Patent Law FAQ

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

According to MPEP 301:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

The MPEP further advises:

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

To obtain these records:

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

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

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

For more information on NARA, visit: NARA.

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

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

However, it’s important to note that:

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

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

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

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

In contrast, licensing is described as:

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

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

The MPEP distinguishes between assignments and licenses in patent law:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The database typically includes:

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

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

The MPEP outlines two main types of patent ownership:

1. Individual ownership: ‘An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property.’
2. Joint ownership: ‘Multiple parties may together own the entire right, title and interest of the patent property.’ This can occur in several scenarios:

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

Understanding these ownership types is crucial for managing patent rights and making decisions about assignments or licenses.

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.

According to MPEP 301, patents have the attributes of personal property. The MPEP states:

’35 U.S.C. 261 Ownership; assignment. Subject to the provisions of this title, patents shall have the attributes of personal property.’

This means that patents can be bought, sold, licensed, or transferred like other forms of property. However, it’s important to note that owning a patent doesn’t necessarily grant the right to practice the invention, as other legal considerations may apply.

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

For more information on personal property, visit: personal property.

Patent ownership can be transferred through an assignment. According to 35 U.S.C. 261, assignments of patent applications, patents, or any interest therein must be in writing. The MPEP defines an assignment as:

‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….’

An assignment transfers the entire ownership interest or a percentage of that interest in the patent or application. It must include the entirety of the bundle of rights associated with the ownership interest.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

How does the USPTO handle confidential patent assignment information?

The USPTO generally treats patent assignment records as public information. However, there are provisions for handling confidential information within these records. MPEP 301.01 states:

“Assignments and other documents affecting title to applications, patents, and registrations that are recorded in the USPTO are generally open to public inspection. Only documents that are sealed as provided in 37 CFR 1.14 or otherwise not open to public inspection are not available for public inspection.”

If a document contains sensitive information that should not be publicly disclosed, the parties involved can:

• Redact confidential information before submitting the document for recordation
• Request that certain documents be sealed under 37 CFR 1.14
• Submit separate public and non-public versions of documents when necessary

It’s important to note that the decision to seal documents is at the discretion of the USPTO and is generally limited to specific circumstances outlined in the regulations.

How does the USPTO handle changes in ownership of patents?

The USPTO handles changes in ownership of patents through a process of recording assignments. According to MPEP 301:

“The assignment of a patent, or patent application, is the transfer of the entire right, title and interest therein. An assignment of an application may be made before the application is filed or after it is filed.”

When a change in ownership occurs:

• The new owner must record the assignment with the USPTO
• This recording serves as public notice of the transfer
• It helps maintain clear records of patent ownership

The USPTO maintains these records and updates them as new assignments are recorded.

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

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

The Patent and Trademark Office (PTO) generally does not directly handle patent ownership disputes. According to MPEP 301:

The Patent and Trademark Office is not the forum for resolving patent ownership disputes. Such disputes are to be settled by the parties involved, outside the Patent and Trademark Office.

If there’s a dispute over ownership, the PTO will typically continue to recognize the owner of record until a court order or other legal document resolving the dispute is presented. Parties involved in ownership disputes should seek legal counsel and resolve the matter through appropriate legal channels.

How does joint ownership work for patents?

Joint ownership in patents occurs when two or more parties share ownership rights. The MPEP 301 provides guidance on this:

‘In the case of joint owners, each joint owner has the right to make, use, offer for sale, and sell the patented invention without the consent of and without accounting to the other owners.’

This means that each joint owner has full rights to use and profit from the patent independently, without needing permission from the other owners. However, this can lead to complications, especially in licensing or selling the patent, as all joint owners typically need to agree on such actions. It’s often advisable for joint owners to have a written agreement outlining their rights and responsibilities.

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

For more information on patent rights, visit: 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.

To request copies of patent assignment records, follow these steps:

1. For records after May 1, 1957: Contact the USPTO and pay the fee set forth in 37 CFR 1.19.
2. For records before May 1, 1957: Contact the National Archives and Records Administration (NARA) directly.
3. For recent records: Check the USPTO website for online availability.

When requesting a copy, the MPEP advises: “An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded.” Failure to provide this information may result in additional charges.

The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:

‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’

For applications that are not open to the public, the process is more restricted:

‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’

The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.

Patents and patent applications can be assigned through a written instrument. The MPEP 301 states:

‘Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’

This means that patent rights can be transferred from one party to another through a written document. The assignment must be recorded with the USPTO to be effective against subsequent purchasers or mortgagees.

