How does an assignee establish ownership to take action in a patent application?
To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must:
- File a request to change the applicant under 37 CFR 1.46(c)(2)
- File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
- Submit a statement under 37 CFR 3.73(c) establishing ownership
The 37 CFR 3.73(c) statement must contain either:
- Documentary evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence was submitted for recordation, or
- A statement specifying where such evidence is recorded in the Office (e.g., reel and frame number)
The MPEP states: “The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.”
Topics:
MPEP 300 - Ownership and Assignment,
Patent Law,
Patent Procedure