Birmingham, AL asked in Patents (Intellectual Property) for Tennessee

Q: How can I find out if there is an monetary benefit from patents filed by a deceased relative?

My late son worked for a large company from which we have requested a copy of any release he signed as a condition of employment, relinquishing any profit from patents he filed. We have not received a copy of any such release. How should we proceed?

1 Lawyer Answer
Kevin E. Flynn
Kevin E. Flynn
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Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: First, I am sorry that your son has died. As a parent, I do not want to attend a funeral for any of my children.

You can check to see if any patents or published applications in the US system have your son as assignor (person granting rights). https://assignment.uspto.gov/patent/index.html#/patent/search

This will let you know the patents or published applications that your son assigned or maybe licensed to another party (often the employer).

Some newer patent applications won't show up in this system until the application is published at 18 months or issued as a patent if they opted out of publication. Some recipients of assignments do not go through the suggested step or recording the assignment into this database so there may be something missing.

Under 37 C.F.R. 1.12 you can pay for a copy of the assignment that was recorded.

1.12 Assignment records open to public inspection.

[Editor Note: Paras. (b) and (c)(2) below include changes applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012*]

(a)

(1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.

(2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.

(b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14, are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.

(c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14, or any information with respect thereto, must:

(1) Be in the form of a petition including the fee set forth in §1.17(g); or

(2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.

(d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

You will need the Reel and Frame number for each document you want to obtain. They have moved things around and I do not see a link to start the order process. You may need to call the Public Records Division at 571 272 3350.

I hope this helps.

Kevin E Flynn

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