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

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

Patent assignments can be recorded with the USPTO in two ways:

1. In the assignment records: This is done as provided in 37 CFR Part 3. Recording provides public notice of the assignment but does not determine its validity.
2. In the file of a patent application or patent: This may be necessary for the assignee to take action in the application or patent proceeding.

For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.

It’s important to note that recording an assignment in the USPTO’s assignment records does not automatically allow the assignee to take action in a patent proceeding. Additional steps may be required as outlined in MPEP § 325 for applications filed on or after September 16, 2012, or MPEP § 324 for earlier applications.

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

There are two ways to make a patent assignment of record with the USPTO:

1. Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
2. Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.

For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.

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.

The MPEP outlines two ways to make an assignment of record with the USPTO:

1. Recording in the USPTO assignment records: ‘An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment.’
2. Filing in a specific application or patent file: ‘An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding).’

The MPEP notes: ‘Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.’

It’s important to understand the differences between these methods and their respective purposes in patent proceedings.

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.

The USPTO makes assignment records accessible to the public in several ways, as described in 37 CFR 1.12:

1. Separate assignment records for patents and trademarks are maintained and are open to public inspection.
2. Assignment records, digests, and indexes for patents are available on the USPTO website.
3. Images of assignment documents recorded from June 1998 onwards are viewable on the Office website.
4. For earlier records, the public can place an order to view images.

The MPEP notes: ‘The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.’

However, documents relating only to pending unpublished applications are not open to public inspection.

The handling of assignment records for related patent applications, such as divisional, continuation, or continuation-in-part applications, is addressed in MPEP 301.01. The key point is:

If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.

This policy has several implications:

• Once a patent is granted on a related application, the assignment records of the parent application become publicly accessible.
• This applies even if the parent application was previously unpublished or abandoned.
• The public accessibility extends to all assignment records in the chain of related applications leading to the granted patent.

This approach ensures transparency in the ownership history of patented inventions, allowing interested parties to trace the chain of title through related applications. It’s important for applicants and assignees to be aware of this when considering their IP strategy and the potential disclosure of ownership information for related applications.

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

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

Assignment records for reissue applications are treated differently from regular patent applications due to their public nature. According to MPEP 301.01:

Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b).

This means that once a reissue application is filed, its assignment records become publicly accessible, regardless of whether the original patent’s assignment records were previously confidential. This is because reissue applications are, by nature, related to already-issued patents and are subject to different rules regarding public disclosure.

The public accessibility of reissue application assignment records aligns with the general principle of transparency in the patent system, allowing interested parties to track ownership changes even during the reissue process. This can be particularly important for those monitoring patent rights in specific technological areas or for potential licensees or purchasers of patent rights.

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

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

The USPTO does not grant partial access to assignment documents. According to MPEP 301.01:

The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.

This policy ensures transparency and prevents selective disclosure of information. It’s important to note that this approach can have implications for documents that contain both public and potentially confidential information. For example:

• If a document covers both a trademark and a patent application, the entire document becomes public.
• If a document covers multiple patent applications, it becomes public as soon as any one of the applications is published or patented.

This policy underscores the importance of carefully considering what information is included in assignment documents, particularly when dealing with a mix of public and non-public intellectual property rights.

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

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

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

Access to assignment records for unpublished patent applications is restricted. The MPEP states:

“For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.”

To access these records, you must have written authority from one of the following:

• An inventor
• The applicant
• The assignee or an assignee of an undivided part interest
• A patent practitioner of record
• A person with written authority from any of the above

Alternatively, you must show that you are a bona fide prospective or actual purchaser, mortgagee, or licensee of the application.

Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:

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

This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.

For more information on oath or declaration, visit: oath or declaration.

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

Yes, a patent application can be assigned before it is filed. This is known as an assignment of future rights. MPEP 301 states:

“An assignment of an application can be made before the application is filed. See 37 CFR 3.21.”

However, it’s important to note that the assignment document should clearly identify the invention and the application to be filed. Once the application is filed, it’s advisable to record the assignment with the USPTO to ensure proper documentation of ownership.

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

For more information on USPTO, visit: USPTO.

Yes, all patent assignment records are publicly accessible. MPEP 301.01 clearly states:

‘The assignment records of patents and applications are open to public inspection.’

This means that anyone can access these records, which include:

• Assignment documents
• Digests of assignments
• Indexes of patent assignments

The public nature of these records ensures transparency in patent ownership and transfers. However, it’s important to note that while the records are public, obtaining copies may require payment of a fee as specified in 37 CFR 1.19(b)(3).

