MPEP § 308 — Issue to Applicant (Annotated Rules)
§308 Issue to Applicant
This page consolidates and annotates all enforceable requirements under MPEP § 308, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Issue to Applicant
This section addresses Issue to Applicant. Primary authority: 35 U.S.C. 118 and 37 CFR 1.46. Contains: 2 requirements, 1 prohibition, 1 guidance statement, 2 permissions, and 1 other statement.
Key Rules
Issue Fees
Applicants other than the inventor can notify the Office of a change in the real party in interest by providing the real party in interest in Box 3 of the PTOL-85B. See MPEP § 307. The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or on any patent that is granted. Any desired change to the designated applicant must be made in accordance with 37 CFR 1.46 no later than issue fee payment. Note: requests to change the recorded applicant cannot be filed after patent grant.
Applicants other than the inventor can notify the Office of a change in the real party in interest by providing the real party in interest in Box 3 of the PTOL-85B. See MPEP § 307. The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or on any patent that is granted. Any desired change to the designated applicant must be made in accordance with 37 CFR 1.46 no later than issue fee payment. Note: requests to change the recorded applicant cannot be filed after patent grant.
Applicants other than the inventor can notify the Office of a change in the real party in interest by providing the real party in interest in Box 3 of the PTOL-85B. See MPEP § 307. The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or on any patent that is granted. Any desired change to the designated applicant must be made in accordance with 37 CFR 1.46 no later than issue fee payment. Note: requests to change the recorded applicant cannot be filed after patent grant.
Applicants other than the inventor should record the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) before payment of the issue fee.
Patent Grant and Document Format
35 U.S.C. 118 and 37 CFR 1.46(e) provide that where the Director grants a patent on an application filed under 35 U.S.C. 118 by a person other than the inventor, the Office must grant the patent to the real party in interest. Therefore, the Office is requiring applicants other than the inventor to notify the Office of any change in the real party in interest in a reply to a notice of allowance. Absent any such notification, the Office will presume no change has occurred and will grant the patent to the real party in interest of record.
35 U.S.C. 118 and 37 CFR 1.46(e) provide that where the Director grants a patent on an application filed under 35 U.S.C. 118 by a person other than the inventor, the Office must grant the patent to the real party in interest. Therefore, the Office is requiring applicants other than the inventor to notify the Office of any change in the real party in interest in a reply to a notice of allowance. Absent any such notification, the Office will presume no change has occurred and will grant the patent to the real party in interest of record.
Applicants other than the inventor can notify the Office of a change in the real party in interest by providing the real party in interest in Box 3 of the PTOL-85B. See MPEP § 307. The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or on any patent that is granted. Any desired change to the designated applicant must be made in accordance with 37 CFR 1.46 no later than issue fee payment. Note: requests to change the recorded applicant cannot be filed after patent grant.
AIA Effective Dates
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See pre-AIA 35 U.S.C. 118 for the law otherwise applicable.]
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a), 363,or 385 on or after September 16, 2012. See pre-Hague 37 CFR 1.46 or pre-AIA 37 CFR 1.46 for the rule otherwise applicable.]
AIA vs Pre-AIA Practice
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See pre-AIA 35 U.S.C. 118 for the law otherwise applicable.]
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a), 363,or 385 on or after September 16, 2012. See pre-Hague 37 CFR 1.46 or pre-AIA 37 CFR 1.46 for the rule otherwise applicable.]
PTAB Contested Case Procedures
A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
Citations
| Primary topic | Citation |
|---|---|
| AIA Effective Dates AIA vs Pre-AIA Practice | 35 U.S.C. § 111(a) |
| AIA Effective Dates AIA vs Pre-AIA Practice Patent Grant and Document Format | 35 U.S.C. § 118 |
| AIA Effective Dates AIA vs Pre-AIA Practice Issue Fees Patent Grant and Document Format | 37 CFR § 1.46 |
| Patent Grant and Document Format | 37 CFR § 1.46(e) |
| Issue Fees Patent Grant and Document Format | MPEP § 307 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 308 — Issue to Applicant
Source: USPTO308 Issue to Applicant [R-10.2019]
[Editor Note: This MPEP section is only applicable to applications filed on or after September 16, 2012.]
35 U.S.C. 118 Filing by other than inventor.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See pre-AIA 35 U.S.C. 118 for the law otherwise applicable.]
A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
37 CFR 1.46 Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a), 363,or 385 on or after September 16, 2012. See pre-Hague 37 CFR 1.46 or pre-AIA 37 CFR 1.46 for the rule otherwise applicable.]
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- (b) If an application under 35 U.S.C.
111 is made by a person other than the inventor under
paragraph (a) of this section, the application must contain an application data
sheet under § 1.76 specifying in the applicant information section
(§
1.76(b)(7)) the assignee, person to whom the inventor is
under an obligation to assign the invention, or person who otherwise shows
sufficient proprietary interest in the matter. If an application entering the
national stage under 35 U.S.C. 371, or a
nonprovisional international design application, is applied for by a person other
than the inventor under paragraph (a) of this section, the assignee, person to
whom the inventor is under an obligation to assign the invention, or person who
otherwise shows sufficient proprietary interest in the matter must have been
identified as the applicant for the United States in the international stage of
the international application or as the applicant in the publication of the
international registration under Hague Agreement Article 10(3).
- (1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
- (2) If the applicant is a person who otherwise
shows sufficient proprietary interest in the matter, such applicant must
submit a petition including:
- (i) The fee set forth in § 1.17(g);
- (ii) A showing that such person has sufficient proprietary interest in the matter; and
- (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
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- (e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81. Where a real party in interest has filed an application under § 1.46, the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest.
35 U.S.C. 118 and 37 CFR 1.46(e) provide that where the Director grants a patent on an application filed under 35 U.S.C. 118 by a person other than the inventor, the Office must grant the patent to the real party in interest. Therefore, the Office is requiring applicants other than the inventor to notify the Office of any change in the real party in interest in a reply to a notice of allowance. Absent any such notification, the Office will presume no change has occurred and will grant the patent to the real party in interest of record.
Applicants other than the inventor can notify the Office of a change in the real party in interest by providing the real party in interest in Box 3 of the PTOL-85B. See MPEP § 307. The real party in interest will be listed in the assignee section of the patent. This does not change the applicant designated in the application or on any patent that is granted. Any desired change to the designated applicant must be made in accordance with 37 CFR 1.46 no later than issue fee payment. Note: requests to change the recorded applicant cannot be filed after patent grant.
Applicants other than the inventor should record the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) before payment of the issue fee.