Patent Law FAQ

The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:

• Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
• Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
• Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.

Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.

For more information on new assignment, visit: new assignment.

For more information on USPTO requirements, visit: USPTO requirements.

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on patent assignment, visit: patent assignment.

For more information on substitute application, visit: substitute application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:

• Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
• Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
• Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.

Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.

For more information on new assignment, visit: new assignment.

For more information on USPTO requirements, visit: USPTO requirements.

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on patent assignment, visit: patent assignment.

For more information on substitute application, visit: substitute application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

Submitting legible copies of assignment documents to the USPTO is crucial because the quality of the recorded document depends on the quality of the submitted copy. The USPTO does not improve or enhance the quality of submitted documents.

According to MPEP 302.01: If the copy submitted for recordation is illegible, the recorded document will be illegible.

This means that if you submit an illegible copy, the officially recorded document will also be illegible, potentially causing issues with proving ownership or assignment in the future. To avoid such problems, always ensure that you submit clear, high-quality copies of your assignment documents for recordation.

To learn more:

• legible copies
• assignment documents
• USPTO recordation
• document quality

Recording certificates of name change or merger for patents is crucial for maintaining a clear chain of title. According to MPEP 314, these documents serve as important links in the ownership history of a patent.

The MPEP states:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.

By recording these certificates, you ensure that the USPTO and any interested parties can trace the ownership history of the patent accurately. This is particularly important for legal proceedings, licensing negotiations, or potential patent sales.

To learn more:

• certificate recording
• patent ownership
• chain of title
• name change
• business merger

Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:

• For name changes: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
• For mergers: Documents of merger are also proper links in the chain of title.

Recording these changes ensures:

1. The USPTO has up-to-date information on patent ownership
2. Third parties can accurately identify the current patent owner
3. The chain of title remains clear and unbroken, which can be important for future transactions or litigation
4. Compliance with legal requirements for maintaining patent rights

Document legibility is crucial when submitting patent assignments because:

1. The USPTO does not return recorded documents.
2. If the submitted copy is illegible, the recorded document will also be illegible.
3. Illegible documents may cause legal issues or complications in proving ownership.

The MPEP emphasizes this point: “If the copy submitted for recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.”

It’s the responsibility of the submitter to ensure that all documents are clear and readable to maintain accurate records of patent ownership.

MPEP 303 highlights the importance of determining who should direct prosecution:

“When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

Determining who should direct prosecution is crucial because:

• It ensures that the rightful owner or assignee is making decisions about the application
• It prevents unauthorized individuals from influencing the prosecution process
• It helps resolve potential disputes over ownership or control of the application
• It maintains the integrity of the patent examination process

When there’s uncertainty about this, examiners must verify assignment information to ensure proper handling of the application.

Why doesn’t the USPTO return original assignment documents after recording?

The USPTO does not return original assignment documents after recording to maintain a permanent, unaltered record and to prevent potential disputes or fraud. According to MPEP 302.01: ‘The USPTO will not return documents filed for recording.’ This policy serves several purposes:

• Ensures the integrity of the recorded documents
• Prevents alterations or substitutions after recording
• Maintains a consistent and reliable archive
• Reduces administrative burden and potential for loss

By keeping all submitted documents, the USPTO can provide certified copies if needed for legal or business purposes, ensuring a reliable chain of title for patent rights.

The USPTO records documents other than assignments for several important reasons:

1. Public interest: To provide notification to third parties of equitable interests or other matters relevant to patent ownership.
2. Transparency: To maintain a clear record of various interests in patents and patent applications.
3. Legal compliance: To fulfill the requirements of 35 U.S.C. 261 and 37 CFR 3.11.

The MPEP states, “Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application.” (MPEP 313)

The restrictions on USPTO employees regarding patents are in place to prevent conflicts of interest and maintain the integrity of the patent system. These rules, outlined in 35 U.S.C. 4 and MPEP 309, serve several purposes:

• Prevent employees from using insider knowledge for personal gain
• Ensure fair and unbiased examination of patent applications
• Maintain public trust in the patent system
• Avoid potential conflicts between an employee’s official duties and personal interests

By prohibiting employees from applying for or acquiring patents during their employment and for a period after, the USPTO aims to preserve the objectivity and fairness of the patent examination process.

Assignment documents are not placed directly in patent application files to ensure proper recording and maintenance of ownership records. MPEP 318 states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This procedure serves several purposes:

• It centralizes the recording of ownership information
• It ensures that assignments are properly recorded and searchable
• It keeps the main application file focused on technical and procedural aspects of the patent application
• It allows the Assignment Division to maintain a separate database of patent ownership information

Assignment documents are not placed directly in application or patent files to ensure proper recording and management. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This practice serves several purposes:

• It ensures that assignments are properly recorded by the specialized Assignment Division.
• It maintains the integrity and organization of application and patent files.
• It allows for efficient tracking and retrieval of assignment information.

To learn more:

• assignment documents
• patent files
• application files
• Assignment Division
• document management

The English translation of a non-English assignment document must be signed by the individual who performed the translation. As stated in MPEP 302.02:

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

This requirement ensures the accuracy and authenticity of the translation. It’s important to note that the translator’s signature is required, not necessarily the signature of the parties involved in the assignment.

To learn more:

• patent assignment
• document translation
• translator signature
• USPTO requirements

The responsibility for filing the notice of arbitration award with the USPTO is primarily assigned to the patent owner or their representatives, but there are provisions for other parties to file if necessary. According to 35 U.S.C. 294(d) and 37 CFR 1.335:

• The patentee, assignee, or licensee is primarily responsible for filing the notice.
• If the required notice is not filed by the designated party, any party to the arbitration proceeding may file the notice.

35 U.S.C. 294(d) states: “When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director.”

This flexibility ensures that the USPTO is informed of arbitration outcomes, even if the primary responsible party fails to file the notice.

The presumption of ownership for patent applications depends on the filing date. According to MPEP 301:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This change in presumption reflects updates to U.S. patent law under the America Invents Act. It’s important for applicants and inventors to be aware of this presumption, as it can affect various aspects of patent prosecution and ownership rights.

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”

For an assignee organization (e.g., corporation, partnership, university), the submission establishing ownership can be signed by:

1. A person with apparent authority to sign on behalf of the organization, such as an officer (e.g., CEO, president, vice-president, secretary, treasurer). The MPEP states: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization.”
2. Any person, if the submission states that the person is authorized to act on behalf of the assignee.
3. A person empowered by an organizational resolution, if a copy of the resolution is submitted.

If the signer does not fall into one of these categories, evidence of their authority to sign may be required. This is outlined in MPEP 324, section V.

According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:

1. A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
2. Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
3. A patent practitioner of record
4. A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted

The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”

When an assignee is an organization (e.g., corporation, partnership, university), specific individuals are authorized to sign documents on its behalf. According to MPEP 325, the following persons can sign submissions under 37 CFR 3.73(c):

1. A person with apparent authority to sign on behalf of the organization. This typically includes officers such as the CEO, president, vice-president, secretary, or treasurer.
2. Any person, if the submission clearly indicates that the person is authorized to act on behalf of the assignee.
3. A patent practitioner of record.
4. A person empowered by an organizational resolution, if a copy of the resolution is submitted.

The MPEP states: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”

It’s important to note that for juristic entities, many actions in patent matters must be signed by a registered patent practitioner after September 16, 2012.

For more information on corporate officers, visit: corporate officers.

For more information on patent documents, visit: patent documents.

For pre-AIA patent applications (filed before September 16, 2012), the submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. According to MPEP 324, this can be done in several ways:

• A person with apparent authority in the organization, such as an officer (e.g., CEO, president, vice-president, secretary, or treasurer).
• Any person, if the submission clearly states that the person is authorized to act on behalf of the assignee.
• A person empowered by an organizational resolution, if a copy of the resolution is submitted.

The MPEP notes: Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required. It’s important to ensure that the proper authority is established to avoid delays in patent prosecution.

For more information on assignee rights, visit: assignee rights.

For more information on authorized signatories, visit: authorized signatories.

For more information on pre-AIA applications, visit: pre-AIA applications.

Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states:

Title reports may not be ordered by applicants or attorneys.

These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.

According to MPEP 325, one or more assignees can conduct prosecution of a national patent application as the applicant. Specifically, 37 CFR 3.71(b) states that:

“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.”

This means that either a single assignee with full ownership, or all partial assignees and remaining inventors collectively, can prosecute the application as the applicant.

For more information on prosecution, visit: prosecution.

According to 35 U.S.C. 118, the following parties can file a patent application:

• A person to whom the inventor has assigned the invention
• A person to whom the inventor is under an obligation to assign the invention
• A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor

The law states: 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.

The placement of the government license rights statement in a patent application depends on whether there are references to related applications:

• If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
• If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.

This placement is specified in 37 CFR 1.77(b)(1)-(3).

When submitting assignment documents along with new patent applications, the mailing address is different from the general assignment recordation address. According to MPEP 302.08:

Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

This ensures that your assignment documents are properly associated with the new patent application and processed accordingly by the USPTO.

To learn more:

• Assignment documents
• New patent applications
• USPTO mailing address
• Document submission

MPEP 318 provides clear guidance on where assignment documents should be forwarded for recording. According to the manual:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This means that when submitting assignment documents, they should be sent to the USPTO’s Assignment Division, which is responsible for recording and maintaining records of patent ownership changes.

For more detailed information about the required cover sheet for patent assignments, you can refer to MPEP 302.07. This is explicitly mentioned in MPEP 302.05, which states:

See MPEP § 302.07.

MPEP 302.07 provides comprehensive guidance on the cover sheet requirements, including the necessary information to be included, such as the assignee’s address. Additionally, you can find forms and instructions for recording assignments on the USPTO’s Assignment Recordation Branch website.

To learn more:

• patent assignment
• cover sheet
• MPEP 302.07
• USPTO resources

To learn more:

• MPEP 302.07

For additional information on restrictions applicable to USPTO employees, you can refer to MPEP § 1701. The MPEP section on restrictions upon employees of the U.S. Patent and Trademark Office states:

See MPEP § 1701 for additional restrictions on Office employees.

MPEP § 1701 provides more detailed guidance on various ethical considerations and restrictions for USPTO employees, including conflicts of interest, outside employment, and post-employment restrictions. This section is an important resource for understanding the full scope of rules and regulations that apply to USPTO employees and former employees.

For more information on USPTO employees, visit: USPTO employees.

For assignee applicants or persons to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership should be recorded as follows:

• As provided for in part 3 of Chapter 37 CFR
• No later than the date the issue fee is paid in the application

According to 37 CFR 1.46(b)(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.

According to 37 CFR 1.46(b)(1), documentary evidence of ownership should be recorded as follows:

“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.”

In other words, if you’re filing as an assignee or obligated assignee, you should record your documentary evidence of ownership (such as an assignment or employment agreement) with the USPTO no later than when you pay the issue fee for your patent application.

For more information on documentary evidence, visit: documentary evidence.

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Consents to the correction of inventorship in a patent
• Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

An assignee must establish ownership under 37 CFR 3.73(c) in various situations, including when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Signs a Fee Transmittal (PTOL-85B)

The MPEP notes: “Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.”

New assignment paperwork is required in the following scenario:

• The application claiming benefit of a provisional application includes subject matter that is not common with the provisional application, and
• The application was filed before September 16, 2012, or the assignee is not the original applicant in the later application.

MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This requirement is similar to the practice for continuations-in-part filed under 35 U.S.C. 120.

To learn more:

• provisional application
• assignment
• new subject matter
• continuation-in-part

MPEP 303 outlines specific situations where a patent examiner needs to obtain assignment information from the Patent Application Locator and Monitoring (PALM) system:

“When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

This typically occurs in two main scenarios:

1. When applications from different inventors have conflicting claims
2. When there’s uncertainty about who should direct the prosecution

In these cases, the examiner must consult PALM to clarify the assignment status.

A title report is typically prepared at specific stages of the patent process. The MPEP Section 320 states that “A title report is prepared when a new application is filed in order to notify the examiner of the assignment status of the application.” Additionally, title reports are prepared:

• When a Notice of Allowance is mailed
• When an application is ready for issue
• When a request for a correction of inventorship is received

These reports ensure that the most current ownership information is available at critical points in the patent process.

For more information on new application, visit: new application.

For more information on notice of allowance, visit: notice of allowance.

For more information on title report, visit: title report.

A petition to expunge is necessary when there has been a complete error in recording an assignment document at the USPTO. This typically occurs when a document not intended for recording was erroneously recorded. As stated in MPEP 323:

‘In the case of a complete error (e.g., a wrong document is recorded), a petition to expunge the assignment record should be filed.’