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

According to MPEP 301:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

The MPEP further advises:

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

To obtain these records:

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

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

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

For more information on NARA, visit: NARA.

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

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

However, it’s important to note that:

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

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

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

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

In contrast, licensing is described as:

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

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

The MPEP distinguishes between assignments and licenses in patent law:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The database typically includes:

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

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

The MPEP outlines two main types of patent ownership:

1. Individual ownership: ‘An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property.’
2. Joint ownership: ‘Multiple parties may together own the entire right, title and interest of the patent property.’ This can occur in several scenarios:

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

Understanding these ownership types is crucial for managing patent rights and making decisions about assignments or licenses.

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.

According to MPEP 301, patents have the attributes of personal property. The MPEP states:

’35 U.S.C. 261 Ownership; assignment. Subject to the provisions of this title, patents shall have the attributes of personal property.’

This means that patents can be bought, sold, licensed, or transferred like other forms of property. However, it’s important to note that owning a patent doesn’t necessarily grant the right to practice the invention, as other legal considerations may apply.

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

For more information on personal property, visit: personal property.

Patent ownership can be transferred through an assignment. According to 35 U.S.C. 261, assignments of patent applications, patents, or any interest therein must be in writing. The MPEP defines an assignment as:

‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….’

An assignment transfers the entire ownership interest or a percentage of that interest in the patent or application. It must include the entirety of the bundle of rights associated with the ownership interest.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

How does the USPTO handle confidential patent assignment information?

The USPTO generally treats patent assignment records as public information. However, there are provisions for handling confidential information within these records. MPEP 301.01 states:

“Assignments and other documents affecting title to applications, patents, and registrations that are recorded in the USPTO are generally open to public inspection. Only documents that are sealed as provided in 37 CFR 1.14 or otherwise not open to public inspection are not available for public inspection.”

If a document contains sensitive information that should not be publicly disclosed, the parties involved can:

• Redact confidential information before submitting the document for recordation
• Request that certain documents be sealed under 37 CFR 1.14
• Submit separate public and non-public versions of documents when necessary

It’s important to note that the decision to seal documents is at the discretion of the USPTO and is generally limited to specific circumstances outlined in the regulations.

How does the USPTO handle changes in ownership of patents?

The USPTO handles changes in ownership of patents through a process of recording assignments. According to MPEP 301:

“The assignment of a patent, or patent application, is the transfer of the entire right, title and interest therein. An assignment of an application may be made before the application is filed or after it is filed.”

When a change in ownership occurs:

• The new owner must record the assignment with the USPTO
• This recording serves as public notice of the transfer
• It helps maintain clear records of patent ownership

The USPTO maintains these records and updates them as new assignments are recorded.

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

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

The Patent and Trademark Office (PTO) generally does not directly handle patent ownership disputes. According to MPEP 301:

The Patent and Trademark Office is not the forum for resolving patent ownership disputes. Such disputes are to be settled by the parties involved, outside the Patent and Trademark Office.

If there’s a dispute over ownership, the PTO will typically continue to recognize the owner of record until a court order or other legal document resolving the dispute is presented. Parties involved in ownership disputes should seek legal counsel and resolve the matter through appropriate legal channels.

How does joint ownership work for patents?

Joint ownership in patents occurs when two or more parties share ownership rights. The MPEP 301 provides guidance on this:

‘In the case of joint owners, each joint owner has the right to make, use, offer for sale, and sell the patented invention without the consent of and without accounting to the other owners.’

This means that each joint owner has full rights to use and profit from the patent independently, without needing permission from the other owners. However, this can lead to complications, especially in licensing or selling the patent, as all joint owners typically need to agree on such actions. It’s often advisable for joint owners to have a written agreement outlining their rights and responsibilities.

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

For more information on patent rights, visit: 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.

To request copies of patent assignment records, follow these steps:

1. For records after May 1, 1957: Contact the USPTO and pay the fee set forth in 37 CFR 1.19.
2. For records before May 1, 1957: Contact the National Archives and Records Administration (NARA) directly.
3. For recent records: Check the USPTO website for online availability.

When requesting a copy, the MPEP advises: “An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded.” Failure to provide this information may result in additional charges.

The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:

‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’

For applications that are not open to the public, the process is more restricted:

‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’

The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.

Patents and patent applications can be assigned through a written instrument. The MPEP 301 states:

‘Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’

This means that patent rights can be transferred from one party to another through a written document. The assignment must be recorded with the USPTO to be effective against subsequent purchasers or mortgagees.

