What actions can an assignee take in a pre-AIA patent application?
An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:
- Signing a reply to an Office action
- Requesting a continued prosecution application (CPA)
- Signing a terminal disclaimer
- Submitting a Fee(s) Transmittal form
- Requesting status of an application
- Appointing a registered patent practitioner to prosecute the application
- Granting power to inspect an application
- Consenting to the filing of a reissue application
- Consenting to the correction of inventorship
The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances.
However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.
For more information on assignee rights, visit: assignee rights.
For more information on patent prosecution, visit: patent prosecution.
For more information on pre-AIA applications, visit: pre-AIA applications.