Patent Law FAQ

Document legibility is crucial when submitting patent assignments because:

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

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

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

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

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

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

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

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

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

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

To record a document:

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

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

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

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

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

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

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

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

For more information on licenses, visit: licenses.

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

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

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

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

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

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

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

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

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

Types of documents that can be recorded include:

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

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

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

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

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

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

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

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

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

For more information on USPTO, visit: USPTO.

What is the purpose of recording patent assignment documents?

Recording patent assignment documents serves several important purposes:

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

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

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

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

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

Recording an assignment with the USPTO serves several important purposes:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Recording and registering a patent assignment are two distinct processes:

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

When submitting an extract:

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

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

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

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

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

To correct the error:

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

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

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

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

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

To correct an error, you need to submit:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

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

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

As stated in MPEP 302.10: “Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.”

What happens if an assignment document is not recorded at the USPTO?

If an assignment document is not recorded at the USPTO, it can have significant legal implications. According to MPEP 302:

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

In other words, failing to record an assignment within the specified timeframe can render it invalid against subsequent purchasers or mortgagees who were unaware of the previous assignment. This highlights the importance of timely recording assignments to protect the rights of assignees.

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

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

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

For more information on USPTO, visit: USPTO.

What happens if an assignment document is not legible for recording?

If an assignment document is not legible for recording, it will be rejected by the USPTO. According to MPEP 302.01, “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” If a document is rejected due to legibility issues, the USPTO will notify the person who submitted the document, and they will need to resubmit a legible copy for recording.

What happens if an assignment document is not a copy when submitted for recording?

If an assignment document submitted for recording is not a copy, it will not be accepted for recording. The MPEP clearly states: The Assignment Division will not accept an original assignment document because it becomes part of the USPTO permanent records. This is to protect the original document and ensure that the USPTO maintains proper records. If you submit an original document, it will be returned to you unrecorded, and you will need to submit a copy instead.

To ensure your assignment is properly recorded, always submit a legible copy of the original assignment document. This can be a photocopy or other reproduction of the original.

What happens if a patent assignment is not recorded with the USPTO?

Failing to record a patent assignment with the USPTO can have significant consequences:

• Lack of Constructive Notice: Third parties may not be aware of the ownership transfer.
• Potential Legal Issues: It may affect the assignee’s ability to enforce the patent or recover damages in infringement cases.
• Validity of Subsequent Transfers: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as valid, for purposes of recording, unless overcome by a showing that such assignment was fraudulently procured or is otherwise invalid.’

While recording is not mandatory for the assignment to be valid between the parties involved, it is highly recommended to protect the assignee’s rights and provide public notice of the ownership change.

For more information on USPTO, visit: USPTO.

According to 37 CFR 3.11, the following documents can be recorded with the USPTO related to patent assignments:

• Assignments of applications, patents, and registrations
• Other documents relating to interests in patent applications and patents
• Documents affecting title to applications, patents, or registrations
• Licenses, assignments, or other interests of the Government in or under patents or patent applications
• Joint research agreements or excerpts of joint research agreements

These documents must be accompanied by completed cover sheets as specified in 37 CFR 3.28 and 3.31.

According to 37 CFR 3.31, the cover sheet for patent assignments must contain:

• Name of the party conveying the interest
• Name and address of the party receiving the interest
• Description of the interest conveyed or transaction to be recorded
• Identification of the patent or application
• Name and address for correspondence
• Date of execution
• Signature of the party submitting the document

For joint research agreements, the cover sheet must also:

• Identify the document as a ‘joint research agreement’
• Indicate the name of the patent owner
• Indicate the names of other parties to the agreement
• Indicate the date the agreement was executed

The MPEP notes that Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

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

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

According to 37 CFR 3.26, assignment documents in languages other than English can be recorded with the USPTO, but specific requirements must be met. The MPEP states:

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

Key points for submitting non-English assignment documents:

• The original non-English document must be submitted
• An English translation of the document must be provided
• The translation must be signed by the individual who performed the translation
• Both the original document and the translation will be recorded

It’s important to ensure that the translation accurately reflects the content of the original document to avoid any legal complications or misunderstandings regarding the assignment.

