Patent Law FAQ

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.

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.

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.

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.

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.

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 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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

What are the reporting requirements for subject inventions under government contracts?

Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:

“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”

Additionally, the contractor must:

• Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
• File patent applications within one year after election (or prior to any statutory bar date).
• Execute and promptly deliver instruments to confirm government rights.
• Provide periodic reports on the utilization of the invention.

These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.

For more information on federally sponsored research, visit: federally sponsored research.

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

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

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

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.

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.

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.

No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:

‘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…’

This restriction extends for one year after their employment at the USPTO ends.

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).”

Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded.

According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may take action in a patent application under 37 CFR 3.73(b) by submitting a statement under 37 CFR 3.73(b) which is signed by a party authorized by the assignee.

This means that even if the assignment is not yet recorded, the assignee can still take action by:

• Submitting a statement under 37 CFR 3.73(b)
• Ensuring the statement is signed by an authorized party
• Including a copy of the assignment document with the statement

However, it’s important to note that the assignment must still be recorded in the USPTO no later than the date of payment of the issue fee. Failure to record the assignment by this deadline could result in the loss of assignee rights.

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

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.

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.

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.

No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.

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

For more information on certified copies, visit: certified copies.

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

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.

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.

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.

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.

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.

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.

No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.

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

For more information on certified copies, visit: certified copies.

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

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.

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.

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.

No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:

‘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…’

This restriction extends for one year after their employment at the USPTO ends.

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.

What are the reporting requirements for subject inventions under government contracts?

Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:

“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”

Additionally, the contractor must:

• Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
• File patent applications within one year after election (or prior to any statutory bar date).
• Execute and promptly deliver instruments to confirm government rights.
• Provide periodic reports on the utilization of the invention.

These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.

For more information on federally sponsored research, visit: federally sponsored research.

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.

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.

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.

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.

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.

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 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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

What are the reporting requirements for subject inventions under government contracts?

Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:

“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”

Additionally, the contractor must:

• Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
• File patent applications within one year after election (or prior to any statutory bar date).
• Execute and promptly deliver instruments to confirm government rights.
• Provide periodic reports on the utilization of the invention.

These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.

For more information on federally sponsored research, visit: federally sponsored research.

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

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

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

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.

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.

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.

No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:

‘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…’

This restriction extends for one year after their employment at the USPTO ends.

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).”

Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded.

According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may take action in a patent application under 37 CFR 3.73(b) by submitting a statement under 37 CFR 3.73(b) which is signed by a party authorized by the assignee.

This means that even if the assignment is not yet recorded, the assignee can still take action by:

• Submitting a statement under 37 CFR 3.73(b)
• Ensuring the statement is signed by an authorized party
• Including a copy of the assignment document with the statement

However, it’s important to note that the assignment must still be recorded in the USPTO no later than the date of payment of the issue fee. Failure to record the assignment by this deadline could result in the loss of assignee rights.

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

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.

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.

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.

No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.

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

For more information on certified copies, visit: certified copies.

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

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.

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.

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.

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 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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

What are the reporting requirements for subject inventions under government contracts?

Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:

“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”

Additionally, the contractor must:

• Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
• File patent applications within one year after election (or prior to any statutory bar date).
• Execute and promptly deliver instruments to confirm government rights.
• Provide periodic reports on the utilization of the invention.

These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.

For more information on federally sponsored research, visit: federally sponsored research.

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

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

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

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.

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.

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.

No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4:

‘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…’

This restriction extends for one year after their employment at the USPTO ends.

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).”

Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded.

According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may take action in a patent application under 37 CFR 3.73(b) by submitting a statement under 37 CFR 3.73(b) which is signed by a party authorized by the assignee.

This means that even if the assignment is not yet recorded, the assignee can still take action by:

• Submitting a statement under 37 CFR 3.73(b)
• Ensuring the statement is signed by an authorized party
• Including a copy of the assignment document with the statement

However, it’s important to note that the assignment must still be recorded in the USPTO no later than the date of payment of the issue fee. Failure to record the assignment by this deadline could result in the loss of assignee rights.

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

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.

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.

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.

No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.

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

For more information on certified copies, visit: certified copies.

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

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.