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

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

Patent assignments can be recorded with the USPTO in two ways:

1. In the assignment records: This is done as provided in 37 CFR Part 3. Recording provides public notice of the assignment but does not determine its validity.
2. In the file of a patent application or patent: This may be necessary for the assignee to take action in the application or patent proceeding.

For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.

It’s important to note that recording an assignment in the USPTO’s assignment records does not automatically allow the assignee to take action in a patent proceeding. Additional steps may be required as outlined in MPEP § 325 for applications filed on or after September 16, 2012, or MPEP § 324 for earlier applications.

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

There are two ways to make a patent assignment of record with the USPTO:

1. Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
2. Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.

For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.

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.

The MPEP outlines two ways to make an assignment of record with the USPTO:

1. Recording in the USPTO assignment records: ‘An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment.’
2. Filing in a specific application or patent file: ‘An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding).’

The MPEP notes: ‘Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.’

It’s important to understand the differences between these methods and their respective purposes in patent proceedings.

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.

The USPTO makes assignment records accessible to the public in several ways, as described in 37 CFR 1.12:

1. Separate assignment records for patents and trademarks are maintained and are open to public inspection.
2. Assignment records, digests, and indexes for patents are available on the USPTO website.
3. Images of assignment documents recorded from June 1998 onwards are viewable on the Office website.
4. For earlier records, the public can place an order to view images.

The MPEP notes: ‘The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.’

However, documents relating only to pending unpublished applications are not open to public inspection.

The handling of assignment records for related patent applications, such as divisional, continuation, or continuation-in-part applications, is addressed in MPEP 301.01. The key point is:

If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.

This policy has several implications:

• Once a patent is granted on a related application, the assignment records of the parent application become publicly accessible.
• This applies even if the parent application was previously unpublished or abandoned.
• The public accessibility extends to all assignment records in the chain of related applications leading to the granted patent.

This approach ensures transparency in the ownership history of patented inventions, allowing interested parties to trace the chain of title through related applications. It’s important for applicants and assignees to be aware of this when considering their IP strategy and the potential disclosure of ownership information for related applications.

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

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

Assignment records for reissue applications are treated differently from regular patent applications due to their public nature. According to MPEP 301.01:

Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b).

This means that once a reissue application is filed, its assignment records become publicly accessible, regardless of whether the original patent’s assignment records were previously confidential. This is because reissue applications are, by nature, related to already-issued patents and are subject to different rules regarding public disclosure.

The public accessibility of reissue application assignment records aligns with the general principle of transparency in the patent system, allowing interested parties to track ownership changes even during the reissue process. This can be particularly important for those monitoring patent rights in specific technological areas or for potential licensees or purchasers of patent rights.

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

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

The USPTO does not grant partial access to assignment documents. According to MPEP 301.01:

The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.

This policy ensures transparency and prevents selective disclosure of information. It’s important to note that this approach can have implications for documents that contain both public and potentially confidential information. For example:

• If a document covers both a trademark and a patent application, the entire document becomes public.
• If a document covers multiple patent applications, it becomes public as soon as any one of the applications is published or patented.

This policy underscores the importance of carefully considering what information is included in assignment documents, particularly when dealing with a mix of public and non-public intellectual property rights.

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

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

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

Access to assignment records for unpublished patent applications is restricted. The MPEP states:

“For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.”

To access these records, you must have written authority from one of the following:

• An inventor
• The applicant
• The assignee or an assignee of an undivided part interest
• A patent practitioner of record
• A person with written authority from any of the above

Alternatively, you must show that you are a bona fide prospective or actual purchaser, mortgagee, or licensee of the application.

Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:

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

This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.

For more information on oath or declaration, visit: oath or declaration.

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

Yes, a patent application can be assigned before it is filed. This is known as an assignment of future rights. MPEP 301 states:

“An assignment of an application can be made before the application is filed. See 37 CFR 3.21.”

However, it’s important to note that the assignment document should clearly identify the invention and the application to be filed. Once the application is filed, it’s advisable to record the assignment with the USPTO to ensure proper documentation of ownership.

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

For more information on USPTO, visit: USPTO.

Yes, all patent assignment records are publicly accessible. MPEP 301.01 clearly states:

‘The assignment records of patents and applications are open to public inspection.’

This means that anyone can access these records, which include:

• Assignment documents
• Digests of assignments
• Indexes of patent assignments

The public nature of these records ensures transparency in patent ownership and transfers. However, it’s important to note that while the records are public, obtaining copies may require payment of a fee as specified in 37 CFR 1.19(b)(3).

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

According to MPEP 301:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

The MPEP further advises:

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

To obtain these records:

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

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

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

For more information on NARA, visit: NARA.

