Patent Law FAQ

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

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

Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:

“Joint inventors are treated as joint owners of the invention unless there is an assignment.”

Key aspects of joint ownership include:

• Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
• Profits do not need to be shared unless there’s a specific agreement.
• All joint owners must agree to sell or assign the entire patent to a third party.
• In infringement suits, all joint owners must be joined as plaintiffs.

It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.

For more information on joint inventors, visit: joint inventors.

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

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

For more information on USPTO, visit: USPTO.

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.

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 USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

To correct an error in a recorded assignment document at the USPTO, you have two main options:

• Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
• Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.

As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”

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

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

For more information on USPTO, visit: USPTO.

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 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 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.

How are historical patent assignment records maintained?

The USPTO maintains historical patent assignment records separately from more recent records. MPEP 301.01 explains:

‘The historical database of assignments is maintained separate and apart from the database of assignments affecting title recorded since 1980.’

This means that:

• Records prior to August 1980 are kept in a separate historical database
• These older records may not be available through the online Patent Assignment Search
• Accessing historical records may require different procedures or direct contact with the USPTO

For researchers or legal professionals needing access to pre-1980 assignment records, it’s advisable to contact the USPTO’s Patent and Trademark Resource Centers or the Assignment Recordation Branch for assistance.

Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:

1. Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
2. Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”

These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.

For more information on multiple assignees, visit: multiple assignees.

For more information on partial assignees, visit: partial assignees.

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

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

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.

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.

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.

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.

Yes, you can record a trademark license with the USPTO. The process is similar to recording other documents:

• Submit the license document to the USPTO’s Assignment Recordation Branch
• Include a cover sheet with the required information
• Pay the appropriate fee

MPEP 313 mentions: Trademark documents are recorded in the same manner as patent documents, but… requests to record documents for trademarks should be mailed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3514.

Recording a trademark license can provide legal benefits and help maintain clear records of trademark rights and usage agreements.

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.

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.

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.

How long does it take for a patent assignment to be recorded by the USPTO?

The time it takes for a patent assignment to be recorded by the USPTO can vary. While the MPEP does not specify an exact timeframe, the process typically takes several weeks. Factors affecting the recording time include:

• Method of submission (electronic vs. paper)
• Completeness and accuracy of the submitted documents
• Current USPTO workload

According to the MPEP 302, ‘The date of recording of a document is the date of its receipt in the Office in proper form with the appropriate fee.’ This means that the official recording date is the date the USPTO receives a compliant submission, not the date when processing is completed.

For the most up-to-date information on processing times, it’s advisable to check the USPTO website or contact their assignment recordation branch directly.

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.

The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:

“The government has certain rights in the invention.”

These rights typically include:

• A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
• March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
• The right to receive periodic reports on the utilization of the invention

While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.

Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:

“Joint inventors are treated as joint owners of the invention unless there is an assignment.”

Key aspects of joint ownership include:

• Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
• Profits do not need to be shared unless there’s a specific agreement.
• All joint owners must agree to sell or assign the entire patent to a third party.
• In infringement suits, all joint owners must be joined as plaintiffs.

It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.

For more information on joint inventors, visit: joint inventors.

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

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

For more information on USPTO, visit: USPTO.

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 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.

How are historical patent assignment records maintained?

The USPTO maintains historical patent assignment records separately from more recent records. MPEP 301.01 explains:

‘The historical database of assignments is maintained separate and apart from the database of assignments affecting title recorded since 1980.’

This means that:

• Records prior to August 1980 are kept in a separate historical database
• These older records may not be available through the online Patent Assignment Search
• Accessing historical records may require different procedures or direct contact with the USPTO

For researchers or legal professionals needing access to pre-1980 assignment records, it’s advisable to contact the USPTO’s Patent and Trademark Resource Centers or the Assignment Recordation Branch for assistance.

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

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.

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.

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 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.

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.

How long does it take for a patent assignment to be recorded by the USPTO?

The time it takes for a patent assignment to be recorded by the USPTO can vary. While the MPEP does not specify an exact timeframe, the process typically takes several weeks. Factors affecting the recording time include:

• Method of submission (electronic vs. paper)
• Completeness and accuracy of the submitted documents
• Current USPTO workload

According to the MPEP 302, ‘The date of recording of a document is the date of its receipt in the Office in proper form with the appropriate fee.’ This means that the official recording date is the date the USPTO receives a compliant submission, not the date when processing is completed.

For the most up-to-date information on processing times, it’s advisable to check the USPTO website or contact their assignment recordation branch directly.

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 USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:

1. Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
2. Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”

These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.

For more information on multiple assignees, visit: multiple assignees.

For more information on partial assignees, visit: partial assignees.

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

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.

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:

“The government has certain rights in the invention.”

These rights typically include:

• A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
• March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
• The right to receive periodic reports on the utilization of the invention

While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.

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

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.

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.

To correct an error in a recorded assignment document at the USPTO, you have two main options:

• Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
• Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.

As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”

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

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

For more information on USPTO, visit: USPTO.

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

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

Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:

“Joint inventors are treated as joint owners of the invention unless there is an assignment.”

Key aspects of joint ownership include:

• Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
• Profits do not need to be shared unless there’s a specific agreement.
• All joint owners must agree to sell or assign the entire patent to a third party.
• In infringement suits, all joint owners must be joined as plaintiffs.

It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.

For more information on joint inventors, visit: joint inventors.

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

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

For more information on USPTO, visit: USPTO.

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.

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 USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

To correct an error in a recorded assignment document at the USPTO, you have two main options:

• Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
• Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.