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

To submit an assignment document electronically to the USPTO, the following requirements must be met:

• The document must be submitted via the Electronic Patent Assignment System (EPAS)
• An identified application or patent number must be included
• One cover sheet must be completed online to record a single transaction
• The signature on the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2)

As stated in 37 CFR 1.4(d)(2), an S-signature may be used, which consists of letters and/or numbers between forward slashes (e.g., /John Doe/). For patent practitioners, their registration number must also be included.

Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must:

• Identify the document as a ‘joint research agreement’ in the description of interest conveyed
• Indicate the name of the owner of the application or patent
• Indicate the name of each other party to the joint research agreement
• Indicate the date the joint research agreement was executed

The document submitted can be either the entire joint research agreement or an excerpt of it. As with other recorded documents, it must be accompanied by a completed cover sheet as specified in 37 CFR 3.28 and 3.31.

Remember that A patent cover sheet may not refer to trademark applications or registrations. Separate cover sheets must be used for patents and trademarks.

For more information on joint research agreement, visit: joint research agreement.

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

For more information on recordation, visit: recordation.

For paper submissions of patent assignment documents, the following requirements must be met:

• Submit either a copy of the original document or an extract of the original document.
• Use only one side of each page.
• Paper size must be either 8.5″ x 11″ or A4, with a 1-inch margin on all sides.
• Use flexible, strong white, non-shiny, and durable paper.

As stated in 37 CFR 3.24(b): “For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable.” This ensures that the document can be properly recorded and stored by the USPTO.

For electronic submissions of assignment documents, the following requirements apply:

• Either a copy of the original document or an extract of the original document may be submitted.
• Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format.
• When printed to paper size (8.5″ x 11″ or A4), the document must be legible with a 1-inch margin on all sides.

As stated in 37 CFR 3.24(a): “All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director.”

The fees for recording assignment documents are set forth in 37 CFR 3.41. According to the MPEP:

• For electronic submissions: The fee is currently $0 (as per 37 CFR 1.21(h)(1))
• For paper or facsimile submissions: The fee is set in 37 CFR 1.21(h)(2)

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

It’s important to note that a fee is required for each application, patent, and registration against which the document is recorded, as identified in the cover sheet. However, there are exceptions:

• No fee is required for documents required by Executive Order 9424 if the document does not affect title and is identified as such in the cover sheet
• The document must be either faxed, electronically submitted, or mailed in compliance with 37 CFR 3.27

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

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

The fees for recording a patent assignment depend on the submission method:

• Electronic submission via EPAS (Electronic Patent Assignment System): $0
• Paper or facsimile submission: See current fee schedule

As stated in MPEP 302.06: “If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2).”

It’s important to note that fees are subject to change. Always check the current USPTO fee schedule before submitting documents for recordation.

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

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

What are the consequences of submitting a poor-quality copy of an assignment document to the USPTO?

Submitting a poor-quality copy of an assignment document to the USPTO can lead to rejection of the recording request. The MPEP 302.01 clearly states that “Only copies of an original assignment document (with the exception of those submitted via EFS-Web) may be submitted for recording.” Furthermore, it emphasizes that “The copy must be legible, capable of reproduction and otherwise meet the usual requirements of documents for recording.” If a poor-quality copy is submitted:

• The recording request may be rejected
• The effective date of recordation could be delayed
• Additional fees may be incurred for resubmission
• There could be potential legal implications if the assignment is not properly recorded in a timely manner

To avoid these issues, always ensure that the copy submitted is of high quality and meets all USPTO requirements for legibility and reproducibility.

What are the consequences of failing to record a patent assignment with the USPTO?

Failing to record a patent assignment with the USPTO can have several important consequences:

• Lack of legal notice: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as notice to the world of the ownership of the patent.’ Without recording, third parties may not have legal notice of the assignment.
• Potential validity issues: In some cases, failure to record an assignment could affect the validity of subsequent actions taken by the assignee.
• Difficulties in enforcement: Unrecorded assignments may complicate patent enforcement efforts, as the assignee’s standing to sue could be challenged.
• Problems in future transactions: Lack of a clear chain of title can cause issues in future sales, licenses, or other transactions involving the patent.

While recording is not mandatory, it is highly recommended to protect the assignee’s rights and ensure a clear chain of title for the patent.