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

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

However, it’s important to note that:

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

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

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

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

In contrast, licensing is described as:

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

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

The MPEP distinguishes between assignments and licenses in patent law:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The database typically includes:

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

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

The MPEP outlines two main types of patent ownership:

1. Individual ownership: ‘An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property.’
2. Joint ownership: ‘Multiple parties may together own the entire right, title and interest of the patent property.’ This can occur in several scenarios:

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

Understanding these ownership types is crucial for managing patent rights and making decisions about assignments or licenses.

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.

According to MPEP 301, patents have the attributes of personal property. The MPEP states:

’35 U.S.C. 261 Ownership; assignment. Subject to the provisions of this title, patents shall have the attributes of personal property.’

This means that patents can be bought, sold, licensed, or transferred like other forms of property. However, it’s important to note that owning a patent doesn’t necessarily grant the right to practice the invention, as other legal considerations may apply.

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

For more information on personal property, visit: personal property.

Patent ownership can be transferred through an assignment. According to 35 U.S.C. 261, assignments of patent applications, patents, or any interest therein must be in writing. The MPEP defines an assignment as:

‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….’

An assignment transfers the entire ownership interest or a percentage of that interest in the patent or application. It must include the entirety of the bundle of rights associated with the ownership interest.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

How does the USPTO handle confidential patent assignment information?

The USPTO generally treats patent assignment records as public information. However, there are provisions for handling confidential information within these records. MPEP 301.01 states:

“Assignments and other documents affecting title to applications, patents, and registrations that are recorded in the USPTO are generally open to public inspection. Only documents that are sealed as provided in 37 CFR 1.14 or otherwise not open to public inspection are not available for public inspection.”

If a document contains sensitive information that should not be publicly disclosed, the parties involved can:

• Redact confidential information before submitting the document for recordation
• Request that certain documents be sealed under 37 CFR 1.14
• Submit separate public and non-public versions of documents when necessary

It’s important to note that the decision to seal documents is at the discretion of the USPTO and is generally limited to specific circumstances outlined in the regulations.

How does the USPTO handle changes in ownership of patents?

The USPTO handles changes in ownership of patents through a process of recording assignments. According to MPEP 301:

“The assignment of a patent, or patent application, is the transfer of the entire right, title and interest therein. An assignment of an application may be made before the application is filed or after it is filed.”

When a change in ownership occurs:

• The new owner must record the assignment with the USPTO
• This recording serves as public notice of the transfer
• It helps maintain clear records of patent ownership

The USPTO maintains these records and updates them as new assignments are recorded.

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

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

The Patent and Trademark Office (PTO) generally does not directly handle patent ownership disputes. According to MPEP 301:

The Patent and Trademark Office is not the forum for resolving patent ownership disputes. Such disputes are to be settled by the parties involved, outside the Patent and Trademark Office.

If there’s a dispute over ownership, the PTO will typically continue to recognize the owner of record until a court order or other legal document resolving the dispute is presented. Parties involved in ownership disputes should seek legal counsel and resolve the matter through appropriate legal channels.

How does joint ownership work for patents?

Joint ownership in patents occurs when two or more parties share ownership rights. The MPEP 301 provides guidance on this:

‘In the case of joint owners, each joint owner has the right to make, use, offer for sale, and sell the patented invention without the consent of and without accounting to the other owners.’

This means that each joint owner has full rights to use and profit from the patent independently, without needing permission from the other owners. However, this can lead to complications, especially in licensing or selling the patent, as all joint owners typically need to agree on such actions. It’s often advisable for joint owners to have a written agreement outlining their rights and responsibilities.

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

For more information on patent rights, visit: 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.

To request copies of patent assignment records, follow these steps:

1. For records after May 1, 1957: Contact the USPTO and pay the fee set forth in 37 CFR 1.19.
2. For records before May 1, 1957: Contact the National Archives and Records Administration (NARA) directly.
3. For recent records: Check the USPTO website for online availability.

When requesting a copy, the MPEP advises: “An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded.” Failure to provide this information may result in additional charges.

The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:

‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’

For applications that are not open to the public, the process is more restricted:

‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’

The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.

Patents and patent applications can be assigned through a written instrument. The MPEP 301 states:

‘Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’

This means that patent rights can be transferred from one party to another through a written document. The assignment must be recorded with the USPTO to be effective against subsequent purchasers or mortgagees.

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

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

Patent assignments can be recorded with the USPTO in two ways:

1. In the assignment records: This is done as provided in 37 CFR Part 3. Recording provides public notice of the assignment but does not determine its validity.
2. In the file of a patent application or patent: This may be necessary for the assignee to take action in the application or patent proceeding.