Key points about petitions to expunge:

• They are used for complete errors, not minor corrections
• The petition should clearly explain the nature of the error
• Supporting documentation may be required
• The USPTO will review the petition and make a determination

It’s important to note that expungement is a serious step and should only be used when absolutely necessary.

For more information on USPTO, visit: USPTO.

The need for a new assignment in applications derived from earlier applications depends on the type of application and its content:

• Division and Continuation Applications: Generally, no new assignment is required as the prior assignment is automatically applied. However, a new recordation request is needed to reflect this in USPTO records.
• Substitute and Continuation-in-Part Applications: New assignments are typically required unless the application is filed on or after September 16, 2012, and the assignee is the original applicant.
• Applications Claiming Provisional Benefits: If the application includes only subject matter from the provisional application, no new assignment is needed. However, if it includes new subject matter, a new assignment is required, with the same exception as for substitute and continuation-in-part applications.

Always refer to MPEP § 306, § 307, and § 308 for the most up-to-date and detailed information.

For more information on new assignment, visit: new assignment.

For more information on USPTO requirements, visit: USPTO requirements.

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

Patent examiners need to obtain assignment information in specific situations where the ownership of an application is significant. The MPEP 303 outlines two key scenarios:

1. Conflicting claims in applications of different inventors: When multiple applications from different inventors contain claims that conflict with each other.
2. Questions about who should direct prosecution: When there is uncertainty about which party has the right to control the patent prosecution process.

In these cases, the MPEP states: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” PALM refers to the USPTO’s Patent Application Location and Monitoring system.

For more information on assignment information, visit: assignment information.

For more information on conflicting claims, visit: conflicting claims.

For more information on Patent examiners, visit: Patent examiners.

For more information on patent prosecution, visit: patent prosecution.

Patent examiners typically do not require title reports for routine examination. The MPEP states:

Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report.

When ownership information is necessary, examiners can obtain a title report through the USPTO’s internal PALM Intranet system.

Title reports are not typically used in routine patent examination. The MPEP clarifies: Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report. For instance, title reports may be requested by the Reexamination Preprocessing Staff when a request for reexamination is filed. Examiners can obtain title reports through the USPTO’s internal PALM Intranet system when necessary.

For more information on patent examination, visit: patent examination.

For more information on title report, visit: title report.

What types of evidence can be used to establish assignee ownership in pre-AIA applications?

For pre-AIA applications (filed before September 16, 2012), assignees can use various types of evidence to establish ownership, including:

• Assignment documents
• Corporate merger documentation
• Patent purchase agreements
• Court orders
• Joint research agreements

The MPEP 324 states: “The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee.” This means that in addition to proving ownership, the assignee must also demonstrate the authority of the person acting on their behalf.

For more information on assignee ownership, visit: assignee ownership.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

The USPTO records various documents related to patents and patent applications, including:

• Licenses
• Security interests
• Liens
• Options
• Mortgages
• Name changes
• Mergers
• Change of entity status

According to MPEP 313: Other documents relating to interests in patents or applications will be recorded as provided in 37 CFR 3.11. This includes a wide range of documents that affect the ownership or rights associated with patents and applications.

For more information on licenses, visit: licenses.

For more information on patent documents, visit: patent documents.

For more information on security interests, visit: security interests.

The Electronic Patent Assignment System (EPAS) accepts various types of assignment-related documents. As stated in MPEP 302.10:

“The EPAS system allows customers to submit assignments and other documents related to title (e.g., lien agreements, probate documents, licenses, etc.) directly into the automated Patent and Trademark Assignment System.”

This system streamlines the submission process for a wide range of ownership and assignment documents.

To learn more:

• EPAS
• assignment documents
• lien agreements
• probate documents
• licenses

The USPTO records various documents related to patent ownership and interests. Common types include:

• Assignments
• Security agreements
• Mergers
• Name changes
• Licenses
• Liens
• Joint research agreements
• Government interests

As stated in MPEP 302.07: “Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are: (A) assignment; (B) security agreement; (C) merger; (D) change of name; (E) license; (F) foreclosure; (G) lien; (H) contract; and (I) joint research agreement.”

To record a document:

1. Ensure it’s eligible for recordation
2. Complete the appropriate cover sheet
3. Submit the document and cover sheet to the USPTO
4. Pay any applicable fees

Remember, the USPTO generally only records documents that affect title to patents or patent applications. Consult the MPEP or a patent attorney for guidance on specific document types.

For more information on patent documents, visit: patent documents.

For more information on USPTO recordation, visit: USPTO recordation.

In addition to assignments, the USPTO will record various other documents relating to interests in patent applications and patents upon request. These include:

• License agreements
• Security interest agreements
• Other documents affecting title to applications, patents, and registrations

As stated in the MPEP, “Other documents affecting title to applications, patents, and registrations will be recorded as provided in 37 CFR Part 3 or at the discretion of the Director.” (MPEP 313)

What types of documents can be recorded in the USPTO assignment database?

The USPTO assignment database accepts various types of documents related to patent ownership and interests. According to MPEP 302, recordable documents include:

• Assignments of patent rights
• Security interests (e.g., liens, mortgages)
• Licenses
• Releases
• Certificates of name changes
• Mergers
• Other documents affecting title to applications, patents, or registrations

The MPEP states: ‘Any document which relates to the title in a patent or patent application will be recorded as provided in 37 CFR 3.11.’ This broad definition allows for the recording of various ownership-related documents.

For more information on licenses, visit: licenses.

For more information on patent assignments, visit: patent assignments.

For more information on recordable documents, visit: recordable documents.

For more information on security interests, visit: security interests.

For more information on USPTO database, visit: USPTO database.

What types of documents can be recorded in the Assignment Division of the USPTO?

The Assignment Division of the USPTO records various types of documents related to patent ownership. According to MPEP 302, the following types of documents can be recorded:

• Assignments of patents and patent applications
• Security interests in patents and patent applications
• Licenses that grant a security interest in patents or patent applications
• Documents that affect title (e.g., certificates of name change, mergers, change of corporate form)
• Liens
• Certificates of release or discharge of security interests
• Conditional assignments
• Bailments

It’s important to note that the USPTO does not determine the validity of the documents submitted for recordation. As stated in MPEP 302:

‘The Assignment Division does not determine the validity of the document but rather records the document that appears to be a document affecting title.’

This means that while a wide range of documents can be recorded, it is the responsibility of the parties involved to ensure the legal validity and enforceability of the documents they submit.

For more information on Assignment Division, visit: Assignment Division.

For more information on recordable documents, visit: recordable documents.

For more information on USPTO, visit: USPTO.

What types of documents can be recorded as assignments with the USPTO?

The USPTO allows for the recording of various types of documents related to patent ownership. According to MPEP 302:

“The United States Patent and Trademark Office (USPTO) records assignments, grants, and similar instruments relating to interests in patents and applications as provided in 37 CFR Part 3.”

Types of documents that can be recorded include:

• Assignments: Transfers of the entire right, title, and interest in a patent or application
• Security Agreements: Documents creating a security interest in a patent or application
• Licenses: Agreements granting rights to use or practice a patented invention
• Releases: Documents releasing previous security interests or other encumbrances
• Name Changes: Documents evidencing a change in the name of the owner of record
• Mergers: Documents showing the merger of companies and the resulting transfer of patent rights

It’s important to note that the USPTO records these documents without making a determination of their validity. As stated in MPEP 302, “The recording of a document pursuant to 37 CFR 3.11 is not a determination by the USPTO of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.”

For more information on patent assignments, visit: patent assignments.

According to MPEP 314, two types of certificates are recordable for patent ownership changes:

• Certificates showing a change of name of a business
• Certificates showing a merger of businesses

As stated in the MPEP, Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable. These documents serve as important links in the chain of title for patent ownership.

To learn more:

• patent ownership
• name change
• business merger
• recordable certificates
• chain of title

The USPTO can expunge various types of assignment records that are erroneous or no longer supported by statutory basis. According to MPEP 323.01(d), this includes:

• Erroneously recorded assignment documents
• Documents that are not assignment documents but were incorrectly recorded as such
• Assignment documents that are no longer supported by the statutory basis for recording

The MPEP states: ‘The USPTO will expunge, delete or correct assignment records that are not, or are no longer, supported by the statutory basis for recording.’ This broad definition allows for the correction of various types of errors in the assignment records.

To learn more:

• expungement
• assignment records
• types of records
• USPTO

While it’s speculative to predict the exact content of MPEP 312 if it were to be filled, its placement within the ‘300 – Ownership and Assignment’ chapter suggests it could potentially cover topics related to patent ownership, assignment procedures, or updates to existing sections in this chapter. The content would likely align with the overall theme of ownership and assignment in patent law and procedures.

For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:

“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”

This statement ensures transparency regarding government involvement and rights in the invention.

For more information on invention disclosure, visit: invention disclosure.

For more information on patent applications, visit: patent applications.

If there’s an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the procedure differs from correcting cover sheet errors. According to MPEP 323.01(b):

1. The party responsible for the erroneous document (e.g., the assignor) must either:
   • Create and record a new document, or
   • Make corrections to the original document and re-record it
2. If the assignor is unavailable, the assignee may:
   • Submit an affidavit or declaration identifying the error and requesting correction
   • Include a copy of the originally recorded papers
   • Provide a new cover sheet
   • Pay the required fee for each application or patent to be corrected (37 CFR 3.41)

This process ensures that errors in the actual assignment document are properly addressed and corrected in the USPTO records.

To learn more:

• assignment document errors
• patent assignment
• recordation correction
• USPTO procedures

If you discover that another party has improperly recorded an assignment against your patent or application, you should take the following steps:

1. Contact the party who recorded the erroneous information and request that they file corrective papers.
2. If the party cannot be located or is unwilling to cooperate, you must file corrective papers yourself with the Assignment Services Division.

According to MPEP 323.01(c), you should submit:

• A completed cover sheet identifying the affected application or patent
• An affidavit or declaration stating you are the correct owner, the previous recording was erroneous, and providing the reel and frame number of the incorrect document
• The required fee for each application or patent to be corrected

The MPEP states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.

To learn more:

• patent assignment
• error correction
• USPTO
• Assignment Services Division

If you don’t have the application number when executing an assignment, you can use specific language to allow for its later insertion. MPEP 302.03 suggests the following approach: “It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is: ‘I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.’” This allows for proper identification of the application once the number is available, while still executing the assignment in a timely manner.

To learn more:

• assignment execution
• application number
• attorney authorization

Patent ownership gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. This is stated in 35 U.S.C. 154(a)(1).

However, ownership does not necessarily give the owner the right to make, use, sell or import the invention, as there may be other legal considerations such as:

• Existence of another patent owner with a dominant patent
• Failure to obtain FDA approval
• An injunction by a court
• National security issues

Patent ownership grants the owner the right to exclude others from making, using, offering for sale, selling, or importing the patented invention into the United States. However, it’s important to note that ownership does not automatically grant the right to practice the invention. The MPEP states:

‘Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same…’

These other considerations may include existing patents, regulatory approvals, or legal injunctions.

Patent ownership gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing the claimed invention into the United States. As stated in 35 U.S.C. 154(a)(1):

Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent.

However, it’s important to note that ownership does not automatically grant the right to practice the invention, as there may be other legal considerations such as other dominant patents, regulatory approvals, or court injunctions.

For more information on exclusionary rights, visit: exclusionary rights.

For more information on patent rights, visit: patent rights.

Joint owners of a patent have specific rights as outlined in 35 U.S.C. 262, which states:

‘In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.’

This means that each joint owner can independently exercise the full rights of the patent without needing permission from or owing compensation to the other joint owners, unless they have a separate agreement stating otherwise.

USPTO employees are subject to several restrictions regarding patents:

• They cannot apply for a patent during their employment and for one year after.
• They cannot acquire any patent or interest in a patent, directly or indirectly, except through inheritance or bequest, during employment and for one year after.
• For patents applied for after the one-year period, they cannot claim a priority date earlier than one year after their employment ends.

These restrictions are outlined in 35 U.S.C. 4, which states:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’

The USPTO provides specific procedures for resubmitting returned patent documents. According to MPEP 317.01:

“The procedure set forth in § 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service.”

This means that when resubmitting corrected documents, you can use either the Certificate of Mailing procedure (37 CFR 1.8) or the Express Mail procedure (37 CFR 1.10) to potentially preserve the original filing date based on the postal deposit date.

