What actions can an assignee take in a pre-AIA patent application?
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.
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.