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

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

When preparing an assignment document for recording with the USPTO, follow these guidelines based on 37 CFR 3.24 and MPEP 302.01:

1. For electronic submissions:
   • Submit either a copy of the original document or an extract of it
   • Ensure the document is in Tagged Image File Format (TIFF) or another prescribed format
   • When printed, the document should be legible on 8.5 x 11 inch or A4 paper with 1-inch margins on all sides
2. For paper or facsimile submissions:
   • Submit a copy of the original document or an extract (not the original)
   • Use only one side of each page
   • Use 8.5 x 11 inch or A4 paper with 1-inch margins on all sides
   • For paper submissions, use flexible, strong white, non-shiny, and durable paper
3. Ensure the document is legible, as the recorded document will only be as clear as the submitted copy
4. Include a completed cover sheet as specified in 37 CFR 3.28 and 3.31

MPEP 302.01 states: “The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document.” Remember, the document submitted for recordation will not be returned, so do not submit original documents.

According to 37 CFR 3.21 and MPEP 302.03, a patent or application should be identified in an assignment document as follows:

• For a patent: Use the patent number
• For a national patent application: Use the application number (series code and serial number, e.g., 07/123,456)
• For an international patent application designating the U.S.: Use the international application number (e.g., PCT/US2012/012345)
• For an international design application designating the U.S.: Use either the international registration number or the U.S. application number

For applications not yet filed or without an assigned number:

• For a non-provisional application: Identify by inventor name(s) and the title of the invention
• For a provisional application: Identify by inventor name(s) and the title of the invention

MPEP 302.03 suggests: “It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is: ‘I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.'”

To record a joint research agreement with the USPTO, follow these steps based on 37 CFR 3.11(c) and 37 CFR 3.31(g):

1. Prepare either a copy of the joint research agreement or an excerpt of it.
2. Complete a cover sheet that includes:
   • Identification of the document as a “joint research agreement” in the space for describing the interest conveyed
   • The name of the owner of the application or patent
   • The name of each other party to the joint research agreement
   • The date the joint research agreement was executed
3. Submit the document and cover sheet to the USPTO for recordation.

As stated in MPEP 302.07: “If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a ‘joint research agreement’ (in the space provided for the description of the interest conveyed if using Form PTO-1595).”

According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it:

1. Prepare a written document signed by the assignee.
2. State the name and address of a person residing within the United States who may be served process or notice of proceedings affecting the patent or rights under it.
3. Submit this document to the USPTO as a separate paper from any assignment document.
4. Clearly label the document as “Designation of Domestic Representative.”
5. Ensure the document is signed in accordance with 37 CFR 1.33(b).

As stated in MPEP 302.04: “The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.”

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

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

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

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

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

How does the USPTO handle incorrect or erroneous assignment recordings?

The USPTO has a specific process for handling incorrect or erroneous assignment recordings:

1. No expungement: The USPTO does not expunge or remove assignment documents once they are recorded.
2. Corrective documents: Parties can record corrective documents to address errors or provide clarifications.
3. Maintaining integrity: This approach preserves the integrity of the assignment records.

As stated in MPEP 302: ‘Even if a recorded document is subsequently found to be invalid, the recording will be maintained in the assignment records and the assignment records will not be expunged.’ This policy ensures a complete historical record of all recorded documents.

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

How does the USPTO handle assignment documents that contain errors?

The USPTO has procedures in place for handling assignment documents with errors:

• Minor errors: The USPTO may correct minor errors in assignment documents without requiring a new submission. As stated in MPEP 302: ‘Minor corrections to documents recorded pursuant to 37 CFR 3.11 will be made by the Assignment Division, provided that the corrections do not involve the re-recording of the entire assignment document.’
• Major errors: For significant errors, a new corrected document must be submitted. The MPEP notes: ‘Other corrections may be made only by the submission of a new document.’
• Erroneous recording: If an assignment is erroneously recorded, the USPTO will correct its records upon notification.

It’s important to review assignment documents carefully before submission to avoid delays and potential legal issues.

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

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

To record an assignment document with the USPTO, you must:

• Submit a copy of the original assignment document
• Include a completed cover sheet (Form PTO-1595 or equivalent)
• Pay the required recording fee

The cover sheet must contain key information like the names of the parties, description of the interest conveyed, and patent/application numbers affected. As stated in MPEP 302.07: “Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28.”