For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.

It’s important to note that recording an assignment in the USPTO’s assignment records does not automatically allow the assignee to take action in a patent proceeding. Additional steps may be required as outlined in MPEP § 325 for applications filed on or after September 16, 2012, or MPEP § 324 for earlier applications.

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

There are two ways to make a patent assignment of record with the USPTO:

1. Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
2. Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.

For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.

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.

The MPEP outlines two ways to make an assignment of record with the USPTO:

1. Recording in the USPTO assignment records: ‘An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment.’
2. Filing in a specific application or patent file: ‘An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding).’

The MPEP notes: ‘Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.’

It’s important to understand the differences between these methods and their respective purposes in patent proceedings.

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.

The USPTO makes assignment records accessible to the public in several ways, as described in 37 CFR 1.12:

1. Separate assignment records for patents and trademarks are maintained and are open to public inspection.
2. Assignment records, digests, and indexes for patents are available on the USPTO website.
3. Images of assignment documents recorded from June 1998 onwards are viewable on the Office website.
4. For earlier records, the public can place an order to view images.

The MPEP notes: ‘The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.’

However, documents relating only to pending unpublished applications are not open to public inspection.

The handling of assignment records for related patent applications, such as divisional, continuation, or continuation-in-part applications, is addressed in MPEP 301.01. The key point is:

If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.

This policy has several implications:

• Once a patent is granted on a related application, the assignment records of the parent application become publicly accessible.
• This applies even if the parent application was previously unpublished or abandoned.
• The public accessibility extends to all assignment records in the chain of related applications leading to the granted patent.

This approach ensures transparency in the ownership history of patented inventions, allowing interested parties to trace the chain of title through related applications. It’s important for applicants and assignees to be aware of this when considering their IP strategy and the potential disclosure of ownership information for related applications.

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

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

Assignment records for reissue applications are treated differently from regular patent applications due to their public nature. According to MPEP 301.01:

Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b).

This means that once a reissue application is filed, its assignment records become publicly accessible, regardless of whether the original patent’s assignment records were previously confidential. This is because reissue applications are, by nature, related to already-issued patents and are subject to different rules regarding public disclosure.

The public accessibility of reissue application assignment records aligns with the general principle of transparency in the patent system, allowing interested parties to track ownership changes even during the reissue process. This can be particularly important for those monitoring patent rights in specific technological areas or for potential licensees or purchasers of patent rights.

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

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

The USPTO does not grant partial access to assignment documents. According to MPEP 301.01:

The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.

This policy ensures transparency and prevents selective disclosure of information. It’s important to note that this approach can have implications for documents that contain both public and potentially confidential information. For example:

• If a document covers both a trademark and a patent application, the entire document becomes public.
• If a document covers multiple patent applications, it becomes public as soon as any one of the applications is published or patented.

This policy underscores the importance of carefully considering what information is included in assignment documents, particularly when dealing with a mix of public and non-public intellectual property rights.

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

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

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

Access to assignment records for unpublished patent applications is restricted. The MPEP states:

“For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.”

To access these records, you must have written authority from one of the following:

• An inventor
• The applicant
• The assignee or an assignee of an undivided part interest
• A patent practitioner of record
• A person with written authority from any of the above

Alternatively, you must show that you are a bona fide prospective or actual purchaser, mortgagee, or licensee of the application.

Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:

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

This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.

For more information on oath or declaration, visit: oath or declaration.

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

Yes, a patent application can be assigned before it is filed. This is known as an assignment of future rights. MPEP 301 states:

“An assignment of an application can be made before the application is filed. See 37 CFR 3.21.”

However, it’s important to note that the assignment document should clearly identify the invention and the application to be filed. Once the application is filed, it’s advisable to record the assignment with the USPTO to ensure proper documentation of ownership.

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

For more information on USPTO, visit: USPTO.

Yes, all patent assignment records are publicly accessible. MPEP 301.01 clearly states:

‘The assignment records of patents and applications are open to public inspection.’

This means that anyone can access these records, which include:

• Assignment documents
• Digests of assignments
• Indexes of patent assignments

The public nature of these records ensures transparency in patent ownership and transfers. However, it’s important to note that while the records are public, obtaining copies may require payment of a fee as specified in 37 CFR 1.19(b)(3).

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

According to MPEP 301:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

The MPEP further advises:

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

To obtain these records:

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

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

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

For more information on NARA, visit: NARA.

