on United States Patent Assignmentassignment document. The USPTO's assignment
Informationdatabase does not include the actual assignment
The text below is a copy of an email that I sentdocument. Thus, the USPTO's assignment
the Patent Interference User's Group (PIUG) ondatabase and all databases derived from that
November 4, 2003, regarding United Statesdatabase only reflect the information copied onto
Patent Assignment Information. My email was inthe recordation sheet. I believe that no database
response to a chain of emails discussing contentsprovider has copies of the actual assignment
and accuracy of assignment information provideddocuments in an electronic database. The USPTO
by the commercial database providers.stores image copies of the actual assignment
***documents on micro fiche available at the USPTO,
I am dissatisfied with the possibility that you allindexed by reel/frame. The micro fiche images
may be relying upon commercial databases forcan be printed and are the best evidence of
assignee due diligence work. You should all keep inassignment. Therefore, the best place to do an
mind HOW the assignee information shown on theassignment search in the first instance, is at the
face of a U.S. patent gets there, WHAT itUSPTO. You can identify allegedly assigned
signifies, and WHAT you should search whenpatents by searching the assignment database,
checking on title of U.S. patents.and then pull up the ACTUAL assignment
Someone fills out an "Issue Fee Transmittal form"documents by the reel/frame associated with
for an allowed patent application. On that form,each patent number.
they write in the name they want to appear onWhen conducting due diligence assignment work, I
the patent as the Assignee. Sometimes they getoften see discrepancies in the chain of title that
that wrong, for a variety of reasons. The namewould or should be resolved to perfect the chain
shown as the assignee on an issued U.S. patent isof title. For example, I have seen in an
not conclusive evidence that an assignment exists,assignment chain, the person executing an
and it is not conclusive evidence that the entityassignment on behalf of A to B is actually listed
listed as the assignee is, even at the time ofas an officer of company C, not company A.
issuance of the patent, the owner of the patent.(Why did he sign the document? Maybe C owns
It is just a name.A and that person thinks that C, not A, owns the
On the other hand, the assignment records, whichpatent and is assigning it. Not!) That assignment
are kept by the USPTO separate from thedocument would not result in a valid assignment,
patent application files, list all assignments andand B would not have valid title to the patent.
related transfers of interests (primarily securityThe only way to identify that type of defect is
agreements and licenses) for patent propertiesto review the actual assignment documents. In
recorded in the USPTO. If you are interested inany case, any due diligence assignment search
knowing the actual current legal assignee andshould include review of copies of the actual
providing persuasive proof a chain of title, theassignment documents.
USPTO's assignment records are the best placeFOOTNOTE: You may also find security interests
to look, as opposed to the face of the publishedthat may include patents filed in the state or
patent, or elsewhere. (BUT, see footnote andcounty secured transactions recording office for
caveat below.) The assignment databasethe location of the company identified as the
generated by the USPTO shows the informationassignee. For example, if the assignee has debt,
the person filing a copy of the executedthey may have signed a security agreement,
assignment writes on the "RECORDATION FORMgeneral or specific, that may cover some or all IP
COVER SHEET." The "RECORDATION FORMrights. This is another place to look when
COVER SHEET" is the form they are obliged toconducting a patent assignment due diligence
file along with the copy of the actual executedsearch.