To learn more:

• patent document resubmission
• USPTO procedures
• postal procedures

The USPTO accepts multiple payment methods for the electronic submission of assignment documents through the Electronic Patent Assignment System (EPAS). As stated in MPEP 302.10:

“Customers may submit assignments electronically by accessing the Office’s website and paying the required fee by credit card, electronic fund transfer (EFT) or deposit account.”

These payment options provide flexibility for users when submitting assignment documents electronically. It’s important to ensure that you have one of these payment methods available before initiating the submission process.

To learn more:

• EPAS payment methods
• USPTO fees
• electronic submission
• credit card
• electronic fund transfer
• deposit account

When an arbitration award is made involving a patent, there are specific notice requirements as outlined in 35 U.S.C. 294(d) and 37 CFR 1.335. Key points include:

• The patentee, assignee, or licensee must provide written notice to the USPTO Director.
• A separate notice is required for each patent involved.
• The notice must include names and addresses of parties, inventor name, patent owner name, patent number, and a copy of the award.
• If the award is modified by a court, notice of the modification must also be filed.

Failure to file the required notice can result in the award being unenforceable.

An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:

1. The fee set forth in § 1.17(g)
2. A showing that the person has sufficient proprietary interest in the matter
3. A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties

This requirement is outlined in 37 CFR 1.46(b)(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.

Voluntary arbitration in patent disputes is a process outlined in 35 U.S.C. 294 where parties can agree to settle disputes related to patent validity or infringement through arbitration. The law states:

‘A contract involving a patent or any right under a patent may contain a provision requiring arbitration of any dispute relating to patent validity or infringement arising under the contract.’

This allows parties to resolve patent-related conflicts outside of the court system, potentially saving time and resources.

The USPTO does not process requests for indexing or cross-referencing additional patent numbers or application numbers against a document previously recorded in the Assignment Division, unless it’s an assignment. This policy is based on compliance with 37 CFR 3.11, 3.28, and 3.31.

As stated in MPEP 315: “The Office does not process requests for ‘indexing’ or ‘cross-referencing’ additional patent numbers or application numbers against a document, other than an assignment, previously recorded in the Assignment Division.”

For more information on Assignment Division, visit: Assignment Division.

For more information on document recording, visit: document recording.

For more information on USPTO policy, visit: USPTO policy.

What is the timeframe for recording an assignment at the USPTO?

The USPTO recommends recording an assignment within three months of its execution date. According to MPEP 302:

“The Patent and Trademark Office does not require that a document be recorded. If a document is to be recorded, it should be submitted to the Assignment Division within three months from its date of execution; otherwise, it may not be accepted for recordation.”

While there’s no strict legal requirement to record within this timeframe, doing so ensures the assignment is properly documented and can help avoid potential legal issues in the future.

For more information on assignment recording, visit: assignment recording.

For more information on patent assignment, visit: patent assignment.

For more information on USPTO, visit: USPTO.

What is the significance of the issue fee payment date for patent assignments?

The issue fee payment date is crucial for patent assignments and issuance to assignees for several reasons:

• It serves as the deadline for requesting issuance of the patent to the assignee under 37 CFR 3.81(b).
• Assignments recorded after this date but before patent issuance will be recorded but won’t affect who the patent is issued to.
• It impacts the USPTO’s ability to change the name on the patent.

MPEP 307 states: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.” This underscores the importance of timely assignment recording and requests for issuance to the assignee.

For more information on assignment recording, visit: assignment recording.

For more information on issue fee, visit: issue fee.

For more information on patent assignment, visit: patent assignment.

For more information on patent issuance, visit: patent issuance.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

Recording patent assignments at the United States Patent and Trademark Office (USPTO) is crucial for several reasons:

• Legal Protection: It provides legal protection against subsequent purchasers or mortgagees.
• Official Recognition: The USPTO recognizes the assignee for all matters before the Office.
• Public Notice: It serves as public notice of the assignment.

According to MPEP 301:

An assignment relating to a patent must be recorded in the Patent and Trademark Office within 3 months from its date or prior to the date of a subsequent purchase or mortgage, in order to be effective against a subsequent purchaser or mortgagee.

Recording assignments promptly is essential to ensure full legal protection and recognition of ownership rights.

For more information on patent assignments, visit: patent assignments.

For more information on USPTO, visit: USPTO.

Recording a patent assignment with the USPTO is crucial for several reasons:

1. Legal Notice: It provides public notice of the assignment, which is important for establishing priority against subsequent purchasers or mortgagees.
2. Prima Facie Evidence: As stated in MPEP 301.01, ‘The recording of an assignment with the USPTO is prima facie evidence of its execution.’
3. Chain of Title: It helps maintain a clear chain of title for the patent or application.
4. Enforcement Rights: Proper recording can affect the ability to enforce patent rights or collect damages in infringement cases.

The MPEP emphasizes the importance of recording by stating, ‘An assignment must be recorded in the USPTO within three months from its date or prior to the date of a subsequent purchase or mortgage to be valid against a subsequent purchaser or mortgagee.’ This underscores the time-sensitive nature of recording assignments to protect legal rights.

Keeping assignment documents separate from patent application files is significant for several reasons. MPEP 318 mandates this separation:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The significance of this practice includes:

• Maintaining clear distinction between technical content and ownership information
• Ensuring proper recording and indexing of assignment documents
• Facilitating easier searches for patent ownership information
• Reducing the risk of confidential ownership information being inadvertently disclosed
• Allowing for more efficient management of ownership changes throughout a patent’s lifecycle
• Enabling the Assignment Division to specialize in handling ownership matters

This separation streamlines both the patent examination process and the management of patent ownership records.

The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents for patents and patent applications
• Recording these documents in the USPTO’s assignment database
• Maintaining accurate records of patent ownership and transfers
• Ensuring that assignment information is searchable and accessible
• Processing requests for copies of recorded documents

By centralizing these functions, the USPTO can maintain a comprehensive and up-to-date record of patent ownership separate from the technical aspects of patent prosecution.

The Assignment Division plays a crucial role in handling patent assignments at the USPTO. As indicated in MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents submitted for recording
• Properly recording and maintaining assignment records
• Ensuring the accuracy and accessibility of ownership information
• Managing the assignment database separate from application and patent files

This specialized division ensures that patent ownership information is correctly documented and readily available when needed.

To learn more:

• Assignment Division
• patent assignments
• document recording
• USPTO procedures

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

According to MPEP 317.01, the recording date for a patent document is defined as follows:

“The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.”

This means that the recording date is established when a document that complies with all the necessary requirements is received by the United States Patent and Trademark Office (USPTO).

To learn more:

• patent recording
• document filing
• USPTO procedures

The recording date for a document at the USPTO is the date when the document meeting all recording requirements is filed with the Office. As stated in 37 CFR 3.51, “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.” This means that all necessary criteria, including proper identification and fees, must be met for the document to be officially recorded on that date.

The recording date for a document at the USPTO Assignment Division is determined as follows:

• It is the date when a document meeting all requirements is filed with the Office.
• Documents not complying with identification requirements (37 CFR 3.21) will not be recorded.
• Documents with other deficiencies (e.g., missing cover sheet or fee) will be returned for correction.
• If corrected and resubmitted within the specified time, the original receipt date may be considered the recording date.

According to 37 CFR 3.51: “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.”

The Mail Stop Assignment Recordation Services is a specific designation used by the USPTO to ensure proper routing and processing of assignment documents. MPEP 302.08 states:

In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications.

This Mail Stop designation helps the USPTO efficiently direct assignment documents to the appropriate department for recordation, reducing processing time and potential errors in document handling.

To learn more:

• Mail Stop Assignment Recordation Services
• USPTO
• Document processing
• Assignment recordation

What is the purpose of the Issue Notification in the patent application process?

The Issue Notification serves as an important communication in the patent application process. According to the MPEP 308, “The Issue Notification identifies the issue date of the patent number assigned to the application.” This notification is crucial because it:

• Informs the applicant of the official issue date of their patent
• Provides the assigned patent number
• Serves as confirmation that the patent will be granted
• Helps applicants plan for any post-issuance actions or maintenance fees

The Issue Notification is typically sent several weeks before the actual issue date, giving applicants time to prepare for the patent’s publication and enforcement.

For more information on issue date, visit: issue date.

For more information on patent grant, visit: patent grant.

The cover sheet serves as a crucial document in the patent assignment process. Its primary purpose is to provide essential information about the assignment in a standardized format. According to MPEP 302.05, one of the key pieces of information that must be included on this cover sheet is the assignee’s address:

The address of the assignee … must be given in the required cover sheet.

The cover sheet ensures that the USPTO has accurate and readily accessible information about the assignment, including details about the assignee, which is critical for maintaining proper records and facilitating communication regarding the patent.

To learn more:

• patent assignment
• cover sheet
• assignee information
• USPTO recordation

What is the purpose of recording patent assignment documents?

Recording patent assignment documents serves several important purposes:

• Providing notice to the public of the assignment
• Creating a public record of the assignment
• Protecting against subsequent purchasers without notice
• Establishing priority of ownership rights

According to MPEP 302, ‘The recording of an assignment document in the USPTO is not a determination of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.’ It merely serves as a public notice and record of the transaction.

For more information on patent assignment, visit: patent assignment.

For more information on recording documents, visit: recording documents.

Recording documents with the USPTO serves several important purposes:

• Provides constructive notice to the public of the recorded document
• Protects against subsequent purchasers or mortgagees
• Establishes priority dates for security interests
• Maintains a clear chain of title for patents and applications

MPEP 313 states: The recording of a document pursuant to 37 CFR 3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration. However, recording does provide legal benefits and helps maintain accurate ownership records.

For more information on chain of title, visit: chain of title.

For more information on Constructive Notice, visit: Constructive Notice.

Recording documents other than assignments at the USPTO serves several important purposes:

• Provides public notice of the existence of the document
• Establishes legal priority in certain situations
• Protects the interests of parties involved in patent-related transactions
• Facilitates the transfer and licensing of patent rights

MPEP 313 states: “The recording of such documents is not mandatory. However, if they are not recorded in the Office, they are not enforceable against a subsequent purchaser or mortgagee for valuable consideration, without notice, unless recorded in the Office prior to the subsequent purchase or mortgage.”

This highlights the importance of recording these documents to protect the interests of all parties involved in patent-related transactions.

What is the purpose of recording an assignment with the USPTO?

Recording an assignment with the USPTO serves several important purposes:

• Constructive notice: It provides constructive notice to the public of the assignment.
• Prima facie evidence: The recording acts as prima facie evidence of the execution of the assignment.
• Legal protection: It protects against subsequent purchasers without notice.
• Maintaining chain of title: It helps maintain a clear chain of title for the patent or application.

As stated in MPEP 302: “The recording of an assignment document in the USPTO is governed by statute. The statutory provision is 35 U.S.C. 261.”

For more information on assignment recording, visit: assignment recording.

For more information on USPTO, visit: USPTO.

The purpose of including the government license rights statement in patent applications is to:

• Acknowledge the government’s support in the development of the invention
• Inform the public and potential licensees of the government’s rights in the invention
• Ensure compliance with federal regulations regarding inventions made with government support
• Facilitate the government’s ability to exercise its rights in the invention if necessary

This requirement, mandated by 35 U.S.C. 202(c)(6), helps maintain transparency in federally funded research and development while protecting the government’s interests in the resulting inventions.

What is the purpose of Form PTO/AIA/96?

Form PTO/AIA/96 is used to establish the right of an assignee to take action in a patent application filed on or after September 16, 2012. According to the MPEP 325:

“Form PTO/AIA/96 may be used to establish the right of an assignee to take action in an application filed on or after September 16, 2012.”

This form is crucial for assignees who wish to prosecute the application or take other actions on behalf of the inventors. It serves as a declaration that the assignee has the right to take action in the application, which is necessary under 37 CFR 3.71(b).

For more information on assignee rights, visit: assignee rights.

For more information on USPTO Forms, visit: USPTO Forms.

Title reports play a specific role in patent reexamination procedures. The MPEP mentions:

For example, a title report is requested by the Reexamination Preprocessing Staff when a request for reexamination is filed.

This suggests that title reports are used to verify the current owner of a patent when a reexamination is initiated, ensuring that the proper parties are involved in the process.

A cover sheet is a crucial component in the patent document recording process. It provides essential information about the document being recorded and the patents or applications it relates to.

The requirement for a cover sheet is specified in 37 CFR 3.31, which states the necessary contents of a cover sheet. As mentioned in MPEP 315, a completed cover sheet is one of the required items when recording a document with additional patents or applications: “a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)”

For more detailed information on cover sheets, refer to MPEP § 302.07.

