Before your employees begin developing IP, implement strong hiring policies that ensure your IP rights will be legally enforceable in future. To track the IP your employees create, encourage your employees to document their contributions by completing invention disclosure records.
But the paperwork can be quite involved, which is why your employment policies should also include incentives to create and disclose valuable IP. Some of the innovators working for your business might not have a formal employer-employee relationship with the business. Keep an eye out for the following staffing arrangements:. In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above.
Make sure the individual innovator signs it before beginning any work on behalf of your company. While you can execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse rightly or wrongly to execute the assignment. Generally, the nonexclusive licensee does not have the right to sue for infringement and cannot assign its right to others without written permission from the licensor.
A cross-license normally results where, for example, both parties of a prospective license agreement have patent rights which the other party wishes to acquire. Thus, each party may operate without being charged with infringement of the patent rights of the other. Depending upon the value of the patents rights involved, an agreement of this type may be concluded by exchange of a license and a cross-license may, if needed, be accompanied by payment of royalties.
Cross-licenses frequently arise for the purpose of unblocking technology of each party so that each can produce the same without the threat of litigation. An assignment is as a transfer of the whole intellectual property owned by the assignor. Pursuant to Section 2. During the Term , Toray hereby grants and shall continue to grant to Acologix a worldwide , royalty - free , non - exclusive license , with the right to grant and authorize sublicenses, such sublicense right is subject to prior written consent by Toray which consent shall not be unreasonably withheld, under the Licensed -Back Subject Matter , to research , develop , make, have made, import , use, offer for sale , and sell any Products , or otherwise to exploit the Licensed-Back Subject Matter.
In the event of any future termination of this Agreement , the Parties agree to negotiate in good faith commercially reasonable terms of a license exclusive or non-exclusive to Acologix under any Licensed-Back Subject Matter to research, develop, make, have made, import, use, offer for sale or sell , such license to include the right to grant sublicenses.
If the request to record a document is not submitted electronically i. Customers should check the current fee schedule on the Office website before submitting documents for recordation.
If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3. The cover sheet for patents or patent applications must contain:.
For applications filed on or after September 16, , if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under 37 CFR 1. See 37 CFR 3. If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a "joint research agreement" in the space provided for the description of the interest conveyed if using Form PTO The date the joint research agreement was executed must also be identified.
The cover sheet must also identify the name s of the owner s of the application or patent in the space provided for the name and address of the party receiving the interest if using Form PTO The name s of every other party ies to the joint research agreement must also be identified in the space provided for the name of the party conveying the interest if using Form PTO Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.
Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:. Cover sheets required by 37 CFR 3. A patent cover sheet may not refer to trademark applications or registrations. Box , Alexandria, Virginia , unless they are filed together with new applications. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.
Patent and Trademark Office, P. Box , Alexandria, VA , unless they are filed together with new applications. Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P. Box , Alexandria, VA Assignments and other documents affecting title may be submitted to the Office via facsimile fax. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine.
If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.
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