Recordation of assignment resolves ownership issue

Recordation of an assignment is a key step in establishing clear ownership of patent rights.  It provides the assignee with a presumption of ownership that can prevent or mitigate disputes. This presumption arises because recordation offers “constructive notice” to the public, meaning that anyone reviewing the patent records can see that a transfer of ownership occurred. Recordation, therefore, secures ownership and strengthens the new owner’s rights in the face of potential challenges, as illustrated in the SiRF Technology v. ITC case.

Recordation vs. Actual Notice: Why It Matters

When a patent assignment is recorded with the U.S. Patent and Trademark Office (USPTO), it provides constructive notice to the public. Constructive notice means that even if a party is unaware of the assignment, they are legally assumed to have knowledge of it because the record is publicly accessible. This is critical in situations where ownership disputes arise, as recorded assignments create a public record of the transfer and protect the assignee against claims from previous owners or third parties. Without recordation, an assignee would rely on actual notice, requiring them to directly notify others of the transfer, which is less reliable and more challenging to prove in disputes.

Case Example: SiRF Technology v. ITC

In SiRF Technology v. ITC, ownership of a patent hinged on an invention assignment agreement between an employee and two consecutive employers. Here’s how the case unfolded:

1. Initial Assignment Agreement: The first employer had the employee sign an agreement assigning all inventions related to the employer, even covering inventions created after the employee left and joined another company.
2. Conflicting Assignments: The employee later joined a second employer, obtained a patent for a new invention, and assigned the rights to this new employer (Global Locate). However, when Global Locate asserted the patent, the defendant (SiRF) challenged its ownership, claiming the invention still belonged to the first employer based on the initial assignment agreement.
3. Court Ruling on Recordation: The court held that because the assignment to Global Locate was recorded with the USPTO, it created a presumption of ownership in favor of the new employer. This presumption placed the burden of proof on SiRF to demonstrate that Global Locate did not own the patent, which SiRF failed to do. The court emphasized that recordation of the assignment provided a presumption of validity that could not be easily rebutted.

Key Lessons from the Case

1. Prompt Recordation Is Essential: Recording patent assignments as early as possible, ideally at the time of filing the patent application, secures a presumption of ownership that can prevent disputes. This presumption shifts the burden to the opposing party, making it harder for them to claim ownership.
2. Minimal Costs for Significant Protection: The cost of recording an assignment with the USPTO is minimal, especially compared to the expenses of defending a patent ownership dispute in court. Recordation is a cost-effective step that strengthens the assignee’s rights and helps avoid costly litigation.

Practical Takeaway

Ensuring clear ownership of a patent begins with well-drafted invention assignment agreements and continues with prompt recordation. By recording the assignment, patent owners gain a legal presumption of validity and ownership that provides robust protection against future challenges.

For more guidance on securing and recording patent assignments, or for help with any other patent-related questions, feel free to contact me at (949) 433-0900. As an Orange County Patent Attorney, I’m here to help you navigate patent ownership and ensure your rights are protected.