For more information on cover sheet, visit: cover sheet.

For more information on document submission, visit: document submission.

For more information on USPTO requirements, visit: USPTO requirements.

A cover sheet is a crucial component in patent assignment recordation. It provides essential information about the document being recorded and the parties involved. According to MPEP 315, a completed cover sheet is required when submitting a document for recordation, even if the document has been previously recorded.

The cover sheet requirements are specified in 37 CFR 3.31 and further explained in MPEP § 302.07. It typically includes details such as:

• Identification of the patents or applications the document relates to
• Names of the parties involved in the transaction
• Nature of the interest being conveyed
• Mailing address for correspondence

The cover sheet helps the USPTO efficiently process and index the recorded documents in the assignment database.

While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:

1. Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
2. Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
   • The former name (in the space for the party conveying the interest)
   • The new name (in the space for the party receiving the interest)
   • A description of the interest conveyed as “Name Change”
   • Identification of the affected patents or applications
3. Submit the document and cover sheet to the USPTO for recordation, along with any required fee
4. The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)

As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.

It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.

Obtaining patent assignment records from before May 1, 1957, involves a different process than accessing more recent records. According to MPEP 301.01:

All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.

The MPEP further advises:

Requests for copies of pre-1957 records for patents should be directed to the National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA.

To obtain these records:

1. Contact NARA directly.
2. Provide as much information as possible about the patent and assignment you’re seeking.
3. Be prepared to pay the fees required by NARA.

The MPEP also notes: All assignment records from 1837 to April 30, 1957 for patents are now maintained and are open for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746 and at the Civilian Records Division of the National Archives at College Park, 8601 Adelphi Road, College Park, MD 20740-6001.

For the most up-to-date information on accessing these records, it’s recommended to check the National Archives website.

For more information on NARA, visit: NARA.

The process for issuing a patent to a non-applicant assignee involves the following steps:

1. A request for issuance to the assignee must be submitted with the payment of the issue fee.
2. The assignment must have been previously recorded in the USPTO or filed for recordation.
3. If the request is submitted after the issue fee payment, additional requirements apply, including a request for a certificate of correction and associated fees.

According to 37 CFR 3.81(a): An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office.

Expungement of assignment records is a rare and complex process. According to MPEP 323.01(d), petitions to expunge assignment records are granted only under specific conditions:

• Normal corrective procedures (outlined in MPEP § 323.01(a) through § 323.01(c)) are inadequate for providing relief.
• The integrity of the assignment records will not be affected by granting the petition.

It’s important to note that expungement does not result in the complete removal of a document from assignment records. Instead, a redacted version of the ‘expunged’ document is recorded and replaces the original in the assignment records.

To learn more:

• expungement
• assignment records
• patent procedure
• USPTO

The process for expunging assignment records at the USPTO involves:

• Submitting a petition under 37 CFR 1.59 to expunge the assignment record
• Providing clear evidence that the document was submitted by mistake or is of improper character
• Paying the required petition fee

As stated in MPEP 323.01(d): ‘The USPTO will not expunge any assignment records that have been recorded absent a petition pursuant to 37 CFR 1.59.’ This emphasizes the necessity of following the proper petition process for expungement.

To learn more:

• assignment records
• expungement
• USPTO
• petition process

To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either:

• Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence was or is being submitted for recordation.
• Providing a statement specifying where such evidence is recorded in the USPTO (by reel and frame number).

As stated in the MPEP: The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. This ensures that the assignee has the right to take action in the application.

For more information on assignee rights, visit: assignee rights.

For more information on pre-AIA applications, visit: pre-AIA applications.

For more information on USPTO procedures, visit: USPTO procedures.

What is the process for correcting errors in recorded assignment documents?

The process for correcting errors in recorded assignment documents involves the following steps:

• For minor errors: You can file a corrective document stating the nature of the error, along with the required fee.
• For more significant errors: You may need to file a new assignment document with the correct information.
• In all cases: Include a cover sheet stating that the document is being submitted to correct an error in a previously recorded assignment document.

According to MPEP 302: Errors in a recorded assignment document will be corrected by the Assignment Division provided a ‘corrective document’ is submitted. The USPTO recommends contacting the Assignment Recordation Branch for specific guidance on your situation.

For more information on assignment correction, visit: assignment correction.

For more information on patent documents, visit: patent documents.

For more information on USPTO procedures, visit: USPTO procedures.

What is the process for correcting errors in faxed assignment documents at the USPTO?

If errors are discovered in faxed assignment documents after submission to the USPTO, the process for correction depends on the nature of the error. Here’s a general guideline:

1. Minor Typographical Errors: These can often be corrected by submitting a request for correction along with supporting documentation.
2. Substantive Errors: For more significant errors, a new corrected assignment document may need to be submitted and recorded.
3. Errors in Recordation: If the error is in the USPTO’s recordation rather than the document itself, contact the Assignment Recordation Branch for assistance.

As per MPEP 302.09: “If there is an error in a cover sheet recorded with an assignment document, a corrected cover sheet may be submitted for recordation.” This indicates that for cover sheet errors, a simple correction submission is possible.

It’s important to act promptly when errors are discovered to ensure the accuracy of the assignment records. For specific guidance on your situation, it’s advisable to contact the USPTO’s Assignment Recordation Branch directly.

To learn more:

• error correction
• faxed assignments
• USPTO
• assignment recordation
• cover sheet

To correct assignee information on an issued patent, you must follow these steps:

1. Submit a request for a certificate of correction under 37 CFR 1.323.
2. Ensure that a request under 37 CFR 3.81(b) has been granted.
3. Confirm that the assignment was submitted for recordation before the patent was issued.

According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”

The request should be directed to the Office of Petitions and include:

• The processing fee required by 37 CFR 1.17(i)
• A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
• A statement that the assignment was submitted for recordation before the patent was issued
• A request for a certificate of correction under 37 CFR 1.323 with the associated fee

For more information on assignee information, visit: assignee information.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on Patent correction, visit: Patent correction.

For more information on USPTO procedures, visit: USPTO procedures.

The process for correcting an erroneously recorded name change is similar to correcting an erroneous assignment. According to MPEP 323.01(c), you should:

1. Submit a completed cover sheet identifying the affected application or patent.
2. Provide an affidavit or declaration stating:
   • You are the correct owner
   • The previously recorded document contained erroneous information
   • The reel and frame number of the incorrect document
3. Pay the required fee for each application or patent to be corrected.

The MPEP states: On the corrected cover sheet, the owner should check the box titled ‘Other’ in the area of the cover sheet requesting the ‘Nature of Conveyance,’ and indicate that the submission is to correct an error made in a previously recorded document that erroneously affects the identified application(s), or patent(s).

Ensure that your affidavit or declaration clarifies that the name change was recorded in error and provide the correct name information.

To learn more:

• patent name change
• error correction
• USPTO
• Assignment Services Division

To correct typographical errors in a recorded cover sheet, follow these steps as outlined in MPEP 323.01(a):

1. Submit a copy of the originally recorded assignment document.
2. Provide a corrected cover sheet.
3. Pay the required fee for each application or patent to be corrected.
4. Include a copy of the original cover sheet to facilitate comparison.

When submitting the corrected cover sheet:

• Check the ‘Other’ box in the ‘Nature of Conveyance’ area.
• Indicate that the submission is to correct an error in a previously recorded cover sheet.
• Identify the reel and frame numbers (if known) and the nature of the correction.

The MPEP states: The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.

To learn more:

• typographical errors
• cover sheet correction
• patent assignment
• USPTO procedures

The mailing address for submitting assignment documents depends on whether they are being filed with new applications or not. According to MPEP 302.08:

• For documents not filed with new applications: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450
• For documents filed with new applications: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450

As stated in the MPEP, In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications.

To learn more:

• Assignment documents
• USPTO mailing address
• Patent application
• Document submission

The legal basis for the USPTO’s English translation requirement for assignments is found in the Code of Federal Regulations, specifically 37 CFR 3.26. This regulation is referenced in MPEP 302.02, which states:

37 CFR 3.26 English language requirement.

The regulation mandates that non-English documents must be accompanied by an English translation signed by the translator. This requirement ensures clarity, consistency, and accessibility of patent-related documents within the U.S. patent system.

To learn more:

• patent law
• CFR
• USPTO regulations
• assignment translation
• legal requirements

The legal basis for correcting typographical errors in recorded assignment documents is primarily found in the Manual of Patent Examining Procedure (MPEP) and the Code of Federal Regulations (CFR). Specifically:

• MPEP 323.01(b) outlines the procedures for correcting such errors.
• 37 CFR 3.41 provides the regulatory basis for the fees associated with these corrections.

Additionally, case law supports these procedures. The MPEP cites:

See In re Abacab International Computers Ltd., 21 USPQ2d 1078 (Comm’r Pat. 1987).

This case reinforces the USPTO’s authority to correct such errors and the procedures for doing so. The combination of statutory regulations, administrative procedures, and case law provides a comprehensive legal framework for addressing typographical errors in recorded assignment documents.

To learn more:

• Assignment
• Typographical Errors
• Document Correction
• Legal Basis
• Patent Law

Timely recording of patent assignments is crucial for protecting rights against subsequent purchasers. As per 35 U.S.C. 261:

“if an assignment is not timely recorded at the USPTO, the unrecorded assignment will not be superior to the rights acquired by a third party, i.e. a bona fide purchaser, for valuable consideration if that third party did not have knowledge of the unrecorded assignment.”

This provision emphasizes the importance of promptly recording assignments to maintain priority over subsequent purchasers who may not have knowledge of the unrecorded assignment.

To learn more:

• timely recording
• patent assignments
• subsequent purchasers

The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is:

‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’

This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at the beginning of the patent application and any issued patents.

The fee for recording documents with the USPTO varies depending on the method of submission and the type of intellectual property involved. According to MPEP 302.06:

For patents:

• If submitted electronically: $0 (as of 2019)
• If submitted on paper or via facsimile: Fee set in 37 CFR 1.21(h)(2)

For trademarks:

• Fee set in 37 CFR 2.6(b)(6)

The MPEP advises: Customers should check the current fee schedule on the Office website before submitting documents for recordation.

To learn more:

• USPTO fees
• document recording
• patent fees
• trademark fees
• electronic submission

The fee for recording a patent assignment with the USPTO depends on the method of submission:

• For electronic submissions through the Electronic Patent Assignment System (EPAS), the fee is currently $0, as stated in 37 CFR 1.21(h)(1).
• For non-electronic submissions (e.g., mail or fax), the fee is set forth in 37 CFR 1.21(h)(2).

It’s important to note that fees may change over time. As stated in MPEP 302.06: “Customers should check the current fee schedule on the Office website before submitting documents for recordation.”

Additionally, no fee is required for recording certain government interest documents, as specified in 37 CFR 3.41(b).

The fee for recording a corrective document or substitute statement with the USPTO is the same as the fee for recording the original assignment document. MPEP 323 states:

“The fee for recording a corrective document or substitute statement is the same as the fee for recording the original assignment document.”

As of 2023, the fee for recording an assignment electronically is $25 per property. However, fees are subject to change, so it’s advisable to check the current USPTO Fee Schedule for the most up-to-date information.

For more information on assignment correction, visit: assignment correction.

For more information on USPTO fees, visit: USPTO fees.

Recording an assignment at the USPTO does not determine its validity or effect on title. As stated in 37 CFR 3.54:

“The recording of a document pursuant to § 3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.”

The USPTO may, when necessary, determine the effect of a document and whether a party has authority to take action in matters pending before the Office.

To learn more:

• patent assignment
• USPTO
• recording effect
• document validity

Recording a patent assignment with the USPTO has specific legal effects. The MPEP states:

‘Recordation of the assignment provides legal notice to the public of the assignment.’

However, it’s important to note that:

‘It should be noted that recording of the assignment is merely a ministerial act; it is not an Office determination of the validity of the assignment document or the effect of the assignment document on the ownership of the patent property.’

This means that while recordation provides public notice, it does not guarantee the validity or enforceability of the assignment. The MPEP cites 37 CFR 3.54 and Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 862-3 (E.D. Va. 2016) for this principle.

Recording a document at the USPTO has the following effects:

• It does not determine the validity of the document or its effect on title.
• The Office may determine a document’s effect when necessary for Office proceedings.
• Conditional assignments are treated as absolute assignments until canceled.
• Recording provides protection against subsequent purchasers without notice.

37 CFR 3.54 states: The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.

Additionally, according to 35 U.S.C. 261, timely recording at the USPTO is crucial for maintaining superiority of rights against subsequent purchasers.

