37 CFR § 1.46 — Application for patent by an assignee, (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.46 Application for patent by an assignee,
This page consolidates MPEP guidance interpreting 37 CFR § 1.46, including 263 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 Application for patent by an assignee must include specific information on the application data sheet and be accompanied by a properly signed petition showing sufficient proprietary interest.
What this section covers
- This section covers petitions filed by assignees to represent inventors under 37 CFR 1.46.
- It provides guidance on the application data sheet requirements for assignee information.
Key obligations
- The primary requirement is to file a petition showing sufficient proprietary interest by the assignee.
- The application data sheet must contain specific assignee information as a key compliance obligation.
- The petition must be signed by a registered patent attorney or agent representing the assignee.
Practice notes
- Ensure all required assignee information is included on the application data sheet to avoid delays or rejections.
- Failing to properly sign the petition can lead to delays or rejections, so ensure it is correctly signed.
Official MPEP § 1.46 — Application for patent by an assignee,
Source: USPTOLast Modified: 10/30/2024 08:50:22
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 *]
- (a) 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.
- (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.
- (c)
- (1) Correction or update in the name of the applicant. Any request to correct or update the name of the applicant under this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section (§ 1.76(b)(7) ) in accordance with § 1.76(c)(2) . A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.
- (2) Change in the applicant. Any request to change the applicant under this section after an original applicant has been specified must include an application data sheet under § 1.76 specifying the applicant in the applicant information section (§ 1.76(b)(7) ) in accordance with § 1.76(c)(2) and comply with §§ 3.71 and 3.73 of this title.
- (d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64 . See § 1.64 concerning the execution of a substitute statement by an assignee, person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter.
- (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.
- (f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.
[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; 57 FR 29642, July 6, 1992, effective Sept. 4, 1992; revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012; para. (b) introductory text and para. (c) revised, 80 FR 17918, Apr. 2, 2015, effective May 13, 2015]
[ *The changes effective Sept. 16, 2012 and May 13, 2015 are applicable only to patent applications filed on or after Sept. 16, 2012. See § 1.46 (pre‑AIA) for the rule otherwise in effect.]
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