Documents can be submitted electronically via EPAS, by mail, or by fax. Electronic submission is recommended as it has a $0 fee.

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

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

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

For more information on USPTO, visit: USPTO.

To record a joint research agreement (JRA) with the USPTO, follow these steps:

1. Prepare the JRA document or an excerpt of it
2. Complete a cover sheet, clearly identifying the document as a “joint research agreement”
3. Submit the document and cover sheet to the USPTO

As stated in MPEP 302.07: “If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a ‘joint research agreement’.”

The cover sheet for a JRA must include:

• The name of the owner of the application or patent
• The name of each other party to the joint research agreement
• The date the joint research agreement was executed

JRAs can be submitted electronically via EPAS, by mail, or by fax, following the same procedures as other assignment documents.

For more information on joint research agreement, visit: joint research agreement.

Recording a government interest in a patent requires special procedures:

1. Prepare the document establishing the government interest
2. Complete a patent cover sheet, indicating it relates to a government interest
3. Submit the document and cover sheet to the USPTO

As stated in MPEP 302.07: “Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.”

Key points for government interest recordations:

• No fee is required if the document doesn’t affect title and is properly identified
• These documents are recorded in a special Departmental Register
• Some government documents may be recorded in a Secret Register with restricted access

Government agencies should follow Executive Order 9424 which requires prompt forwarding of government interests in patents for recording.

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

According to 37 CFR 3.21, a patent assignment must identify the patent by patent number. For patent applications:

• National applications: Identify by application number (series code and serial number)
• International applications designating the US: Identify by international application number
• International design applications designating the US: Identify by international registration number or US application number

If the assignment is executed before filing but after the application is executed, it must identify the application by inventor name(s) and invention title. For provisional applications not yet filed, identify by inventor name(s) and invention title.

The MPEP suggests including language like: I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.

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

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

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

The USPTO allows electronic submission of assignment documents through the Electronic Patent Assignment System (EPAS). According to the MPEP:

• Visit http://epas.uspto.gov for the EPAS system
• Include an identified application or patent number
• Complete one online cover sheet for a single transaction

For electronic submissions, the signature must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2). This typically involves an S-signature between forward slashes (e.g., /John Smith/).

The MPEP notes: The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation.

The recordation date for electronic submissions is the date the complete transmission is received by the USPTO.

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

For more information on EPAS, visit: EPAS.

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

There are three main ways to submit a patent assignment document to the USPTO:

1. Mail: Documents can be mailed to the address specified in 37 CFR 3.27: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
2. Fax: Documents can be submitted via facsimile, as outlined in MPEP 302.09. However, certain documents cannot be faxed, such as assignments submitted with new applications.
3. Electronic Submission: Documents can be submitted electronically through the Electronic Patent Assignment System (EPAS) as described in MPEP 302.10.

Each method has specific requirements and limitations, so it’s important to review the relevant MPEP sections or consult the USPTO website for detailed instructions.

Foreign assignees can designate a domestic representative for USPTO correspondence as outlined in 35 U.S.C. 293 and 37 CFR 3.61. The MPEP states:

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative.

Key points for this designation:

• It should be submitted as a separate paper from any assignment document
• It should be clearly labeled ‘Designation of Domestic Representative’
• It will be entered into the record of the appropriate application or patent file
• It must be signed in accordance with 37 CFR 1.33(b)
• It should state the name and address of a person residing within the United States

This designation allows for service of process or notice of proceedings affecting the patent or rights under the patent to be served on the designated representative.

For more information on domestic representative, visit: domestic representative.

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

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

No, you should not submit original documents for recording patent assignments. The USPTO explicitly states:

“The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317. The document submitted for recordation will not be returned to the submitter.”

It’s crucial to submit only copies of original documents, as the USPTO will not return the recorded documents. This ensures that you retain your original documents while still complying with the recording requirements.

Can I submit a photocopy or digital scan of my assignment document for USPTO recording?

