Inheritance of enforceable patents

Question

There have been several recent questions in the form of “My [family member] was granted patent [x]. How can I claim it?”. So far, these patents have all been long since expired or assigned to companies, not individuals, and so the possibility of getting them revived or reassigned was not even an option.

I'll provide a few of those questions here for reference:

• Is US 4,915,276 A still owned by Ermin Devito?
• My grandfathers patent, expired?
• Information regarding my father’s invention?
• My Grandfathers Patent - D94036

So now, this has me wondering about the case where a patent is currently enforceable. I feel that my own answers to the above questions are not fully satisfactory for those asking the question. I hope that asking the following questions directly will provide the missing piece:

• Is inheritance of a patent (assigned to an individual) possible?
• What part of the U.S. legal Code covers the inheritance of a patent?
• Would patent inheritance need to be recorded as a re-assignment by the USPTO?

A satisfactory answer to this question would include references to the legal code, and any publicly available resources that could serve as starting points for someone who finds themselves in the above situation.

Answer 1

Is inheritance of a patent (assigned to an individual) possible?

Yes.

A patent is personal property, per 35 USC § 261:

Subject to the provisions of this title, patents shall have the attributes of personal property.

When the owner of a piece of personal property dies, the property passes like any other property. If the deceased person has a will, the ownership of the patent will generally pass according to the directions in the will. If the person dies intestate (without a will) or the person's will does not direct how the ownership of the patent should pass, the applicable state's or country's intestacy laws will apply to decide who the ownership of the patent passes to.

This is also confirmed by 35 USC § 154:

Every patent shall contain … a grant to the patentee, his heirs or assigns

What part of the U.S. legal Code covers the inheritance of a patent?

35 USC § 261 (as above) provides that patents are personal property. Inheritance of personal property is a state matter, so the USC does not govern the specific rules.

Would patent inheritance need to be recorded as a re-assignment by the USPTO?

It does not need to be, but there may be ramifications for failing to do so. Per 35 USC § 261:

An assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

Essentially, this provides that if (1) A sells a patent to B, (2) B fails to register the assignment in time, and (3) A later re-sells the same patent to C who does not know anything about the previous sale, then C owns the patent in the clear, and B has lost out.

Since a change of owner by operation of probate law could arguably be a conveyance, it ought to be registered. Though, it is difficult to see how the deceased party could ever assign the patent to a third party, so it's probably an intellectual matter.