⚠ Standing Is Jurisdictional
In IP litigation, only the legal owner can sue for infringement. If your chain of title has gaps, defendants will move to dismiss under Rule 17 for lack of standing. Fix assignment issues BEFORE filing your complaint.
IP Types & Assignment Requirements
Patent Assignment
Transfer patent rights from inventors through corporate entities to current owner.
- Original inventor assignment
- Employment PIIA documentation
- Corporate chain of title
- USPTO recordation (37 CFR 3.11)
- Assignment separate from license
Trademark Assignment
Transfer trademark rights with associated goodwill. Naked assignments are void.
- Assignment with goodwill
- Business asset transfer
- USPTO Trademark Assignment
- State trademark registration
- Domain name transfers
Copyright Assignment
Transfer copyright ownership with written assignment. Exclusive licenses may also confer standing.
- Written assignment required
- Work-for-hire documentation
- Copyright Office recordation
- Exclusive license standing
- Termination rights awareness
Trade Secret Assignment
Transfer trade secret rights while maintaining confidentiality and reasonable security.
- Confidential identification
- Security measure transfer
- Employee NDA continuation
- Physical/digital asset transfer
- Ongoing protection obligations
Chain of Title Checklist
👤 Inventor/Author Assignment
Written assignment from original creator to first corporate owner. For patents, inventors must personally sign. For copyrights, author must assign unless work-for-hire.
💼 Employment Agreements (PIIA)
All employees and contractors who contributed must have signed invention assignment agreements. Check for gaps in early hires and founders.
📃 Corporate Assignments
Each corporate transfer (acquisition, merger, spin-off) must have a written IP assignment. Board resolutions authorizing the transfer.
📋 Recordation
Patents: Record with USPTO within 3 months. Trademarks: Record with USPTO. Copyrights: Record with Copyright Office for statutory benefits.
🔍 Gap Analysis
Review entire chain from creation to present. Identify any missing links, unsigned agreements, or unrecorded transfers.
📝 Cure Documents
Draft and execute cure assignments, confirmatory assignments, or nunc pro tunc assignments to fix identified gaps before filing.
Shuttered Entity IP Transfer Process
Entity Status Review
Check Secretary of State records. Determine if entity is dissolved, suspended, or can be revived. Review formation state's rules on dissolved entity asset disposition.
Identify IP Assets
Compile complete IP inventory: patents, patent applications, trademarks, copyrights, trade secrets, domain names, and source code. Match to assignment records.
Review Operating Documents
Check bylaws, operating agreement, shareholder agreements for IP disposition upon dissolution. Some documents automatically assign IP to founders or successors.
Execute Assignment
If entity can act: board resolution + IP assignment agreement. If dissolved: shareholder/member consent + successor assignment. If needed: court order.
Record & Document
Record patent/trademark assignments with USPTO. File copyright assignments with Copyright Office. Update domain registrations. Maintain complete file for standing defense.
IP Assignment Tools
📄 IP Assignment Generator
Generate customized IP assignment agreements with chain of title representations and warranty provisions.
📝 PIIA Generator
Employee/contractor invention assignment agreements to establish IP ownership from creation.
⚖ Claims Assignment Hub
Assign IP infringement causes of action along with the underlying IP rights.
🛡 UVTA Analysis
Ensure IP transfers don't create fraudulent conveyance exposure with creditors.
Need IP Assignment Help?
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