Intangible Assets

"Intangible assets" is a term used more often by accountants that attorneys. However, this class of intellectual property should be recognized as a large part of any IP strategy that seeks to protect and leverage a company's entire technology portfolio. The economic value of technology companies often lies outside "traditional" IP such as patents, trademarks and copyrights and can be found in the form of trade secrets (e.g., customer lists), know how, technical data generated from R&D, government licenses (e.g., FDA, EPA, and USDA authorizations to manufacture or perform certain activities), collaboration activities, and more generally "human capital." A comprehensive intellectual property strategy should include these assets which are often more important to a business's bottom line than traditional forms of intellellectual property.

While accounting standards treat various intangible assets differently depending upon the useful life of the asset, impairment of the asset, amortization of the asset, etc., an important aspect of intanbible assets is that their value can be leveraged for the benefit of your business. In other words, the value of an intangible asset need not derive from a certain serial number provided by the federal government (like a patent, trademark, or copyright), but can derive from the assembly of data, instructions, recipes, algorithms and the like that cannot be touched, physically measured, or protected by the government. All of these intangible assets can be assigned a value in license agreements, wills, trusts, and other contracts to provide additional revenue streams depending on your business activity.

Assignments and Licenses

A patent is personal property and may be sold to others or mortgaged; it may be bequeathed by a will; and it may pass to the heirs of a deceased patentee. Patent law provides for the transfer or sale of a patent, or of an application for patent, by a document called an assignment. Assignments may transfer the entire interest or a part interests in the patent. The assignee (the recipient of the assignment), becomes the owner of the patent and has the same rights as the original patent owner.

There may also be assignments that don't convey all right, title and interest in the patent. For example, an assignment might convey patent rights for a specified part of the United States. As another example, a mortgage using a patent as collateral passes ownership of the patent to the lender until the mortgage has been satisfied, and the patent is transferred back to the borrower. A conditional assignment also passes ownership of the patent and is regarded as absolute until canceled by the parties or by the decree of a competent court.

When possible, an assignment of any patent or patent application should be witnessed before a notary public. Such acknowledgment constitutes prima facie evidence of the execution of the assignment.