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

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

However, it’s important to note that:

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

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

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

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

In contrast, licensing is described as:

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

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

The MPEP distinguishes between assignments and licenses in patent law:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The database typically includes:

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

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

The MPEP outlines two main types of patent ownership:

1. Individual ownership: ‘An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property.’
2. Joint ownership: ‘Multiple parties may together own the entire right, title and interest of the patent property.’ This can occur in several scenarios:

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

Understanding these ownership types is crucial for managing patent rights and making decisions about assignments or licenses.

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.

According to MPEP 301, patents have the attributes of personal property. The MPEP states:

’35 U.S.C. 261 Ownership; assignment. Subject to the provisions of this title, patents shall have the attributes of personal property.’

This means that patents can be bought, sold, licensed, or transferred like other forms of property. However, it’s important to note that owning a patent doesn’t necessarily grant the right to practice the invention, as other legal considerations may apply.

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

For more information on personal property, visit: personal property.

Patent ownership can be transferred through an assignment. According to 35 U.S.C. 261, assignments of patent applications, patents, or any interest therein must be in writing. The MPEP defines an assignment as:

‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….’

An assignment transfers the entire ownership interest or a percentage of that interest in the patent or application. It must include the entirety of the bundle of rights associated with the ownership interest.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

How does the USPTO handle confidential patent assignment information?

The USPTO generally treats patent assignment records as public information. However, there are provisions for handling confidential information within these records. MPEP 301.01 states:

“Assignments and other documents affecting title to applications, patents, and registrations that are recorded in the USPTO are generally open to public inspection. Only documents that are sealed as provided in 37 CFR 1.14 or otherwise not open to public inspection are not available for public inspection.”

If a document contains sensitive information that should not be publicly disclosed, the parties involved can:

• Redact confidential information before submitting the document for recordation
• Request that certain documents be sealed under 37 CFR 1.14
• Submit separate public and non-public versions of documents when necessary

It’s important to note that the decision to seal documents is at the discretion of the USPTO and is generally limited to specific circumstances outlined in the regulations.

How does the USPTO handle changes in ownership of patents?

The USPTO handles changes in ownership of patents through a process of recording assignments. According to MPEP 301:

“The assignment of a patent, or patent application, is the transfer of the entire right, title and interest therein. An assignment of an application may be made before the application is filed or after it is filed.”

When a change in ownership occurs:

• The new owner must record the assignment with the USPTO
• This recording serves as public notice of the transfer
• It helps maintain clear records of patent ownership

The USPTO maintains these records and updates them as new assignments are recorded.

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

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

The Patent and Trademark Office (PTO) generally does not directly handle patent ownership disputes. According to MPEP 301:

The Patent and Trademark Office is not the forum for resolving patent ownership disputes. Such disputes are to be settled by the parties involved, outside the Patent and Trademark Office.

If there’s a dispute over ownership, the PTO will typically continue to recognize the owner of record until a court order or other legal document resolving the dispute is presented. Parties involved in ownership disputes should seek legal counsel and resolve the matter through appropriate legal channels.

How does joint ownership work for patents?

Joint ownership in patents occurs when two or more parties share ownership rights. The MPEP 301 provides guidance on this:

‘In the case of joint owners, each joint owner has the right to make, use, offer for sale, and sell the patented invention without the consent of and without accounting to the other owners.’

This means that each joint owner has full rights to use and profit from the patent independently, without needing permission from the other owners. However, this can lead to complications, especially in licensing or selling the patent, as all joint owners typically need to agree on such actions. It’s often advisable for joint owners to have a written agreement outlining their rights and responsibilities.

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

For more information on patent rights, visit: 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.

To request copies of patent assignment records, follow these steps:

1. For records after May 1, 1957: Contact the USPTO and pay the fee set forth in 37 CFR 1.19.
2. For records before May 1, 1957: Contact the National Archives and Records Administration (NARA) directly.
3. For recent records: Check the USPTO website for online availability.

When requesting a copy, the MPEP advises: “An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded.” Failure to provide this information may result in additional charges.

The process for obtaining copies of assignment records for pending or abandoned applications depends on whether the application is open to the public. The MPEP states:

‘Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public.’

For applications that are not open to the public, the process is more restricted:

‘For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.’

The required written authority varies depending on the application filing date. For applications filed on or after September 16, 2012, it must come from an inventor, applicant, assignee, patent practitioner of record, or someone with written authority from these parties.

Patents and patent applications can be assigned through a written instrument. The MPEP 301 states:

‘Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’

This means that patent rights can be transferred from one party to another through a written document. The assignment must be recorded with the USPTO to be effective against subsequent purchasers or mortgagees.

