37 CFR § 3.73 — Establishing right of assignee to take (MPEP Coverage Index) – BlueIron IP
37 CFR § 3.73 Establishing right of assignee to take
This page consolidates MPEP guidance interpreting 37 CFR § 3.73, including 277 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
The primary requirement is obtaining written consent from all current assignees before filing a reissue application, ensuring compliance with legal obligations.
What this section covers
- This section covers the necessity for assignee consent in reissue applications and the requirements for obtaining such consent.
Key obligations
- Practitioners must obtain written consent from all current assignees for a reissue application.
- Consent must be provided before filing the reissue application to ensure compliance with legal requirements.
- Proper identification of all assignees and clear documentation of their consent are essential compliance obligations.
Practice notes
- Ensure all assignees are properly identified and their consent is clearly documented before filing the reissue application.
- Obtaining consent from assignees is a critical step to avoid legal pitfalls and ensure compliance with reissue application requirements.
Official MPEP § 3.73 — Establishing right of assignee to take
Source: USPTOLast Modified: 10/30/2024 08:50:22
3.73 Establishing right of assignee to take action.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]
- (a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
- (b) In order to request or take action in a
trademark matter, the assignee must establish its ownership of the
trademark property of paragraph (a) of this section to the
satisfaction of the Director. The establishment of ownership by the
assignee may be combined with the paper that requests or takes the
action. Ownership is established by submitting to the Office a signed
statement identifying the assignee, accompanied by either:
- (1) Documentary evidence of a chain of title from the original owner to the assignee ( e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
- (2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
- (c)
- (1) In order to request or take action in
a patent matter, an assignee who is not the original applicant
must establish its ownership of the patent property of paragraph
(a) of this section to the satisfaction of the Director. The
establishment of ownership by the assignee may be combined with
the paper that requests or takes the action. Ownership is
established by submitting to the Office a signed statement
identifying the assignee, accompanied by either:
- (i) Documentary evidence of a chain of title from the original owner to the assignee ( e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11 ; or
- (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
- (2) If the submission is by an assignee of less
than the entire right, title and interest
(
e.g., more than one assignee exists) the
Office may refuse to accept the submission as an establishment
of ownership unless:
- (i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
- (ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties own the entire right, title and interest.
- (3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application.
- (1) In order to request or take action in
a patent matter, an assignee who is not the original applicant
must establish its ownership of the patent property of paragraph
(a) of this section to the satisfaction of the Director. The
establishment of ownership by the assignee may be combined with
the paper that requests or takes the action. Ownership is
established by submitting to the Office a signed statement
identifying the assignee, accompanied by either:
- (d) The submission establishing ownership under
paragraph (b) or (c) of this section must show that the person signing
the submission is a person authorized to act on behalf of the assignee
by:
- (1) Including a statement that the person signing the submission is authorized to act on behalf of the assignee;
- (2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
- (3) For patent matters only, being signed by a practitioner of record.
[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 1992; para. (b) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (b)(1)(i) revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]
[ *The changes to § 3.73 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 § 3.73 (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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- Application Types
- Continuing Applications
- Cip Applications
- Assignment Ownership
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- Assignee Pre Aia
- Assignee Prosecution Actions
- Name Change Merger
- Ownership Fundamentals
- Recording Assignments
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- Correspondence Address
- Director Authority
- Petition Procedures
- Petition 1183
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- Reexamination Conclusion
- Examination Procedure
- Amendments Practice
- Examiner Action
- Action Signing
- Rce Practice
- Patent Term
- Term Expiration
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- Ptab Contested Case
- Reissue
- Reissue Application
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- Reissue Oath Declaration
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- Section 112
- Section 112A
- New Matter
- Signature Requirements
- Documents Requiring Signature
- Signature Assignee
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- Supplemental Examination
- Supplemental Examination Request