Declarations, Power of Attorneys, and Assignments

Hi, I'm Rich Beem. I'm a patent attorney in Chicago. I'd like to talk with you about three formal documents that are often filed along with a patent application. One of those documents is called a declaration, a declaration of the inventor. And what the declaration does is it says I the inventor have invented what is disclosed in this patent application. I believe myself to be the true and first inventor. I acknowledge that I have the duty to disclose material that is relevant information to the patent office. I have read this patent application and I have approved it for filing, and here's my signature that says that under penalty of perjury I am seeking this patent application. That's the declaration. That's the first document that I want to mention.

The second document is related. It's called the power of attorney. Now, you can file a patent application in your own right, on your own behalf with the patent office. But most people choose to have a patent attorney file and prosecute the patent application for them. And in order to do that what is required is a power of attorney. The power of attorney says I inventor have designated Rich Beem as my patent attorney and I would like you to allow him to file papers on my behalf. And when you have communications, you the patent office, I'd like you to send them to Rich Beem at my patent attorney so that he can review them and tell me what's going on and advise me as to my next steps are.

Now the third document that's often filed with the patent application is called an assignment. An assignment is something that is, typically, filed if you are an employee of a company and the company is going to own the patent. And the assignment says I the inventor who have invented what's disclosed in this patent application I am assigning my rights to my employer.

Assignments can also be done if you sell a patent. Selling a patent is also called assigning a patent, and that's done through a form called an assignment. And that has to be in writing in a written document and at the top of it it will be called assignment.

So those are three documents that are often filed along with your patent application. There's the declaration that has to be file with or soon after the patent application. There's the power of attorney that, typically, is filed along with the patent application. And there's the assignment. And the assignment can be filed at the same time as the patent application, or often shortly following. Where an assignment can be filed at any time, it might be a year or two after you file the patent application. Or even after the patent is issued, you decide you're going to sell it to someone and in order to do that you file an assignment. An assignment, by the way, is recorded in a special branch of the US Patent and Trademark Office. It's kind of like the recorder of deeds. If you own real property, you record it at the county courthouse. When you own a patent because you have obtained an assignment, you file that assignment and it is recorded within the patent office.

I'm Rich Beem. If I can help you with any of these documents for your patent application, call me at 312-201-0011. Thank you for joining me.