Yes, you can submit a photocopy or digital scan of your assignment document for USPTO recording, as long as it’s a complete and legible copy. The MPEP 302.01 specifies: ‘The copy of the document to be recorded should be presented to the Office for recordation.’ This means that:

• Photocopies are acceptable
• Digital scans saved as PDF files are also acceptable
• The copy must be clear and readable
• All pages and attachments must be included

Remember, while you’re submitting a copy, it must accurately represent the original document in its entirety.

Yes, you can submit a patent assignment electronically through the USPTO’s Electronic Patent Assignment System (EPAS). This is the recommended method for several reasons:

• It’s free – there is no recordation fee for electronic submissions
• It’s fast – documents are processed more quickly
• It’s convenient – you can submit 24/7 from anywhere with internet access

As stated in MPEP 302.10: “Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS).”

To use EPAS, you’ll need to complete an online cover sheet and upload a copy of the assignment document. The signature on the electronic cover sheet must comply with USPTO regulations for electronic signatures.

For more information and to access EPAS, visit the USPTO EPAS website.

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

For more information on EPAS, visit: EPAS.

Can I submit a handwritten assignment document for recording at the USPTO?

While handwritten assignment documents are not explicitly prohibited, they are generally discouraged and may face challenges in the recording process. The MPEP 302.01 states that “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” Handwritten documents may not meet this standard, especially if the handwriting is not clear and easily readable. To ensure smooth processing and avoid potential rejection, it’s recommended to submit typed or printed assignment documents that are clearly legible and meet all USPTO requirements.

Can I record an assignment for a pending patent application?

Yes, you can record an assignment for a pending patent application. In fact, the USPTO encourages early recordation of assignments. According to MPEP 302:

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234).

To record an assignment for a pending application:

• Use the application number to identify the application
• Ensure all necessary parties have signed the assignment document
• Submit the assignment document along with the required cover sheet and fee to the USPTO

Early recordation can help establish clear ownership and facilitate future transactions or licensing agreements.

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

Can foreign language assignment documents be recorded at the USPTO?

Yes, foreign language assignment documents can be recorded at the USPTO, but they must be accompanied by an English translation. The MPEP 302 states:

“Unless an assignment is in a language other than English, the Office may rely on the assignment document (or a copy thereof) as filed.”

If the assignment is in a foreign language, you must provide:

• The original foreign language document
• An English language translation
• A statement verifying that the translation is accurate

This ensures that the USPTO can properly review and record the assignment, maintaining accurate ownership records for patents and patent applications.

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

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

For more information on USPTO, visit: USPTO.

Can electronic copies of assignment documents be submitted for recording?

Yes, electronic copies of assignment documents can be submitted for recording at the USPTO. The MPEP 302.01 states: Any legible copies, including facsimile transmissions and computer generated copies, of original assignment documents will be acceptable for recording.

This means you can submit:

• Scanned copies of original documents
• Faxed copies
• Computer-generated copies

The key requirement is that the electronic copy must be legible. Ensure that all text, signatures, and dates are clearly visible in the electronic copy. You can submit these electronic copies through the USPTO’s Electronic Patent Assignment System (EPAS) for efficient processing.

Can assignment documents be submitted electronically to the USPTO?

Yes, assignment documents can be submitted electronically to the USPTO. The MPEP 302 states:

‘Assignment documents can be submitted to the Office in paper or electronically.’

The USPTO provides an electronic system for submitting assignment documents, which can be more convenient and efficient than paper submissions. However, it’s important to note that regardless of the submission method, the documents must meet all legal requirements and be properly executed to be considered valid.

For electronic submissions, users can utilize the Electronic Patent Assignment System (EPAS) provided by the USPTO. This system allows for quick and secure submission of assignment documents directly to the USPTO’s database.

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

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

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

Can an assignment be recorded electronically with the USPTO?

Yes, assignments can be recorded electronically with the USPTO. The MPEP 302 states:

“The USPTO provides for the electronic filing of patent assignment documents through the Electronic Patent Assignment System (EPAS).”

Electronic filing offers several advantages:

• Faster processing times
• Immediate confirmation of receipt
• Reduced risk of errors in data entry
• 24/7 accessibility

To use EPAS, users must have a USPTO.gov account and follow the specific guidelines for electronic submission. For detailed instructions, visit the Electronic Patent Assignment System (EPAS) on the USPTO website.

