PPC Patent Licensing & Assignments 1 — Questions and Answers
Question 1: What is required for a patent assignment to be valid under 35 U.S.C. § 261?
- It must be in writing and signed by the assignor (Correct answer)
- It only needs to be verbally agreed upon by both parties
- It must be notarized by a state official
- It must be filed within 30 days of the invention date
Correct answer: It must be in writing and signed by the assignor
Under 35 U.S.C. § 261, a patent assignment must be in writing and signed by the assignor to be legally valid and enforceable.
Question 2: How does a patent assignment fundamentally differ from a patent license?
- An assignment transfers ownership while a license grants rights to use without transferring ownership (Correct answer)
- An assignment is temporary while a license is permanent
- A license transfers all patent rights while an assignment grants only limited rights
- There is no legal difference between an assignment and a license
Correct answer: An assignment transfers ownership while a license grants rights to use without transferring ownership
An assignment conveys the entire ownership interest in a patent, whereas a license merely grants permission to practice the patent without transferring title.
Question 3: What protection does recording a patent assignment with the USPTO within three months provide?
- Protection against subsequent purchasers who acquire an interest without notice of the prior assignment (Correct answer)
- Protection against foreign patent infringement claims
- Immunity from government compulsory licensing demands
- Automatic estoppel against third-party validity challenges
Correct answer: Protection against subsequent purchasers who acquire an interest without notice of the prior assignment
Recording an assignment within three months of its execution protects the assignee against a subsequent bona fide purchaser who acquires the patent without notice of the prior unrecorded transfer.
Question 4: What is a field-of-use restriction in a patent license agreement?
- A limitation confining the licensee's use of the patent to a specific application or industry sector (Correct answer)
- A geographic restriction on where the patent may be practiced
- A time restriction on the duration of the license term
- A limit on the number of units the licensee may manufacture annually
Correct answer: A limitation confining the licensee's use of the patent to a specific application or industry sector
A field-of-use restriction confines the licensee to practicing the patented technology only within a defined application area or market segment, allowing the licensor to license separately in other fields.
Question 5: What characterizes an exclusive license in U.S. patent law?
- It grants the licensee the sole right to practice the patent, potentially excluding even the patent owner (Correct answer)
- It grants identical rights simultaneously to multiple licensees
- It is limited to a single geographic territory within the U.S.
- It automatically converts to a full assignment after five years
Correct answer: It grants the licensee the sole right to practice the patent, potentially excluding even the patent owner
An exclusive license grants the licensee the sole right to practice the patent within the licensed scope, which may expressly exclude even the patent owner from exercising those rights.
Question 6: Under what circumstances may an exclusive licensee have standing to sue for patent infringement?
- When the licensee has been granted all substantial rights in the patent (Correct answer)
- Whenever the licensee pays royalties, regardless of the rights granted
- Only after the patent owner formally declines to sue
- Any licensee, including non-exclusive licensees, automatically has standing
Correct answer: When the licensee has been granted all substantial rights in the patent
An exclusive licensee who holds all substantial rights in the patent is treated as the effective patent owner and may have independent standing to bring an infringement suit.
Question 7: What is a sublicense in the context of patent licensing?
- A license granted by the original licensee to a third party, allowing that party to practice the licensed patent rights (Correct answer)
- A reduced-royalty license offered to small businesses by the patent owner
- A secondary patent issued by the USPTO covering improvements to the original invention
- A license covering only a subset of the claims in a patent
Correct answer: A license granted by the original licensee to a third party, allowing that party to practice the licensed patent rights
A sublicense is a grant of rights by a licensee to a third party, enabling that third party to practice the patent rights the licensee received, typically only when the original license expressly permits sublicensing.
PPC Patent Licensing & Assignments 1
What is required for a patent assignment to be valid under 35 U.S.C. § 261?