What is the difference between an assignment and an agreement to assign in the context of MPEP 409.03(f)?

MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:

• Assignment: A completed transfer of rights in the invention.
• Agreement to Assign: A promise to transfer rights in the future, often conditional.

For an assignment, MPEP 409.03(f) states:

“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”

For an agreement to assign:

“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.”

Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• assignment
• agreement to assign
• proprietary interest

To learn more:

• 37 CFR 1.47(b)