For more information on document recording, visit: document recording.

For more information on patent assignment, visit: patent assignment.

For more information on USPTO procedures, visit: USPTO procedures.

An arbitration award in patent cases has limited effect and is binding only on the parties involved in the arbitration. This limitation is clearly stated in 35 U.S.C. 294(c):

“An award by an arbitrator shall be final and binding between the parties to the arbitration but shall have no force or effect on any other person.”

This means that:

• The arbitration award is conclusive for the parties involved in the dispute.
• Third parties not involved in the arbitration are not bound by the award.
• The award does not affect the rights of individuals or entities who were not part of the arbitration proceedings.

This provision ensures that the rights of third parties are protected and that arbitration outcomes do not have unintended consequences on uninvolved parties in patent matters.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

What is the difference between recording and registering a patent assignment?

Recording and registering a patent assignment are two distinct processes:

• Recording refers to submitting the assignment document to the USPTO for public notice. As stated in MPEP 302, ‘The recording of the assignment document in the USPTO is merely a ministerial act and does not determine the validity of the document.’
• Registering is not a term used by the USPTO for assignments. The term ‘registration’ is typically used for trademarks, not patents.

Recording an assignment provides constructive notice of the transfer of ownership but does not guarantee the assignment’s validity or enforceability.

For more information on ownership transfer, visit: ownership transfer.

For more information on patent assignment, visit: patent assignment.

For more information on USPTO, visit: USPTO.

What is the difference between recording an assignment and registering a trademark?

Recording an assignment for a patent or trademark application is different from registering a trademark. Here are the key distinctions:

• Recording an assignment: This process involves documenting the transfer of ownership rights for a patent or trademark application. It’s done through the USPTO’s Assignment Recordation Branch.
• Registering a trademark: This is the process of officially registering a trademark with the USPTO to protect your brand identity. It’s handled by the Trademark Office.

As stated in MPEP 302: “The recording of assignments is governed by 35 U.S.C. 261 for patents and 15 U.S.C. 1060 for trademarks.” This indicates that assignment recording is a separate process from trademark registration, which is governed by different statutes.

For more information on assignment recording, visit: assignment recording.

For more information on USPTO procedures, visit: USPTO procedures.

What is the difference between recording a license and an assignment at the USPTO?

The main difference between recording a license and an assignment at the USPTO lies in the transfer of ownership rights:

• Assignment: Transfers ownership of the patent or application to another party.
• License: Grants permission to use the patent or application without transferring ownership.

According to MPEP 313: Other documents relating to interests in patents or applications will be recorded as provided in 37 CFR 3.11(a). This includes licenses, which are recorded to provide notice of the agreement but do not change the ownership records at the USPTO.

The America Invents Act (AIA) brought significant changes to patent law, including rules regarding patent ownership. The key differences between pre-AIA (before September 16, 2012) and AIA (on or after September 16, 2012) patent ownership rules are:

1. Applicability: Pre-AIA rules apply to applications filed before September 16, 2012, while AIA rules apply to applications filed on or after that date.
2. Juristic Entity Representation: Under AIA rules, juristic entities (e.g., corporations) must be represented by a patent practitioner for most actions. Pre-AIA rules allowed juristic entities to take certain actions without representation.
3. Ownership Establishment: The process for establishing ownership is slightly different, with AIA applications following 37 CFR 3.73 and pre-AIA applications following pre-AIA 37 CFR 3.73(b).
4. Inventor’s Oath or Declaration: AIA introduced changes to the inventor’s oath or declaration requirements, which can affect how assignees interact with the patent application process.

According to MPEP 324: [Editor Note: See MPEP § 325 for establishing the right of assignee to take action in an application filed on or after September 16, 2012.] This indicates that different sections of the MPEP should be consulted depending on the application’s filing date.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.

What is the difference between pre-AIA and AIA applications regarding assignee filing?

The key difference between pre-AIA (America Invents Act) and AIA applications regarding assignee filing lies in the requirements for establishing the right of an assignee to take action:

• Pre-AIA applications (filed before September 16, 2012): The assignee must establish their right to take action by filing evidence of ownership in the USPTO.
• AIA applications (filed on or after September 16, 2012): The assignee can simply be named as the applicant, eliminating the need to file evidence of ownership.

As stated in MPEP 324: “For applications filed on or after September 16, 2012, 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.”

For more information on pre-AIA, visit: pre-AIA.

Patent assignment and licensing are two different ways of transferring patent rights. The MPEP defines assignment as:

‘Assignment of patent rights is defined as ‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….”

In contrast, licensing is described as:

‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that assignment transfers ownership, while licensing grants permission to use the patent without transferring ownership.

The process for correcting errors differs depending on whether the error is in the cover sheet or the actual assignment document:

• Cover sheet corrections: These are for errors in the recorded data only, not in the assignment document itself. You can submit a corrective document referencing the reel and frame number of the original recording.
• Assignment document corrections: For errors in the actual assignment document, you must record a new corrective document, which can be a new assignment or another document that corrects the original.

MPEP 323 states: “Errors in the assignment document itself cannot be corrected simply by submitting a new cover sheet.” This emphasizes the need for a new recorded document for substantive errors.

For more information on USPTO, visit: USPTO.

The MPEP distinguishes between assignments and licenses in patent law:

1. Assignment: ‘An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application.’
2. License: ‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that an assignment transfers ownership, while a license grants permission to use the patent without transferring ownership. The MPEP further clarifies: ‘A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.’

An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:

• Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
• 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.

As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.

For more information on USPTO procedures, visit: USPTO procedures.

The key differences between a patent assignment and a patent license are:

• Assignment: Transfers all or part of the ownership interest in a patent, including the entire bundle of rights associated with ownership.
• License: Transfers a bundle of rights that is less than the entire ownership interest. It may be limited in time, geographical area, or field of use.

A license is essentially a contractual agreement that the patent owner will not sue the licensee for patent infringement under certain conditions. Even an exclusive license is not considered an assignment of patent rights.

The key differences between a ‘corrective document’ and a ‘substitute statement’ for USPTO assignments are:

• Corrective Document: Used to fix minor errors in the original recorded document.
• Substitute Statement: Replaces the entire original document when substantial changes are needed.

According to MPEP 323: “Where errors were made in the execution of the original assignment document … a ‘substitute statement’ may be submitted for recordation.” The MPEP further clarifies: “The substitute statement must be accompanied by a copy of the originally recorded papers.”

For more information on assignment correction, visit: assignment correction.

For more information on substitute statement, visit: substitute statement.

For more information on USPTO, visit: USPTO.

The USPTO maintains two special registers for recording certain government interests in patents and patent applications, as outlined in 37 CFR 3.58:

1. Departmental Register: This register records governmental interests required by Executive Order 9424. It is not open to public inspection but can be examined by authorized government representatives. However, governmental interests recorded on this register are available for public inspection as provided in 37 CFR 1.12.
2. Secret Register: This register is used to record governmental interests that require secrecy. Documents are placed on this register at the request of the submitting department or agency. Access to this register is highly restricted and requires written authority from the head of the department or agency that submitted the document, as well as approval from the USPTO Director.

These registers ensure that certain sensitive government interests in patents can be recorded while maintaining appropriate levels of confidentiality or secrecy.

The deadline for submitting assignee information for patent issuance is crucial to ensure the information appears on the patent. According to MPEP 307:

The submission of the request in compliance with 37 CFR 3.81(b) must be made prior to, or at the same time as, the payment of the issue fee.

This means that assignees must submit their information no later than when the issue fee is paid. It’s important to note that:

• Late submissions may result in the assignee data not being included on the patent
• The USPTO will not delay issuance of the patent to accommodate late submissions
• Correcting assignee information after issuance requires a certificate of correction, which may involve additional fees and procedures

To avoid complications, it’s recommended to submit the assignee information as early as possible in the patent issuance process, ensuring compliance with 37 CFR 3.81(b).

For more information on assignee information, visit: assignee information.

For more information on patent issuance, visit: patent issuance.

The date of receipt for assignment documents sent to the USPTO by fax is determined by when the complete transmission is received. According to MPEP 302.09:

The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.

It’s important to note that the benefits of a certificate of transmission under 37 CFR 1.8 are available for fax submissions. This can provide additional protection in case of transmission issues.

For more information on date of receipt for electronic submissions, you can refer to MPEP § 502.01.

To learn more:

• patent assignment
• facsimile submission
• USPTO
• date of receipt

As of the 2019 update to MPEP 302.06, the fee for electronically submitting a patent document for recordation is $0. The MPEP states:

If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at $0.

This $0 fee for electronic submissions is a significant cost-saving measure for patent applicants and owners. However, it’s important to note that fees can change, and the MPEP advises:

Customers should check the current fee schedule on the Office website before submitting documents for recordation.

Always verify the current fees on the USPTO fee schedule before submitting any documents.

To learn more:

• USPTO fees
• electronic submission
• patent recording
• free recording

The correct procedure for submitting assignment documents to the USPTO involves sending them to the Assignment Division for recording, rather than placing them directly in application or patent files. MPEP 318 clearly states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This process ensures that assignment documents are properly recorded and maintained by the appropriate division within the USPTO.

To learn more:

• assignment documents
• USPTO procedures
• Assignment Division
• document submission

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

• The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
• A statement affirming that the documentary evidence was or is being submitted for recordation.
• The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or 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: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, 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).”

According to 35 U.S.C. 261, patents have the attributes of personal property and are assignable by an instrument in writing. Specifically, the statute states:

‘Subject to the provisions of this title, patents shall have the attributes of personal property. […] Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’

This means that patent owners can transfer their rights to others through written assignments, similar to other forms of property.

PALM stands for Patent Application Locator and Monitoring system. While MPEP 303 doesn’t provide a definition, it mentions PALM in the context of assignment information:

“…it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

PALM is an internal USPTO database system used by patent examiners to access and track information about patent applications, including assignment details. It’s a crucial tool for examiners when they need to verify ownership or resolve conflicts related to patent applications.

MPEP 319 is currently a reserved section in the Manual of Patent Examining Procedure (MPEP). The content of this section is marked as ‘[Reserved]’, which means that there is no specific information or guidance provided in this particular section at this time.

Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios:

• Multiple partial assignees of the patent property
• Multiple inventors who have not assigned their rights
• A combination of partial assignee(s) and inventor(s) who have not assigned their rights

In cases of joint ownership, all parties having any portion of the ownership must act together as a composite entity in patent matters before the USPTO. According to 35 U.S.C. 262, in the absence of any agreement to the contrary, each joint owner may make, use, offer to sell, or sell the patented invention within the United States without the consent of and without accounting to the other owners.

Indexing against a recorded certificate refers to the process of associating additional patent numbers or application numbers with a document that has already been recorded in the USPTO’s Assignment Division. However, the USPTO does not process such requests for ‘indexing’ or ‘cross-referencing’ unless a new submission is made.

According to MPEP 315, The Office does not process requests for ‘indexing’ or ‘cross-referencing’ additional patent numbers or application numbers against a document, other than an assignment, previously recorded in the Assignment Division.

Executive Order 9424, issued in 1944, mandates the recording of certain government interests in patent rights. The MPEP references this order in the context of USPTO document recording:

In addition to assignments and documents required to be recorded by Executive Order 9424, upon request, assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents will be recorded in the Office.

This means that while Executive Order 9424 requires the recording of specific government-related documents, the USPTO’s recording practices extend beyond these requirements. The USPTO will record various documents related to patent interests upon request, as outlined in 35 U.S.C. 261 and 37 CFR 3.11.

For more information on Executive Order 9424, you can refer to the National Archives.

For more information on government interests, visit: government interests.

For more information on patent rights, visit: patent rights.

For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:

• An assignment document recorded in the USPTO
• A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee

According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

1. (A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
2. (B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.

It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.

For more information on assignee rights, visit: assignee rights.

For more information on chain of title, visit: chain of title.

For more information on documentary evidence, visit: documentary evidence.

For more information on pre-AIA applications, visit: pre-AIA applications.

An extract of an original document refers to a portion or summary of the original assignment document that contains the essential information required for recording. Both 37 CFR 3.24(a) and (b) state that “Either a copy of the original document or an extract of the original document may be submitted for recording.”

When submitting an extract:

• Ensure it includes all relevant assignment details.
• The extract must meet the same format requirements as a full copy.
• It should be clear that the extract represents the key elements of the original document.

Using an extract can be beneficial when the original document contains confidential information not necessary for the assignment record.