For more information on electronic filing, visit: electronic filing.

For more information on EPAS, visit: EPAS.

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

For more information on USPTO, visit: USPTO.

Can a patent assignment be recorded electronically?

Yes, patent assignments can be recorded electronically. The USPTO provides an electronic system for recording assignment documents. According to MPEP 302:

‘Assignment documents can be submitted for recordation via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://www.uspto.gov/patents-application-process/documenting-patent-ownership/epas-electronic-patent-assignment-system for additional information regarding EPAS.’

Electronic submission through EPAS is often faster and more convenient than paper submissions. However, it’s important to ensure that all necessary information and signatures are included in the electronic submission.

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

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

Document legibility is crucial when submitting patent assignments because:

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

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

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

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

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

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

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

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

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

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

To record a document:

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

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

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

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

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

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

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

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

For more information on licenses, visit: licenses.

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

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

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

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

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

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

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

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

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

Types of documents that can be recorded include:

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

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

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

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

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

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

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

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

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

For more information on USPTO, visit: USPTO.

What is the purpose of recording patent assignment documents?

Recording patent assignment documents serves several important purposes:

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

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

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

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

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

Recording an assignment with the USPTO serves several important purposes:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Recording and registering a patent assignment are two distinct processes:

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

When submitting an extract:

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

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

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

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

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

To correct the error:

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

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

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

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

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

To correct an error, you need to submit:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

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

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

As stated in MPEP 302.10: “Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.”

What happens if an assignment document is not recorded at the USPTO?

If an assignment document is not recorded at the USPTO, it can have significant legal implications. According to MPEP 302:

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

In other words, failing to record an assignment within the specified timeframe can render it invalid against subsequent purchasers or mortgagees who were unaware of the previous assignment. This highlights the importance of timely recording assignments to protect the rights of assignees.

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

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

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

For more information on USPTO, visit: USPTO.

What happens if an assignment document is not legible for recording?

If an assignment document is not legible for recording, it will be rejected by the USPTO. According to MPEP 302.01, “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” If a document is rejected due to legibility issues, the USPTO will notify the person who submitted the document, and they will need to resubmit a legible copy for recording.

What happens if an assignment document is not a copy when submitted for recording?

If an assignment document submitted for recording is not a copy, it will not be accepted for recording. The MPEP clearly states: The Assignment Division will not accept an original assignment document because it becomes part of the USPTO permanent records. This is to protect the original document and ensure that the USPTO maintains proper records. If you submit an original document, it will be returned to you unrecorded, and you will need to submit a copy instead.

To ensure your assignment is properly recorded, always submit a legible copy of the original assignment document. This can be a photocopy or other reproduction of the original.

What happens if a patent assignment is not recorded with the USPTO?

Failing to record a patent assignment with the USPTO can have significant consequences:

• Lack of Constructive Notice: Third parties may not be aware of the ownership transfer.
• Potential Legal Issues: It may affect the assignee’s ability to enforce the patent or recover damages in infringement cases.
• Validity of Subsequent Transfers: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as valid, for purposes of recording, unless overcome by a showing that such assignment was fraudulently procured or is otherwise invalid.’

While recording is not mandatory for the assignment to be valid between the parties involved, it is highly recommended to protect the assignee’s rights and provide public notice of the ownership change.

For more information on USPTO, visit: USPTO.

According to 37 CFR 3.11, the following documents can be recorded with the USPTO related to patent assignments:

• Assignments of applications, patents, and registrations
• Other documents relating to interests in patent applications and patents
• Documents affecting title to applications, patents, or registrations
• Licenses, assignments, or other interests of the Government in or under patents or patent applications
• Joint research agreements or excerpts of joint research agreements

These documents must be accompanied by completed cover sheets as specified in 37 CFR 3.28 and 3.31.

