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5 ways to clean up patent assignment records

Aug 26, 2013

A common use of assignment search is to track the current owner of a patent asset. However, this feature can be used in more substantial ways, to understand the transaction trends. Studying transactions in a technology area of interest suggests leads for commercialization, by short-listing potential licensees or buyers (in the case of a patent sale). In addition, you can use this to get better insights while conducting a portfolio analysis. You may also seamlessly move from patent to assignment search, to determine the transactions for any given set of patent documents.

[caption id="" align="aligncenter" width="442"]Image courtesy: HubSpot Image courtesy: HubSpot[/caption] Alternatively, you may initiate a new search in the assignment database in exactly the same way as the patent database. The various methods and fields available to perform an assignment search are identical to those available for a patent search. It is also possible to graph the various sets of assignment records to obtain insights. There is however some cleanup involved in arriving at the set of assignment transfers that are genuine. Here are five ways to quickly refine your search by removing irrelevant transactions: [caption id="attachment_173" align="aligncenter" width="481"]Click to enlarge the image Click to enlarge the image[/caption] Individual inventor assignments - When individual inventors assign patents to their employers as per their contracts, the transactions show up in your analysis. This is a basic problem many analysts face. You can now remove these assignments from the result set with a click of a button, as shown below. Security agreement assignments - These transactions occur when patent holders assign patents to banks/funding agencies to secure a loan. If you were to search for patents held by the company Freescale, you’d notice about 14,500 assignment records transferring ownership rights to Citibank. On closer analysis, the conveyance will display these to be security agreements. Hence, these patents would be transferred back to Freescale on the repayment of loans, and might not be helpful in your analysis. Using the field Conveyance in advanced search, you can identify these assignments by entering the keyword “Security.” The resultant assignment records can then be removed from the original set. Name change - Apple changed its name from Apple Computers Inc. to Apple Inc. in the year 2007. This change of company name was recorded with the USPTO and shows up as re-assignment record for many of their patents. Now, in your analysis about Apple patents, you might not be interested in transactions from Apple Computers Inc. to Apple Inc. You can use the conveyance feature again, to search for “Change of Name” and remove all the assignment records that do not denote genuine transactions. Mergers/acquisitions - Typically, when a company merges with or acquires another company, the patents are assigned to the newly created entity (merger) or to the acquiring company. When NEC Electronics Corporation and Renesas Technology Corporation merged to form Renesas Electronics Corp, the patents were also transferred under the conveyance “Change of Name” and “Merger.” So, these types of transactions can also be quickly removed using conveyance search. Subsidiaries and parent companies - Things get a little tricky here, as the conveyance type used in transactions between subsidiaries and their parent entities is a generic “Assignment of Assignors Interest.” For example, a search for transactions of GE would display many assignments to subsidiaries such as GE Healthcare, GE Aviation, GE Wind energy, GE Medical, and GE Capital. A Relecura feature called ‘Browse’ can help you tackle this problem. This feature displays two lists for the result set viz. Original Assignees and Current Assignees. Using radio buttons, you can select all subsidiaries and parent entities from both these lists, and subsequently remove these assignment records from your result set. [caption id="attachment_172" align="aligncenter" width="388"]Click to enlarge the image Click to enlarge the image[/caption] The five steps described above can help you quickly work through the process of cleaning-up your assignment search. Are there any other methods that you use while studying patent assignment records? Do let me know in the comments.

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