An ‘assignment-statement’ is a relatively new concept in patent law, introduced for applications filed on or after September 16, 2012. The MPEP explains:

‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’

This means that for qualifying applications, the assignment document can serve a dual purpose:

1. Transferring ownership of the patent application
2. Fulfilling the requirement for an oath or declaration

This provision can simplify the application process by combining two previously separate documents. The MPEP cites 35 U.S.C. 115(e), 37 CFR 1.63(e), and MPEP §§ 302.07, 317, and 602.01(a) for further details on this practice.

A title report in patent law is a form used by the Assignment Division of the USPTO to report the name of the owner of an application or patent as shown by their records on a specific date. According to the MPEP:

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made.

These reports are used internally within the USPTO and are not available for direct request by applicants or attorneys.

A domestic representative is a person residing within the United States who can be served process or notice of proceedings affecting a patent or rights thereunder on behalf of a foreign assignee. According to MPEP 302.04, An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. This allows foreign assignees to have a point of contact within the U.S. for legal matters related to their patent.

To learn more:

• Foreign Assignee
• Domestic Representative
• Patent Law
• USPTO Procedures

A certified abstract of title is a document that provides official information about the ownership of a patent or patent application. Unlike title reports, which are for internal USPTO use, certified abstracts of title can be requested by the public. The MPEP states: The public can request a certified abstract of title. The fee for this service is set forth at 37 CFR 1.19(b)(4). This document provides a certified summary of the assignment records for a specific patent or application.

For more information on certified abstract of title, visit: certified abstract of title.

For more information on public records, visit: public records.

For more information on USPTO, visit: USPTO.

What is a ‘subject invention’ in the context of government-funded research?

A ‘subject invention’ is a term used in government contracts and refers to any invention conceived or first actually reduced to practice in the performance of work under a government contract. According to MPEP 310, ‘The term ‘subject invention’ is defined by 35 U.S.C. 201(e) as any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.’ This definition is crucial for determining the government’s rights in inventions made during federally sponsored research.

For more information on federal funding, visit: federal funding.

For more information on patent rights, visit: patent rights.

A corrective document is a filing used to address errors in recorded assignment documents at the USPTO. According to MPEP 323:

‘The ‘corrective document’ (or if one of the documents is not being re-recorded, a copy of the original) should be recorded as a supporting document, and all documents will be examined.’

Corrective documents are used for:

• Minor typographical errors
• More substantial errors like incorrect names or addresses

When filing a corrective document, it’s important to clearly identify the nature of the correction and reference the original recorded document.

For more information on assignment correction, visit: assignment correction.

For more information on USPTO, visit: USPTO.

A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.

The chain of title includes:

• Original patent assignment
• Subsequent transfers of ownership
• Business name changes
• Mergers and acquisitions
• Any other events affecting patent ownership

Maintaining a clear and unbroken chain of title is crucial for establishing ownership rights, facilitating patent transactions, and providing clarity in potential patent litigation.

37 CFR 3.27 is a federal regulation that specifies the mailing address for submitting documents to be recorded at the USPTO. According to MPEP 302.08:

37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office.

This regulation ensures that assignment documents and other recordable documents are sent to the correct address for proper processing. It’s crucial for patent attorneys, inventors, and anyone submitting assignment documents to follow this regulation to avoid delays or misrouting of important legal documents.

To learn more:

• 37 CFR 3.27
• USPTO regulations
• Assignment documents
• Document submission

To learn more:

• 37 CFR 3.27

When the USPTO’s Assignment Division returns assignment documents or cover sheets, they include specific information to help you understand the status and next steps. According to MPEP 317.02:

“Assignment documents and cover sheets, or copies of the same, which are returned by Assignment Division will be stamped with the original date of receipt by the Office and will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document.”

In summary, you will receive:

• The original documents or copies, stamped with the original receipt date
• An accompanying letter specifying:
• The reason for the return
• Instructions for correction
• The deadline for resubmission
• Information about maintaining the original receipt date as the recording date

It’s crucial to carefully review this information and act promptly to meet the specified deadline for resubmission.

To learn more:

• returned assignment documents
• USPTO procedures
• document correction
• resubmission instructions

When correcting an erroneous assignment, the affidavit or declaration submitted to the USPTO should contain specific information. According to MPEP 323.01(c), the affidavit should include:

• Identification of yourself as the correct owner
• A statement that the previously recorded document was submitted with erroneous information
• The reel and frame number of the previously recorded document
• A summary of the true chain of title
• A statement that the original applicant, patentee, or last correct assignee has been and continues to be the owner of the application or patent at issue

The MPEP specifically states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the application, or patent at issue.

To learn more:

• patent assignment
• affidavit
• declaration
• error correction
• USPTO

According to 37 CFR 3.61, the designation of a domestic representative should include:

• The name of the person residing within the United States
• The address of the designated person
• A statement that this person may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder

As stated in the regulation, The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder. This information ensures that the USPTO and other parties can effectively communicate with the foreign assignee through their designated representative.

To learn more:

• Domestic Representative
• USPTO Procedures
• Patent Assignment
• Legal Representation

An assignment cover sheet must include specific information to be accepted by the USPTO. According to MPEP 302.07, the cover sheet must contain:

• The name of the party conveying the interest
• The name and address of the party receiving the interest
• A description of the interest conveyed or transaction to be recorded
• Identification of the interests involved (e.g., patent number, application number)
• The name and address of the party to whom correspondence concerning the request to record the document should be mailed
• The date the document was executed
• The signature of the party submitting the document

It’s crucial to provide all required information accurately to ensure the assignment is properly recorded.

To learn more:

• assignment cover sheet
• required information
• USPTO requirements

When an application is filed by someone other than the inventor under 35 U.S.C. 111, it must contain specific information as outlined in 37 CFR 1.46(b):

• An application data sheet under § 1.76
• In the applicant information section (§ 1.76(b)(7)), specify:
  • The assignee
  • Person to whom the inventor is under an obligation to assign the invention
  • Person who otherwise shows sufficient proprietary interest in the matter

The regulation states: 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.

According to 37 CFR 1.335(a), a notice of arbitration award filed with the USPTO must include the following information:

• Patent number
• Names of the inventor and patent owner
• Names and addresses of the parties to the arbitration
• A copy of the arbitration award

The regulation states: “The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the award.”

This detailed information ensures that the USPTO has a complete record of the arbitration outcome and its relevance to specific patents.

For more information on Patent Information, visit: Patent Information.

A patent title report contains crucial information about the ownership and status of a patent application or patent. While the MPEP Section 320 does not provide an exhaustive list, based on its context and purpose, a title report typically includes:

• The names of the current owner(s) or assignee(s)
• Any recorded assignments or transfers of ownership
• The date of the most recent assignment
• Information about the inventors
• The application or patent number
• Any liens or security interests recorded against the patent

This information helps ensure that all parties involved in the patent process are aware of the current ownership status and can act accordingly.

When recording documents with the USPTO, a cover sheet must accompany the document. The cover sheet should include:

• Name of the conveying party
• Name and address of the receiving party
• Application number, patent number, or registration number
• Name of the inventor (for patent documents)
• Title of the invention (for patent documents)
• Document date
• Nature of the interest being conveyed
• Assignee AIA (first inventor to file) statement

MPEP 313 states: Each document submitted for recording must be accompanied by a cover sheet… The format for the cover sheet is specified by the Office. Ensure all required information is provided to facilitate proper recording of the document.

For more information on cover sheet, visit: cover sheet.

For more information on document submission, visit: document submission.

To identify a national patent application in an assignment, you must use the application number. MPEP 302.03 states: “An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number; e.g., 07/123,456).” This format ensures accurate identification of the specific application being assigned.

To learn more:

• patent application assignment
• application identification
• application number

Accessing assignment records for unpublished patent applications requires specific authorization or a showing of legitimate interest. According to MPEP 301.01, for applications that are not open to the public:

Information related thereto is only obtainable upon a proper showing of written authority. For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D).

For applications filed before September 16, 2012, the requirements are slightly different:

For applications filed prior to September 16, 2012, the written authority must be from the applicant or applicant’s assignee or from the attorney or agent of either, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application.

If you’re not one of these authorized parties, you may still be able to access the records if you can demonstrate that you are a bona fide prospective or actual purchaser, mortgagee, or licensee of the application. This typically requires submitting a petition with the appropriate fee and evidence of your status.

For more information on unpublished applications, visit: unpublished applications.

USPTO patent assignment records contain valuable information about the ownership and transfer of patent rights. According to MPEP 301.01, these records include:

• Reel and frame number of the recordation
• Name of the conveying party (assignor)
• Name and address of the receiving party (assignee)
• Patent or application number
• Date of execution
• Date of recordation

The MPEP further states: The actual assignment document will not be viewable through Assignment Search. Only the bibliographic information contained in the recorded cover sheet will be viewable from the Assignment Search database.

This information helps track the chain of title for patents and applications, which is crucial for determining current ownership and potential licensing opportunities.

What information is available in the USPTO’s assignment database?

The USPTO’s assignment database contains a wealth of information related to patent ownership. According to MPEP 301.01:

‘The USPTO maintains a database containing the assignment records of patents and patent applications. The USPTO also maintains a cumulative index of number of assignments recorded on the day in which they are recorded.’

The database typically includes:

• Patent or application numbers
• Names of assignors and assignees
• Dates of assignment execution and recording
• Brief descriptions of the interests conveyed
• Reel and frame numbers for locating documents

This information is crucial for determining the current ownership status of patents and applications, which is essential for various legal and business purposes.

If the assignor is not available to correct an original document or execute a new one, the assignee has an alternative option. According to MPEP 323.01(b):

If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction.

To complete this process, the assignee must provide:

• An affidavit or declaration identifying the error and requesting correction
• A copy of the originally recorded papers
• A cover sheet
• The required fee for each application or patent to be corrected (as per 37 CFR 3.41)

To learn more:

• Assignment
• Typographical Errors
• Document Correction
• Unavailable Assignor
• Affidavit

If you need to assign a patent application before it’s filed, you must identify it using specific information. MPEP 302.03 states: “If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended.” This ensures that the correct application is associated with the assignment, even without an application number.

To learn more:

• pre-filing assignment
• patent application identification
• inventor names

According to MPEP 317, original documents submitted to the USPTO Assignment Division are handled as follows:

After filming, the documents are returned to the sender or destroyed.

This means that once the Assignment Division has processed and recorded the documents, the original physical copies are not retained by the USPTO. If you need a copy of a recorded document, you can request a certified copy from the USPTO for a fee.

For more information on Assignment Division, visit: Assignment Division.

For more information on Document retention, visit: Document retention.

For more information on Original documents, visit: Original documents.

For more information on USPTO, visit: USPTO.

Documents and cover sheets submitted for recording at the USPTO Assignment Division are examined for formal requirements. The process is as follows:

• Documents that meet the requirements are recorded.
• Documents that do not meet the requirements are returned to the sender with an explanation.
• If the sender disagrees with the rejection, they can petition the Director under 37 CFR 1.181.
• After successful recording, a notification is sent to the address on the cover sheet, showing the reel and frame number.

As stated in MPEP 317: “All documents and cover sheets submitted for recording are examined for formal requirements in the Assignment Division in order to separate documents which are recordable from those which are not recordable.”

What happens to conditional assignments at the USPTO?

Conditional assignments are treated differently by the USPTO’s Assignment Division. The MPEP 317 states:

“Conditional assignments are returned to the sender by the Assignment Division.”

This means that if an assignment includes conditions that must be met before it becomes effective, the USPTO will not record it. Instead, the Assignment Division will return the document to the sender. It’s important for patent applicants and owners to ensure that any assignments submitted for recording are unconditional to avoid delays in processing.

For more information on Assignment Division, visit: Assignment Division.

For more information on conditional assignments, visit: conditional assignments.

For more information on USPTO procedures, visit: USPTO procedures.

When a petition to ‘expunge’ a document is granted, the document is not completely removed from the USPTO assignment records. According to MPEP 323.01(d):

Even if a petition to ‘expunge’ a document is granted with respect to a particular application or patent, the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number, and the image will appear when someone views that reel and frame number.

However, the USPTO takes steps to limit the visibility of the expunged document:

• Links to the application or patent subject to the petition are deleted.
• The document won’t appear in searches for that application or patent number in the Assignment Historical Database.
• A redacted version of the ‘expunged’ document is recorded and appears in the assignment records instead of the original document.

To learn more:

• expungement
• assignment records
• document visibility
• USPTO database

What happens if there’s an error in the patent grant?

Errors in patent grants are addressed through a specific process outlined in MPEP 308. The manual states:

“If the Office discovers that an error exists in the patent grant, the patentee will be notified and required to submit a request for a certificate of correction.”

