When is new assignment paperwork required for applications claiming benefit of a provisional application?

New assignment paperwork is required in the following scenario:

• The application claiming benefit of a provisional application includes subject matter that is not common with the provisional application, and
• The application was filed before September 16, 2012, or the assignee is not the original applicant in the later application.

MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This requirement is similar to the practice for continuations-in-part filed under 35 U.S.C. 120.

To learn more:

• provisional application
• assignment
• new subject matter
• continuation-in-part