Assignments: Get the full text of the Agreement

At one time, the public record easily accessible from the PTO gave only the barest abstract of title. Assignor, Assignee, date of recordation, reel and frame numbers: that was it.

It was possble to visit the PTO and obtain a copy of the Assignment document, as recorded on microfilm, but the process was cumbersome and time-consuming.

No more. A few years ago, the PTO made it easy to obtain a copy of the actual Assignment document.

Why does this help?

Often, the Assigment document is a simple agreement, stating only the “for good and valuable consideration”, the inventor assigns his or her invention to the Assignee. In that case, details on the terms of the assignment cannot be determined from the Assignment document itself.

But in a significant number of cases, the recorded assignement document contains many of the terms and conditions of the Assignment, such as consideration paid, rights retained and so forth.

Moreover, Assignments are not the only document eligible for recordation. The PTO has made it easy to record any of the following types of documents:

Assignment
Nunc Pro Tunc Assignment
Merger
Merger and Change of Name
Change of Name
Court Order
Corrective Assignment
Security Interest
Release of Security Interest
Government Interest Agreement
Executive Order 9424, Confirmatory License
Mortgage
Lien
License
Option
Decree of Distribution
Letters Testamentary
Letters of Administration
Court Appointment of Trustee
Conditional Assignment

So if you are looking for behind-the-scene details on the nature and terms of agreements that affect a patent or patent application, a copy of the document might turn out to be a goldmine of information.

How to get the document:

Head over to the following URL: https://assignment.uspto.gov/patent/index.html#/patent/search, which asks you to enter information about the patent property you’re interested in. The page looks like this:

The “Quick Lookup” page is often adequate, but as you can see, there is also a tab for a boolean search, and a tab for advanced searching.

The Quick Search is adequate here, so let’s enter our favorite Apple patent, Apple’s slide-to-unlock patent, U.S. Patent No. 8,046,721, whose formal title is “Unlocking a device by performing gestures on an unlock image”. (We’ve been using this patent as an example in other articles.) Since we know the patent number, enter it and the following information is displayed:

Hmm, nothing found.

Well, it turns out that there is a trick to this, applicable to many patents including Apple’s. It’s a relatively common situation, which merits a “practice Pointer”:

Practice pointer: It’s common to record an Assignment only against the earliest parent application, and not all subsequently-filed child applications. If you can’t find Assignment information for the case you’re investigating, check in the Continuity information for the property to see if there is a parent. If there is a parent, then see if the Assignment can be found in the parent application.

In this case, the ultimate parent for the Apple patent is Application No. 11/322549. Try entering that number instead and ….

 

That’s much better. We see the traditional abstract of title, showing the original Assignmnet from the inventors to Apple, followed by a name change.

Click on the barely-perceptible pdf icons (circled above) and you get the original document. Doing that for the inventors’ original Assignment yields the following:

assignment-apple-patent-pat-8046721

Well, there’s not much information there, and quite candidly, that’s often the case when viewing Assignments from large corporations.

But you never know when you might hit the jackpot, and the information you seek is dropped into your lap.

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