37 CFR § 3.71 — Prosecution by assignee. (MPEP Coverage Index) – BlueIron IP
37 CFR § 3.71 Prosecution by assignee.
This page consolidates MPEP guidance interpreting 37 CFR § 3.71, including 120 rules 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.
Summary
This section covers the obligations and responsibilities of an assignee when prosecuting a patent, focusing on identifying patent owners for supplemental examination requests and ensuring proper authority to act on behalf of the owner.
What this section covers
- Define what this section covers at a high level, including revocation of power of attorney and request for supplemental examination.
- Identify the core topic and scope of guidance in this section, focusing on assignee's rights and responsibilities.
Key obligations
- State the primary requirement practitioners must satisfy, which is to ensure proper identification of patent owners for supplemental examination requests.
- State an additional required element or condition if applicable, such as including a submission by the patent owner in the request.
- State a key compliance obligation tied to authority (USC/CFR), which includes ensuring that an assignment does not act as a revocation of power of attorney.
Practice notes
- Give a practical drafting or filing tip grounded in this section, such as ensuring that all required information is included in the request for supplemental examination.
- Call out a common pitfall or best practice relevant to this section, such as the importance of verifying that an assignee has the right to file on behalf of the patent owner.
Official MPEP § 3.71 — Prosecution by assignee.
Source: USPTOLast Modified: 10/30/2024 08:50:22
3.71 Prosecution by assignee.
[Editor Note: Paras. (a) – (c) below are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 *]
- (a) Patents—conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may conduct prosecution of a national patent application as the applicant under § 1.46 of this title, or conduct prosecution of a supplemental examination or reexamination proceeding, to the exclusion of the inventor or previous applicant or patent owner. Conflicts between purported assignees are handled in accordance with § 3.73(c)(3) .
- (b)
Patents—assignee(s) who can prosecute. The
assignee(s) who may conduct either the prosecution of a national
application for patent as the applicant under §
1.46
of this title or a supplemental
examination or reexamination proceeding are:
- (1) A single assignee. An assignee of the entire right, title and interest in the application or patent, or
- (2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent, who together own the entire right, title and interest in the application or patent. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent. The word “assignee” as used in this chapter means with respect to patent matters the single assignee of the entire right, title and interest in the application or patent if there is such a single assignee, or all of the partial assignees, or all of the partial assignee and inventors who have not assigned their interest in the application or patent, who together own the entire right, title and interest in the application or patent.
- (c) Patents—Becoming of record. An assignee becomes of record as the applicant in a national patent application under § 1.46 of this title, and in a supplemental examination or reexamination proceeding, by filing a statement in compliance with § 3.73(c) that is signed by a party who is authorized to act on behalf of the assignee.
- (d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b) .
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)-(c) revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[ *The changes to paras. (a)-(c) effective Sept. 16, 2012 are applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012. See § 3.71 (pre‑AIA) for the rule otherwise in effect.]
- Access Records
- Assignee Access
- Power To Inspect
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- Aia Overview
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- Oath Declaration
- Assignment Ownership
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- Assignee Pre Aia
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- Filing By Assignee
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- Correspondence Address
- Director Authority
- Petition Procedures
- Petition 1183
- Examination Procedure
- Amendments Practice
- International Design
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- Ida Applicant
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- Pct
- Pct Filing
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- Ptab Contested Case
- Reissue
- Reissue Ownership
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- Section 112
- Section 112A
- New Matter
- Signature Requirements
- Signature Assignee
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