Although US patent rights are protected under federal law, legal title in patents after the initial owner or owners is generally determined under applicable state law. For patent applications filed before 16 September 2012, ownership initially vests in the named inventors. For patent applications filed on or after 16 September 2012, the original applicant is presumed to be the initial owner. Ownership of a patent or patent application is assignable by written instrument, which is governed by applicable state contract law. Under the Patent Act, any assignment, grant or conveyance of a patent shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the US Patent and Trademark Office (USPTO) within three months from its date or prior to the date of such subsequent purchase or mortgage.
Although US copyrights are also protected under federal law, legal title in copyrights after the initial owner or owners is generally determined under applicable state law. Copyright in a work initially vests in the author or authors of the work. If the work is a ‘work-made-for-hire’, the employer or other person for whom the work was prepared is considered the author (and unless otherwise expressly agreed in a signed written instrument, owns the copyright in the work). Ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law. In addition, for works other than works made for hire, any assignments or licences of copyrights executed by the author on or after 1 January 1978 (other than by will) are subject to termination under certain conditions, including death of the author. A transfer of copyright ownership, other than by operation of law, is not valid unless in writing and signed by the owner of the rights conveyed (or duly authorised agents). Although recording of any transfer of rights is not mandatory, proper recording of a document in the US Copyright Office provides constructive notice of such transfer. Between two conflicting transfers, the one executed first will prevail if it is properly recorded within one month after its execution in the United States (or within two months if outside of the United States), or at any time before proper recording of the later transfer. Otherwise, the later transfer prevails if it is properly recorded first, taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties and without notice of the earlier transfer.
The United States is a ‘first to use’ jurisdiction and ownership of a trademark in the United States inures in the first party to use a trademark in commerce in connection with the relevant goods or services in the relevant geographic area. Although registration is not required, trademarks can be registered federally with the USPTO (if the mark is used in interstate commerce) or with state trademark registries. Federal trademark registration on the principal register provides various benefits, including evidence of validity and ownership of a mark, the ability to prevent others from using confusingly similar marks across the United States, the right to use the registered ® symbol, and statutory remedies for federal trademark infringement claims. Assignments of trademarks must be by written, duly executed instruments and any assignment of a trademark must include the goodwill of the business in which the mark is used. Moreover, intent-to-use trademark applications cannot be assigned before a statement or amendment to allege use has been filed with the USPTO, except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing. A trademark assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the requisite assignment information is recorded in the USPTO within three months after the date of the assignment or prior to the subsequent purchase.
Under the Defend Trade Secrets Act and most state laws, the owner of a trade secret is the person or entity in whom or in which rightful legal or equitable title to, or licence in, the trade secret is reposed. Thus, the trade secret owner is the person or entity who knows the trade secret information and has taken reasonable measures to keep such information secret. Transfer of ownership of a trade secret is subject to state contract law since the assignment of a trade secret technically requires both transfer of the knowledge of the trade secret as well as obligations of the assignor not to use or disclose (or permit the use or disclosure of) the trade secret post-assignment.
Unlike copyrights, registration of mask works in the Copyright Office is required for protection. Ownership of a mask work originally vests in the person who created the mask work, except that if a mask work is made within the scope of a person’s employment, the owner of the mask work is the person’s employer. Although US mask work rights are protected under federal law, legal title in mask works after the initial owner or owners is generally determined under applicable state law. The owner of exclusive rights in a mask work may transfer all of those rights by any written instrument signed by such owner or a duly authorised agent of the owner. A mask work transfer shall be void against a subsequent transfer that is made for a valuable consideration and without notice of the first transfer unless the first transfer is recorded in the Copyright Office within three months after the date on which it is executed, but in no case later than the day before the date of such subsequent transfer.
Domain names are typically registered with accredited registrars or through registration services. Registrants typically provide the following information when registering a domain name: the domain name, registrant name, servers assigned to the domain name, and billing, administrative and technical contacts. Domain name registrars have different procedures for transferring ownership of domain names. Typically, domain name transfers involve terminating the existing registrant’s contract with the registrar and creating a new contract between the new registrant and the registrar for the right to use the domain name being transferred. Parties may enter into agreements to memorialise the conditions of the domain name transfer.
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