When must ownership be established for an assignee to take action in a patent matter?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Consents to the correction of inventorship in a patent
• Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.