This process involves the following steps:

• The USPTO identifies an error in the issued patent
• The patentee is notified of the error
• The patentee must submit a request for a certificate of correction
• The USPTO issues a certificate of correction to rectify the error

It’s important to note that the certificate of correction becomes part of the patent and is treated as such for all purposes. Patentees should carefully review their patent grants upon receipt to identify any errors promptly and initiate the correction process if necessary.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on Patent correction, visit: Patent correction.

For more information on USPTO procedures, visit: USPTO procedures.

If there’s an error in your assignment submission, the USPTO will notify you and provide an opportunity to correct the issue. The process differs slightly depending on the submission method:

• For fax submissions: The USPTO will fax back the entire document, cover sheet, and a “Notice of Non-Recordation” explaining the issue.
• For electronic (EPAS) submissions: The USPTO will attempt to fax the notice back. If faxing isn’t possible, they may use other means to notify you.

As stated in MPEP 302.09: “If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office ‘Notice of Non-Recordation’ will be transmitted via fax back to the sender.”

To correct the error:

1. Make the necessary corrections to the document or cover sheet
2. Resubmit the corrected document by mail to the address in 37 CFR 3.27
3. Timely resubmission may allow you to retain the initial receipt date as the recordation date

Always double-check your submissions for accuracy to avoid delays in recording your assignment.

What happens if there’s an error in a recorded assignment document?

If an error is discovered in a recorded assignment document, it can be corrected through a Certificate of Correction. The MPEP 302 provides guidance on this process:

“Errors in a recorded assignment document will be corrected by the Assignment Division provided a ‘corrective document’ is submitted. The ‘corrective document’ must include the following: … [list of requirements]”

To correct an error, you need to submit:

• A copy of the original assignment document with the error
• A ‘corrective document’ explaining the nature of the error and the desired correction
• New recordation fee for processing the correction

It’s important to address errors promptly to ensure accurate ownership records. The USPTO will review the correction request and update the assignment records accordingly if approved.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on USPTO, visit: USPTO.

If there’s an error in the recorded assignment document itself (not just the cover sheet), the process is different:

1. The party responsible for the error (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it.
2. If the assignor is unavailable, the assignee can submit an affidavit or declaration identifying the error and requesting correction.

As stated in MPEP 323.01(b), “The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).”

When multiple parties submit conflicting ownership claims for a patent application, the USPTO has a process to determine which party, if any, will control the prosecution. According to MPEP 325 and 37 CFR 3.73(c)(3):

“Where two or more purported assignees file conflicting 37 CFR 3.73(c) statements in an application or other Office proceeding, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application.”

The process typically involves the following steps:

1. The Office official in charge of the application forwards the case to the Office of Patent Legal Administration.
2. The Office of Patent Legal Administration reviews the conflicting claims and makes a determination.
3. Generally, the current applicant is allowed to continue prosecution while the dispute is resolved.
4. The other party claiming ownership may consider filing their own separate application.

It’s important to note that this process is primarily for determining who controls the prosecution of the application. It does not resolve underlying ownership disputes, which may need to be settled through other legal channels.

For more information on USPTO, visit: USPTO.

If the assignment has not been recorded before the issue fee payment, the following applies:

• The request for issuance to the assignee must state that the assignment document has been filed for recordation.
• This statement should be made in accordance with 37 CFR 3.11.

As stated in 37 CFR 3.81(a): If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.

If the assignee’s name and address are not identified in item 3 of the Fee(s) Transmittal form (PTOL-85B), the following occurs:

• The patent will issue to the applicant instead of the assignee.
• Assignment data printed on the patent will be based solely on the information supplied on the PTOL-85B form.

As stated in the MPEP: Unless an assignee’s name and address are identified in item 3 of the Fee(s) Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied.

It’s crucial for applicants and assignees to ensure that the correct information is provided on the PTOL-85B form to avoid any issues with patent issuance to the intended party.

What happens if I submit a non-original assignment document for recording?

If you submit a non-original assignment document for recording, it will be rejected by the USPTO. The MPEP 302.01 clearly states: ‘The USPTO will not return documents filed for recording. Therefore, customers must submit copies of the documents to be recorded, rather than originals.’ This means that while you should submit a copy, it must be a true and complete copy of the original document. Submitting altered or incomplete copies may result in rejection and delay the recording process.

If you fail to correct and resubmit the returned assignment documents within the specified time period, the USPTO will consider the date of receipt of the corrected papers as the new recording date. The MPEP 317.02 clearly states:

“If the returned papers are not corrected and resubmitted within the specified period, the date of receipt of the corrected papers will be considered to be the date of recording of the document.”

It’s crucial to note that this may affect the priority date of your assignment, potentially impacting your rights. Additionally, the MPEP emphasizes that “The specified period to resubmit the returned papers will not be extended.” Therefore, it’s essential to act promptly when you receive returned documents to avoid losing the benefit of the original filing date.

To learn more:

• assignment documents
• resubmission deadline
• recording date
• USPTO procedures

What happens if I don’t record an assignment with the USPTO?

Failing to record an assignment with the USPTO can have significant legal implications. According to MPEP 302:

“An assignment, grant, or conveyance of a patent or application shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the USPTO within three months from its date or prior to the date of such subsequent purchase or mortgage.”

This means that if you don’t record your assignment:

• Your ownership rights may not be enforceable against subsequent purchasers or mortgagees who were unaware of the unrecorded assignment.
• You may face difficulties in proving ownership in legal proceedings or licensing negotiations.
• It could complicate future transfers or financial transactions involving the patent or application.

To protect your interests, it’s crucial to record assignments promptly with the USPTO, ideally within three months of the assignment date or before any subsequent transactions occur.

For more information on legal implications, visit: legal implications.

For more information on USPTO procedures, visit: USPTO procedures.

What happens if I accidentally submit an original assignment document to the USPTO?

If you accidentally submit an original assignment document to the USPTO, you will not be able to retrieve it. The MPEP 302.01 clearly states: ‘The USPTO will not return documents filed for recording.’

To avoid this situation:

• Always submit copies of assignment documents
• Keep original documents in a secure location
• Double-check all submissions before sending them to the USPTO

If you have submitted an original document in error, you may need to create a new assignment document or seek legal advice on how to proceed with future patent transactions or litigation that may require the original document.

To learn more:

• patent assignment
• original document submission
• USPTO recording error

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

If an expungement petition is granted, the USPTO will take action to remove the erroneous assignment record. As stated in MPEP 323.01(d): ‘The assignment records related to a request for expungement will be expunged, deleted or corrected in accordance with the decision on the petition.’ This means that the incorrect or unnecessary information will be removed from the official assignment records, helping to maintain accurate ownership information for the patent or application.

To learn more:

• expungement petition
• granted petition
• USPTO procedure

If an English translation is not provided with a non-English assignment document, the USPTO will not record the assignment. According to MPEP 302.02:

The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.

This means that the assignment will be rejected, and the ownership transfer will not be officially recognized by the USPTO. To proceed with the recordation, the applicant or assignee must submit a proper English translation along with the original non-English document.

To learn more:

• patent assignment
• document rejection
• USPTO procedures
• translation requirements

If an assignment document submitted electronically through the Electronic Patent Assignment System (EPAS) is determined to be not recordable, the following process occurs:

1. The entire document, along with its associated cover sheet, will be returned to the sender.
2. An Office “Notice of Non-Recordation” will be transmitted back to the sender via fax, if possible.
3. The sender can make corrections to the document or cover sheet.
4. The corrected submission can then be resubmitted by mailing it to the address specified in 37 CFR 3.27.
5. If the resubmission is timely, the sender will receive the benefit of the initial receipt date as the recordation date, in accordance with 37 CFR 3.51.

As stated in MPEP 302.10: “Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.”

What happens if an assignment document is not recorded at the USPTO?

If an assignment document is not recorded at the USPTO, it can have significant legal implications. According to MPEP 302:

‘An assignment, grant, or conveyance of a patent or application shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Office within three months from its date or prior to the date of such subsequent purchase or mortgage.’

In other words, failing to record an assignment within the specified timeframe can render it invalid against subsequent purchasers or mortgagees who were unaware of the previous assignment. This highlights the importance of timely recording assignments to protect the rights of assignees.

For more information on assignment recording, visit: assignment recording.

For more information on legal implications, visit: legal implications.

For more information on patent rights, visit: patent rights.

For more information on USPTO, visit: USPTO.

What happens if an assignment document is not legible for recording?

If an assignment document is not legible for recording, it will be rejected by the USPTO. According to MPEP 302.01, “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” If a document is rejected due to legibility issues, the USPTO will notify the person who submitted the document, and they will need to resubmit a legible copy for recording.

What happens if an assignment document is not a copy when submitted for recording?

If an assignment document submitted for recording is not a copy, it will not be accepted for recording. The MPEP clearly states: The Assignment Division will not accept an original assignment document because it becomes part of the USPTO permanent records. This is to protect the original document and ensure that the USPTO maintains proper records. If you submit an original document, it will be returned to you unrecorded, and you will need to submit a copy instead.

To ensure your assignment is properly recorded, always submit a legible copy of the original assignment document. This can be a photocopy or other reproduction of the original.

If an assignment cover sheet is not submitted with the assignment document, the USPTO will not record the assignment. According to MPEP 302.07, “The Office will not accept an assignment document that is not accompanied by a cover sheet.” This means that the assignment will not be officially recognized by the USPTO, which could affect the ownership rights of the patent or application.

To learn more:

• assignment cover sheet
• USPTO requirements
• patent ownership

If an assignee’s ownership changes during patent prosecution, it’s crucial to update the USPTO records. As per MPEP 325:

“A new statement under 37 CFR 3.73(c) is required to be filed when ownership changes to another assignee.”

This means that:

• The new assignee must file a new 37 CFR 3.73(c) statement.
• The new statement must establish the new assignee’s ownership.
• Until the new statement is filed, the previous assignee remains the party of record.

It’s important to keep ownership records up-to-date to ensure that the correct party has the right to take action in the application.

For more information on patent prosecution, visit: patent prosecution.

For more information on USPTO records, visit: USPTO records.

What happens if an assignee requests issuance of a patent to themselves?

When an assignee requests issuance of a patent to themselves, the following process occurs:

• The assignee must file a request for issuance of the patent to the assignee under 37 CFR 3.81(b).
• This request must be submitted no later than the date the issue fee is paid.
• If the request is not filed by this deadline, the patent will be issued to the applicant(s) named in the application file.

As stated in MPEP 307: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.”

For more information on issue fee, visit: issue fee.

For more information on patent assignment, visit: patent assignment.

For more information on patent issuance, visit: patent issuance.

If an assignee fails to comply with 37 CFR 3.81(b) when requesting issuance of a patent to the assignee, the patent may still be issued to the assignee. However, the USPTO will not include the assignee data on the patent.

According to the MPEP 307: Failure to comply with the provisions of 37 CFR 3.81(b) will not impact the issuance of the patent. However, the Office will not include the assignee data on the patent if the assignee data is not submitted in compliance with 37 CFR 3.81(b).

This means that while the patent will be issued, the official patent document will not reflect the assignee information, which could potentially cause complications in establishing ownership records.

For more information on patent issuance, visit: patent issuance.

If a typographical error on the original cover sheet does not affect the title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will take the following actions:

• Correct the Assignment Historical Database
• Allow the recording party to keep the original date of recordation

As stated in MPEP 323.01(a): “If the original cover sheet contains a typographical error that does not affect title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will correct the Assignment Historical Database and permit the recording party to keep the original date of recordation.”

This approach ensures that minor errors that don’t impact the substance of the assignment are corrected without affecting the original recordation date, which can be important for legal and priority purposes.

To learn more:

• patent assignment
• cover sheet errors
• recordation date
• USPTO procedures

If a patent is issued to the wrong applicant, the USPTO has procedures to correct this error. According to MPEP 308:

‘If a patent is issued to the wrong applicant because of an error in the Office, the patentee may request a certificate of correction… If the error was not the Office’s fault, the assignee(s) or applicant(s) may request a reissue.’

The method of correction depends on whether the error was made by the USPTO or by the applicant. If it was the USPTO’s error, a certificate of correction can be requested. If it was the applicant’s error, a reissue process may be necessary.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on error correction, visit: error correction.

For more information on patent issuance, visit: patent issuance.

For more information on reissue, visit: reissue.

