What documentation is needed to show an agreement to assign in a pre-AIA 37 CFR 1.47(b) 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.

To demonstrate an agreement to assign in a pre-AIA 37 CFR 1.47(b) application, you should provide:

• A copy of the written agreement to assign the invention
• If the agreement is conditional, a statement of facts showing the conditions have been met

MPEP 409.03(f) states:

“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted. If an agreement to assign is dependent on certain specified conditions being met, it must be established by a statement of facts by someone with first hand knowledge of the circumstances in which those conditions have been met.”

A common example is an employment agreement. In such cases, you must provide evidence that the invention was made during the course of employment, typically through a statement from someone with firsthand knowledge of the circumstances.