Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.
Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.
A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant or conveyance of a patent or application for patent.
An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.
Notes of Decisions
Vapor Point LLC v. Moorhead, 832 F.3d 1343 (Fed. Cir. 2016).
· cites it 7× “DISCUSSION 35 U.S.C. § 261 provides that “[a]pplications for pa- tent, patents, or any interest therein, shall be assignable in law by an instrument in writing.”
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir. 2017).
· cites it 2× “35 U.S.C. §§ 261 , 281. IV argues that although the Alset Agreement did not expressly identify the ’581 patent’s then-pending application, the agreement transferred title because the parties intended for the assignment to cover this asset.”
Kaempe, Staffan v. Myers, George, 367 F.3d 958 (D.C. Cir. 2004).
· cites it 2× “See 35 U.S.C. § 261 (2000). A patent owner or applicant may convey his or her rights in a patent or patent application, in whole or in part, by means of an assignment executed in writing.”
Beghin-Say Int'l Inc. v. Ole-Bendt Rasmussen, 733 F.2d 1568 (Fed. Cir. 1984).
· cites it 6× “Beghin-Say allegedly “complied fully” with the statute, 35 U.S.C. § 261 , 1 making patent applications assignable, and a regulation, 37 CFR § 1.”
Filmtec Corp. v. Allied-Signal Inc., & Uop Inc., 939 F.2d 1568 (Fed. Cir. 1991).
· cites it 5× “FilmTec counters by arguing that the trial court was correct in concluding that the most the Government would have acquired was an equitable title to the ’344 patent, which title would have been made void under 35 U.S.C. § 261 (1988) 2 by the subsequent assignment to FilmTec…”
Abraxis Bioscience, Inc. v. NAVINTA LLC, 672 F.3d 1239 (Fed. Cir. 2011).
· cites it 14× “Subsequently, on November 12, 2007, AZ-UK finally assigned the three patents to Abraxis. The analysis is simple.”
St. John's Univ., New York v. Bolton, 757 F. Supp. 2d 144 (E.D.N.Y 2010).
· cites it 3× “See 35 U.S.C. § 261 . 'Although the PTO’s records indicate that Hygrosol represented to the PTO that Bolton and Spireas assigned the Liquisolid Patents to it in 1998, the transfer was not publicly recorded with the PTO until 2006.”
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 776 F.3d 837 (Fed. Cir. 2015).
· cites it 4× “However, BPV has never claimed that in 2003 it had all substantial rights to the ’135 patent. 2 BPV’s position is only that it was an exclusive licensee with the right to sue 2 In 2007, Goldfarb assigned his remaining inter- ests in the ’135 patent to BPV.”
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