If a patent involved in an arbitration award is subsequently invalidated, there are provisions for modifying the award. This process is outlined in 35 U.S.C. 294(c):

“The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judgment rendered by a court of competent jurisdiction from which no appeal can or has been taken, such award may be modified by any court of competent jurisdiction upon application by any party to the arbitration.”

Key points to note:

• Parties can agree in advance to allow modification of the award if the patent is invalidated.
• The invalidation must be determined by a court of competent jurisdiction.
• The court decision must be final (no appeal possible or taken).
• Any party to the arbitration can apply to a court for modification of the award.
• The modified award will govern the rights and obligations between the parties from the date of modification.

This provision allows for adjustments to arbitration outcomes in light of significant changes to the validity of the underlying patent rights.

If a patent document doesn’t meet the identification requirements, it will not be recorded. The MPEP 317.01 states:

“A document which does not comply with the identification requirements of § 3.21 will not be recorded.”

This means that the USPTO will reject documents that fail to meet the specific identification criteria outlined in 37 CFR 3.21, and these documents will not receive a recording date until the issues are corrected.

To learn more:

• patent requirements
• document rejection
• identification criteria

What happens if a patent assignment is not recorded with the USPTO?

Failing to record a patent assignment with the USPTO can have significant consequences:

• Lack of Constructive Notice: Third parties may not be aware of the ownership transfer.
• Potential Legal Issues: It may affect the assignee’s ability to enforce the patent or recover damages in infringement cases.
• Validity of Subsequent Transfers: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as valid, for purposes of recording, unless overcome by a showing that such assignment was fraudulently procured or is otherwise invalid.’

While recording is not mandatory for the assignment to be valid between the parties involved, it is highly recommended to protect the assignee’s rights and provide public notice of the ownership change.

For more information on USPTO, visit: USPTO.

If the USPTO determines that a faxed assignment document is not recordable, there’s a specific process outlined in MPEP 302.09:

1. The entire document, including the cover sheet, is returned to the sender via fax.
2. A ‘Notice of Non-Recordation’ is included with the returned document.
3. The sender can make corrections and resubmit the document.
4. Resubmission must be done by mail to the address in 37 CFR 3.27.
5. Timely resubmission preserves the initial receipt date as the recordation date.

The MPEP states: If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office ‘Notice of Non-Recordation’ will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.

To learn more:

• patent assignment
• facsimile submission
• USPTO
• non-recordable documents

If the designated domestic representative cannot be found or if no person has been designated, 35 U.S.C. 293 provides a solution:

If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs.

This means that if the domestic representative is unreachable or non-existent, the U.S. District Court for the Eastern District of Virginia will handle the case and determine how to serve the summons. This ensures that legal proceedings can continue even if there are issues with the domestic representative.

To learn more:

• Domestic Representative
• Legal Proceedings
• USPTO Procedures
• Patent Law

The USPTO accepts the following file formats for electronic submission of assignment documents:

• PDF (Portable Document Format)
• TIFF (Tagged Image File Format)

As stated in MPEP 302.10: “The USPTO will accept electronic submissions of assignment documents in TIFF or PDF format.” It’s important to note that these formats are chosen for their ability to preserve document integrity and ensure long-term accessibility.

To learn more:

• electronic submission
• file formats
• assignment documents
• USPTO
• PDF
• TIFF

When correcting an erroneous assignment or name change, you must pay the required fee for each application or patent affected. According to MPEP 323.01(c):

The required fee ( 37 CFR 3.41 ) for each application or patent to be corrected.

The specific fee amount can be found in the current USPTO fee schedule. It’s important to note that a separate fee is required for each application or patent that needs correction, even if they are related to the same erroneous assignment.

To learn more:

• patent assignment
• fees
• error correction
• USPTO

To correct a typographical error on a patent assignment cover sheet, you must pay the required fee for each application or patent that needs correction. According to MPEP 323.01(a):

“The party requesting correction should submit… (C) the required fee for each application or patent to be corrected (37 CFR 3.41).”

The specific fee amount is set by 37 CFR 3.41 and may change periodically. It’s important to check the current USPTO Fee Schedule for the most up-to-date fee information. The fee is required per application or patent, so if multiple documents need correction, multiple fees may apply.

To learn more:

• patent assignment
• cover sheet correction
• typographical errors
• USPTO fees

When correcting a typographical error in a recorded assignment document, fees are required. The MPEP 323.01(b) states:

The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).

The specific fee amount is set by 37 CFR 3.41. It’s important to note that:

• A separate fee is required for each application or patent affected by the correction.
• The fee amount may change, so it’s best to check the current USPTO fee schedule for the most up-to-date information.

To learn more:

• Assignment
• Typographical Errors
• Document Correction
• USPTO Fees

Recording a patent assignment at the USPTO involves paying an appropriate recording fee. MPEP 315 references the fee requirements:

The appropriate recording fee (see 37 CFR 1.21(h) and 3.41).

The specific fee amount can be found in the USPTO’s current fee schedule. It’s important to note that:

• Fees may vary depending on whether the submission is electronic or paper-based
• There may be additional fees for expedited processing
• Fees are subject to change, so always check the current fee schedule before submitting

For the most up-to-date information on fees, visit the USPTO’s official fee schedule page.

To expunge an assignment record at the USPTO, clear evidence must be provided that the document was submitted by mistake or is of improper character. The MPEP 323.01(d) states:

‘The USPTO will not expunge any assignment records that have been recorded absent a petition pursuant to 37 CFR 1.59.’

While the MPEP doesn’t provide specific examples of acceptable evidence, it generally includes:

• Documentation showing the assignment was recorded in error
• Proof that the assignment document contains incorrect information
• Evidence that the assignment was not intended for the specific application or patent

The burden of proof lies with the petitioner to demonstrate why the assignment record should be expunged. Each case is evaluated on its own merits by the USPTO.

To learn more:

• assignment records
• expungement evidence
• USPTO
• petition requirements

To support a petition to expunge an improperly recorded assignment, you should provide evidence that clearly demonstrates the assignment is incorrect. This may include:

• Affidavits or declarations from relevant parties
• Documentation showing true ownership
• Evidence of fraud or mistake in the recording

MPEP 323.01(c) states: ‘The petition should be accompanied by clear and convincing evidence of the error in recording.’ It’s crucial to present a compelling case to the USPTO to justify the expungement.

To learn more:

• patent assignment
• evidence
• expungement petition
• USPTO

MPEP 303 states that certified copies of patent applications as filed do not include an indication of assignment documents. The section specifically notes:

“Certified copies of patent applications as filed do not include an indication of assignment documents.” (MPEP 303)

This means that if an applicant wants to have proof of assignment documents, they need to request this separately.

According to MPEP 318, assignment documents submitted for recording should not be placed directly in application or patent files. The section states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This means that when assignment documents are submitted, they should be sent to the Assignment Division for proper recording rather than being inserted into the application or patent files themselves.

To learn more:

• assignment documents
• patent files
• application files
• Assignment Division
• document recording

According to 37 CFR 3.11, the following documents can be recorded with the USPTO related to patent assignments:

• Assignments of applications, patents, and registrations
• Other documents relating to interests in patent applications and patents
• Documents affecting title to applications, patents, or registrations
• Licenses, assignments, or other interests of the Government in or under patents or patent applications
• Joint research agreements or excerpts of joint research agreements

These documents must be accompanied by completed cover sheets as specified in 37 CFR 3.28 and 3.31.

According to MPEP 314, the following documents are recordable for name changes or mergers in patent ownership:

• Certificates issued by appropriate authorities showing a change of name of a business
• Certificates showing a merger of businesses

The MPEP states: Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.

To correct a typographical error in a patent assignment, you need to submit several documents. According to MPEP 323.01(b), the required documents include:

• A copy of the originally recorded papers
• A cover sheet
• The required fee for each application or patent to be corrected

If the assignor is not available to make the correction, the assignee must also provide:

• An affidavit or declaration identifying the error and requesting correction

The MPEP states:

If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction. The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).

Ensure all documents are properly prepared and submitted to avoid delays in processing.

To learn more:

• Assignment
• Typographical Errors
• Document Correction
• Required Documents

In patent arbitration proceedings, the defenses provided under 35 U.S.C. 282 must be considered by the arbitrator if raised by any party. This is specified in 35 U.S.C. 294(b):

‘In any such arbitration proceeding, the defenses provided for under section 282 shall be considered by the arbitrator if raised by any party to the proceeding.’

These defenses typically include noninfringement, absence of liability for infringement, unenforceability, and invalidity of the patent or any claim in suit.

If the USPTO returns a document unrecorded and you believe it represents an unusual case that justifies recordation, you have the option to petition for its recordation. The MPEP provides the following guidance:

“Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document.” (MPEP 313)

To petition:

1. Submit the document to the Office of Petitions
2. Include a petition under 37 CFR 1.181
3. Provide justification for why the document should be recorded

The MPEP outlines two main types of patent ownership:

1. Individual ownership: ‘An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property.’
2. Joint ownership: ‘Multiple parties may together own the entire right, title and interest of the patent property.’ This can occur in several scenarios:

• Multiple partial assignees of the patent property
• Multiple inventors who have not assigned their rights
• A combination of partial assignee(s) and inventor(s) who have not assigned their rights

Understanding these ownership types is crucial for managing patent rights and making decisions about assignments or licenses.

According to 37 CFR 3.31, the cover sheet for patent assignments must contain:

• Name of the party conveying the interest
• Name and address of the party receiving the interest
• Description of the interest conveyed or transaction to be recorded
• Identification of the patent or application
• Name and address for correspondence
• Date of execution
• Signature of the party submitting the document

For joint research agreements, the cover sheet must also:

• Identify the document as a ‘joint research agreement’
• Indicate the name of the patent owner
• Indicate the names of other parties to the agreement
• Indicate the date the agreement was executed

The MPEP notes that Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

For more information on Assignment cover sheet, visit: Assignment cover sheet.

For more information on patent assignment, visit: patent assignment.

According to 37 CFR 3.26, assignment documents in languages other than English can be recorded with the USPTO, but specific requirements must be met. The MPEP states:

The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.

Key points for submitting non-English assignment documents:

• The original non-English document must be submitted
• An English translation of the document must be provided
• The translation must be signed by the individual who performed the translation
• Both the original document and the translation will be recorded

It’s important to ensure that the translation accurately reflects the content of the original document to avoid any legal complications or misunderstandings regarding the assignment.

For more information on patent assignment, visit: patent assignment.

According to MPEP 302.09, there are specific requirements for submitting assignment-related documents by fax:

• An identified application or patent number
• One cover sheet to record a single transaction
• Payment of the recordation fee by credit card or USPTO Deposit Account

The MPEP states: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record a single transaction; and (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.

It’s important to note that certain documents cannot be submitted via fax, such as assignments submitted with new patent applications or documents with multiple cover sheets.

To learn more:

• patent assignment
• facsimile submission
• USPTO
• document requirements

To submit an assignment document electronically to the USPTO, the following requirements must be met:

• The document must be submitted via the Electronic Patent Assignment System (EPAS)
• An identified application or patent number must be included
• One cover sheet must be completed online to record a single transaction
• The signature on the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2)

As stated in 37 CFR 1.4(d)(2), an S-signature may be used, which consists of letters and/or numbers between forward slashes (e.g., /John Doe/). For patent practitioners, their registration number must also be included.

According to MPEP 302.02, non-English assignment documents can only be accepted and recorded by the USPTO if they are accompanied by an English translation. The MPEP states:

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

This means that inventors, assignees, or their representatives must provide a certified English translation along with the original non-English document for it to be officially recorded.

To learn more:

• patent assignment
• non-English documents
• USPTO requirements
• translation
• patent recording

To record an assignment of a patent or patent application, the following requirements must be met:

• The assignment must be in writing.
• It must be signed by the assignor (the person or entity transferring ownership).
• The document must identify the patent or application by number.
• The assignment must be submitted to the USPTO along with the required fee.

According to MPEP 301: “An assignment relating to a patent must be submitted to the USPTO for recordation as an absolute requirement for enforcing the patent or application against third parties.” This recordation provides constructive notice to the public of the assignment.

For more information on patent assignment, visit: patent assignment.

For more information on recordation, visit: recordation.

For more information on USPTO, visit: USPTO.

What are the requirements for recording a patent assignment document?

To record a patent assignment document, you must submit:

• A copy of the original assignment document
• A cover sheet identifying the document as an assignment
• The required fee

The MPEP states: ‘The document submitted for recordation must be accompanied by a cover sheet identifying the document as an assignment and must contain the fee required by 37 CFR 3.41.’ This ensures proper processing and indexing of the assignment.

To learn more:

• patent assignment
• recording requirements
• USPTO