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Assigning and licensing a Patent or a Patent application

Region: Ontario Answer # 300

Assigning and licensing are two different ways that inventors can profit from their patents. The process of assigning or licensing a patent or a patent application is usually complicated. To make sure that your rights are protected, you should contact a patent lawyer to advise you about assigning or licensing your patent or patent application. You should also have your lawyer review the agreement before you sign it.

Assignments

An assignment is the sale of your ownership of all or some of a patent. When you assign your invention you give up rights as the inventor. A benefit of assigning your patent is that you could make an immediate profit without worrying about whether the invention will be a success in the market. You can assign a patent or even a patent application. Assignments must be made in writing. Any changes in ownership should be registered with the Patent Office at the Canadian Intellectual Property Office (CIPO) by completing a Request for the Registration of a Transfer. This will protect your legal rights and you will be able to bring a lawsuit against anyone who uses your potential invention without your permission.

A written assignment in front of witnesses is recommended. Failure to record a transfer can lead to complications and disputes over ownership. If a patent transfer has not been recorded and another party subsequently acquires the patent and records this secondary transfer, the person who records the transfer first will have a stronger claim to ownership.

Patents can be co-owned. A co-owner can sell their entire interest without the consent of the other co-owners, as long as the other co-owner’s rights are not impacted. A written agreement addressing each co-owner’s rights and obligations is advisable.

 

Licensing

Licensing gives someone other than the inventor permission to do, for example, one or more of making, using and selling the patented invention while the inventor maintains ownership of the patent. In most cases, the owner of the invention will charge a fee and/or royalty for granting someone a license. If you are involved in a licensing arrangement, you should make sure that the agreement is in writing and that it includes the time limits of the license and the fees or royalties to be paid. Licenses should also be registered with the Patent Office.

There are government fees for filing an assignment or a license of a patent with the Patent Office. For more information and current government fees, refer to the Canadian Intellectual Property Office.

 





								

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