As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”

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

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

For more information on USPTO, visit: USPTO.

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 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 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.

How are historical patent assignment records maintained?

The USPTO maintains historical patent assignment records separately from more recent records. MPEP 301.01 explains:

‘The historical database of assignments is maintained separate and apart from the database of assignments affecting title recorded since 1980.’

This means that:

• Records prior to August 1980 are kept in a separate historical database
• These older records may not be available through the online Patent Assignment Search
• Accessing historical records may require different procedures or direct contact with the USPTO

For researchers or legal professionals needing access to pre-1980 assignment records, it’s advisable to contact the USPTO’s Patent and Trademark Resource Centers or the Assignment Recordation Branch for assistance.

Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:

1. Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
2. Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”

These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.

For more information on multiple assignees, visit: multiple assignees.

For more information on partial assignees, visit: partial assignees.

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

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

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.

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.

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.

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.

Yes, you can record a trademark license with the USPTO. The process is similar to recording other documents:

• Submit the license document to the USPTO’s Assignment Recordation Branch
• Include a cover sheet with the required information
• Pay the appropriate fee

MPEP 313 mentions: Trademark documents are recorded in the same manner as patent documents, but… requests to record documents for trademarks should be mailed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3514.

Recording a trademark license can provide legal benefits and help maintain clear records of trademark rights and usage agreements.

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.

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.

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.

How long does it take for a patent assignment to be recorded by the USPTO?

The time it takes for a patent assignment to be recorded by the USPTO can vary. While the MPEP does not specify an exact timeframe, the process typically takes several weeks. Factors affecting the recording time include:

• Method of submission (electronic vs. paper)
• Completeness and accuracy of the submitted documents
• Current USPTO workload

According to the MPEP 302, ‘The date of recording of a document is the date of its receipt in the Office in proper form with the appropriate fee.’ This means that the official recording date is the date the USPTO receives a compliant submission, not the date when processing is completed.

For the most up-to-date information on processing times, it’s advisable to check the USPTO website or contact their assignment recordation branch directly.

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.

The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:

“The government has certain rights in the invention.”

These rights typically include:

• A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
• March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
• The right to receive periodic reports on the utilization of the invention

While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

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

Joint ownership in patents and patent applications occurs when two or more parties share ownership rights. According to MPEP 301:

“Joint inventors are treated as joint owners of the invention unless there is an assignment.”

Key aspects of joint ownership include:

• Each joint owner has the right to make, use, sell, and license the invention without consent from other owners.
• Profits do not need to be shared unless there’s a specific agreement.
• All joint owners must agree to sell or assign the entire patent to a third party.
• In infringement suits, all joint owners must be joined as plaintiffs.

It’s important for joint owners to have clear agreements in place to avoid potential conflicts and ensure proper management of the patent rights.

For more information on joint inventors, visit: joint inventors.

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

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

For more information on USPTO, visit: USPTO.

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.

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 USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

To correct an error in a recorded assignment document at the USPTO, you have two main options:

• Cover sheet corrections: For errors in the cover sheet data only, you can submit a corrective document identifying the reel and frame number where the assignment is recorded and explaining the correction.
• Errors in the assignment document: For errors in the actual assignment document, you need to record a corrective document. This can be either a new assignment or other document correcting the original assignment.

As stated in MPEP 323: “The ‘Correction’ box on the Recordation Form Cover Sheet should be checked to indicate that the new submission is to correct an assignment already recorded.”

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

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

For more information on USPTO, visit: USPTO.

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 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 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.

How are historical patent assignment records maintained?

The USPTO maintains historical patent assignment records separately from more recent records. MPEP 301.01 explains:

‘The historical database of assignments is maintained separate and apart from the database of assignments affecting title recorded since 1980.’

This means that:

• Records prior to August 1980 are kept in a separate historical database
• These older records may not be available through the online Patent Assignment Search
• Accessing historical records may require different procedures or direct contact with the USPTO

For researchers or legal professionals needing access to pre-1980 assignment records, it’s advisable to contact the USPTO’s Patent and Trademark Resource Centers or the Assignment Recordation Branch for assistance.

Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:

1. Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
2. Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”

These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.

For more information on multiple assignees, visit: multiple assignees.

For more information on partial assignees, visit: partial assignees.

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

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

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.

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.

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.

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.

Yes, you can record a trademark license with the USPTO. The process is similar to recording other documents:

• Submit the license document to the USPTO’s Assignment Recordation Branch
• Include a cover sheet with the required information
• Pay the appropriate fee

MPEP 313 mentions: Trademark documents are recorded in the same manner as patent documents, but… requests to record documents for trademarks should be mailed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3514.

Recording a trademark license can provide legal benefits and help maintain clear records of trademark rights and usage agreements.

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.

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.

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.

How long does it take for a patent assignment to be recorded by the USPTO?

The time it takes for a patent assignment to be recorded by the USPTO can vary. While the MPEP does not specify an exact timeframe, the process typically takes several weeks. Factors affecting the recording time include:

• Method of submission (electronic vs. paper)
• Completeness and accuracy of the submitted documents
• Current USPTO workload

According to the MPEP 302, ‘The date of recording of a document is the date of its receipt in the Office in proper form with the appropriate fee.’ This means that the official recording date is the date the USPTO receives a compliant submission, not the date when processing is completed.

For the most up-to-date information on processing times, it’s advisable to check the USPTO website or contact their assignment recordation branch directly.

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.

The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:

“The government has certain rights in the invention.”

These rights typically include:

• A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
• March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
• The right to receive periodic reports on the utilization of the invention

While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.