Demystifying the USPTO Patenting Process:

USPTO and iEdison Timelines

How to Transfer Patent Rights Effectively

How to Transfer Patent Rights Effectively

When a university decides to reassign patent rights to the inventor, there are specific requirements and processes that must be followed to satisfy the USPTO and iEdison, which is used by federal agencies to track compliance with federal regulations concerning inventions. Here's a detailed look at the steps involved:

  1. USPTO Requirements – this requires action by the Inventor and TT&C
    1. Recordal of Assignment: The reassignment of patent rights from the university to the inventor must be recorded with the USPTO. This involves submitting a record of the assignment agreement, which clearly states that the university transfers all rights to the patent back to the inventor.
    2. Assignment Document: The document must be signed by both the assignor (the university) and the assignee (the inventor), specifying the patent application or patent number involved.
    3. Submission and Fee payment: The assignment documents can be submitted electronically through the USPTO’s Electronic Patent Assignment System (EPAS). When the filing fee is paid, the information becomes part of the official patent record.
  2. University and Inventor Requirements – this requires action by the University and Inventor
    1. Commercial Reassignment Agreement: This document is not a public document since it is a negotiated arrangement between the university and the inventor. Typically, this document defines financial responsibilities, such as upon commercialization of the invention the inventor pays the university for patent prosecution expenses and, possibly future royalties.
  3. iEdison Requirements – this involves action by TT&C
    1. Notification of Changes: Since iEdison tracks government-funded inventions, any change in the ownership of such patents (which may be the case if the invention was developed with federal funding and initially assigned to the university) must be reported in iEdison.
    2. Update the Invention Report: TT&C must update the records in iEdison to reflect the change in ownership. This includes updating the status of the invention, the ownership details, and any corresponding patent information.
    3. Compliance with Federal Funding Agreement: The reassignment should be compliant with the terms of the federal funding agreement. Often, federal grants require the university to take certain actions regarding the invention, such as attempting commercialization. If the rights are reassigned to the inventor, it should be ensured that these obligations are still met or properly waived.
    4. Confirm No Government Interest: In cases where the federal government does not retain a non-exclusive license to the invention, it must be confirmed through iEdison, ensuring that all reporting and compliance measures are still upheld.