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

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.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• agreement to assign
• patent application
• employment agreement

To learn more:

• 37 CFR 1.47(b)