09Feb ASSIGNMENT OF PATENTS, TRADEMARKS, AND COPYRIGHTS
The main difference between assigning a patent and licensing a patent is crucial. Assigning Patents, Trademarks or Copyrights is basically selling the complete ownership interest in that patent, trademark, or copyright. And the licensing of a patent, trademark, or copyright is like “renting” that patent, trademark, or copyright.
Assignment of Patents, Trademarks or Copyrights can be created in whole or in portion. In other words, you may possibly assign away 50%, 1%, or 99% of your interest in that Patent, Trademark, or Copyright. Assignments could be integrated into a contract, or may be drafted separately. And the assignment of Patents, Trademarks or Copyrights can be fairly straight forward.
By way of contrast, the licensing of Patents, Trademarks or Copyrights is essentially “renting” those Patents, Trademarks or Copyrights. In the most strict legal sense, a license for Patents, Trademarks or Copyrights is basically a promise not to sue the licensee for infringement of those Patents, Trademarks or Copyrights which belong to you. These licenses are normally time-constrained. They might be made for a fixed number of months, years, decades, or contingent upon a specific event.
Assignments, like deeds, are not time sensitive. When you assign those Patents, Trademarks or Copyrights, your rights in those Patents, Trademarks or Copyrights are gone forever. In other words, you can’t assign those rights in your Patents, Trademarks or Copyrights for a period of months, years, or decades.
For this reason, an assignment of Patents, Trademarks or Copyrights will be far more valuable than a simple license to those Patents, Trademarks or Copyrights. As such, any assignment you make really should be duly recorded with the USPTO, Library of Congress, or your Secretary of State.
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