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

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

Patent assignments can be recorded with the USPTO in two ways:

1. In the assignment records: This is done as provided in 37 CFR Part 3. Recording provides public notice of the assignment but does not determine its validity.
2. In the file of a patent application or patent: This may be necessary for the assignee to take action in the application or patent proceeding.

For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.

It’s important to note that recording an assignment in the USPTO’s assignment records does not automatically allow the assignee to take action in a patent proceeding. Additional steps may be required as outlined in MPEP § 325 for applications filed on or after September 16, 2012, or MPEP § 324 for earlier applications.

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

There are two ways to make a patent assignment of record with the USPTO:

1. Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
2. Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.

For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.

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.

The MPEP outlines two ways to make an assignment of record with the USPTO:

1. Recording in the USPTO assignment records: ‘An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment.’
2. Filing in a specific application or patent file: ‘An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding).’

The MPEP notes: ‘Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.’

It’s important to understand the differences between these methods and their respective purposes in patent proceedings.

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.

The USPTO makes assignment records accessible to the public in several ways, as described in 37 CFR 1.12:

1. Separate assignment records for patents and trademarks are maintained and are open to public inspection.
2. Assignment records, digests, and indexes for patents are available on the USPTO website.
3. Images of assignment documents recorded from June 1998 onwards are viewable on the Office website.
4. For earlier records, the public can place an order to view images.

The MPEP notes: ‘The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.’

However, documents relating only to pending unpublished applications are not open to public inspection.

The handling of assignment records for related patent applications, such as divisional, continuation, or continuation-in-part applications, is addressed in MPEP 301.01. The key point is:

If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.

This policy has several implications:

• Once a patent is granted on a related application, the assignment records of the parent application become publicly accessible.
• This applies even if the parent application was previously unpublished or abandoned.
• The public accessibility extends to all assignment records in the chain of related applications leading to the granted patent.

This approach ensures transparency in the ownership history of patented inventions, allowing interested parties to trace the chain of title through related applications. It’s important for applicants and assignees to be aware of this when considering their IP strategy and the potential disclosure of ownership information for related applications.

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

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

Assignment records for reissue applications are treated differently from regular patent applications due to their public nature. According to MPEP 301.01:

Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b).

This means that once a reissue application is filed, its assignment records become publicly accessible, regardless of whether the original patent’s assignment records were previously confidential. This is because reissue applications are, by nature, related to already-issued patents and are subject to different rules regarding public disclosure.

The public accessibility of reissue application assignment records aligns with the general principle of transparency in the patent system, allowing interested parties to track ownership changes even during the reissue process. This can be particularly important for those monitoring patent rights in specific technological areas or for potential licensees or purchasers of patent rights.

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

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

The USPTO does not grant partial access to assignment documents. According to MPEP 301.01:

The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.

This policy ensures transparency and prevents selective disclosure of information. It’s important to note that this approach can have implications for documents that contain both public and potentially confidential information. For example:

• If a document covers both a trademark and a patent application, the entire document becomes public.
• If a document covers multiple patent applications, it becomes public as soon as any one of the applications is published or patented.

This policy underscores the importance of carefully considering what information is included in assignment documents, particularly when dealing with a mix of public and non-public intellectual property rights.

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

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

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

Access to assignment records for unpublished patent applications is restricted. The MPEP states:

“For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14, information related thereto is only obtainable upon a proper showing of written authority.”

To access these records, you must have written authority from one of the following:

• An inventor
• The applicant
• The assignee or an assignee of an undivided part interest
• A patent practitioner of record
• A person with written authority from any of the above

Alternatively, you must show that you are a bona fide prospective or actual purchaser, mortgagee, or licensee of the application.

Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:

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

This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.

For more information on oath or declaration, visit: oath or declaration.

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

Yes, a patent application can be assigned before it is filed. This is known as an assignment of future rights. MPEP 301 states:

“An assignment of an application can be made before the application is filed. See 37 CFR 3.21.”

However, it’s important to note that the assignment document should clearly identify the invention and the application to be filed. Once the application is filed, it’s advisable to record the assignment with the USPTO to ensure proper documentation of ownership.

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

For more information on USPTO, visit: USPTO.

Yes, all patent assignment records are publicly accessible. MPEP 301.01 clearly states:

‘The assignment records of patents and applications are open to public inspection.’

This means that anyone can access these records, which include:

• Assignment documents
• Digests of assignments
• Indexes of patent assignments

The public nature of these records ensures transparency in patent ownership and transfers. However, it’s important to note that while the records are public, obtaining copies may require payment of a fee as specified in 37 CFR 1.19(b)(3).