According to 37 CFR 3.31, the cover sheet for patent assignments must contain:

• Name of the party conveying the interest
• Name and address of the party receiving the interest
• Description of the interest conveyed or transaction to be recorded
• Identification of the patent or application
• Name and address for correspondence
• Date of execution
• Signature of the party submitting the document

For joint research agreements, the cover sheet must also:

• Identify the document as a ‘joint research agreement’
• Indicate the name of the patent owner
• Indicate the names of other parties to the agreement
• Indicate the date the agreement was executed

The MPEP notes that Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

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

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

According to 37 CFR 3.26, assignment documents in languages other than English can be recorded with the USPTO, but specific requirements must be met. The MPEP states:

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

Key points for submitting non-English assignment documents:

• The original non-English document must be submitted
• An English translation of the document must be provided
• The translation must be signed by the individual who performed the translation
• Both the original document and the translation will be recorded

It’s important to ensure that the translation accurately reflects the content of the original document to avoid any legal complications or misunderstandings regarding the assignment.

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

To submit an assignment document electronically to the USPTO, the following requirements must be met:

• The document must be submitted via the Electronic Patent Assignment System (EPAS)
• An identified application or patent number must be included
• One cover sheet must be completed online to record a single transaction
• The signature on the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2)

As stated in 37 CFR 1.4(d)(2), an S-signature may be used, which consists of letters and/or numbers between forward slashes (e.g., /John Doe/). For patent practitioners, their registration number must also be included.

Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must:

• Identify the document as a ‘joint research agreement’ in the description of interest conveyed
• Indicate the name of the owner of the application or patent
• Indicate the name of each other party to the joint research agreement
• Indicate the date the joint research agreement was executed

The document submitted can be either the entire joint research agreement or an excerpt of it. As with other recorded documents, it must be accompanied by a completed cover sheet as specified in 37 CFR 3.28 and 3.31.

Remember that A patent cover sheet may not refer to trademark applications or registrations. Separate cover sheets must be used for patents and trademarks.

For more information on joint research agreement, visit: joint research agreement.

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

For more information on recordation, visit: recordation.

For paper submissions of patent assignment documents, the following requirements must be met:

• Submit either a copy of the original document or an extract of the original document.
• Use only one side of each page.
• Paper size must be either 8.5″ x 11″ or A4, with a 1-inch margin on all sides.
• Use flexible, strong white, non-shiny, and durable paper.

As stated in 37 CFR 3.24(b): “For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable.” This ensures that the document can be properly recorded and stored by the USPTO.

For electronic submissions of assignment documents, the following requirements apply:

• Either a copy of the original document or an extract of the original document may be submitted.
• Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format.
• When printed to paper size (8.5″ x 11″ or A4), the document must be legible with a 1-inch margin on all sides.

As stated in 37 CFR 3.24(a): “All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director.”

The fees for recording assignment documents are set forth in 37 CFR 3.41. According to the MPEP:

• For electronic submissions: The fee is currently $0 (as per 37 CFR 1.21(h)(1))
• For paper or facsimile submissions: The fee is set in 37 CFR 1.21(h)(2)

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

It’s important to note that a fee is required for each application, patent, and registration against which the document is recorded, as identified in the cover sheet. However, there are exceptions:

• No fee is required for documents required by Executive Order 9424 if the document does not affect title and is identified as such in the cover sheet
• The document must be either faxed, electronically submitted, or mailed in compliance with 37 CFR 3.27

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

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

The fees for recording a patent assignment depend on the submission method:

• Electronic submission via EPAS (Electronic Patent Assignment System): $0
• Paper or facsimile submission: See current fee schedule

As stated in MPEP 302.06: “If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2).”

It’s important to note that fees are subject to change. Always check the current USPTO fee schedule before submitting documents for recordation.

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

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

What are the consequences of submitting a poor-quality copy of an assignment document to the USPTO?

Submitting a poor-quality copy of an assignment document to the USPTO can lead to rejection of the recording request. The MPEP 302.01 clearly states that “Only copies of an original assignment document (with the exception of those submitted via EFS-Web) may be submitted for recording.” Furthermore, it emphasizes that “The copy must be legible, capable of reproduction and otherwise meet the usual requirements of documents for recording.” If a poor-quality copy is submitted:

• The recording request may be rejected
• The effective date of recordation could be delayed
• Additional fees may be incurred for resubmission
• There could be potential legal implications if the assignment is not properly recorded in a timely manner

To avoid these issues, always ensure that the copy submitted is of high quality and meets all USPTO requirements for legibility and reproducibility.

What are the consequences of failing to record a patent assignment with the USPTO?

Failing to record a patent assignment with the USPTO can have several important consequences:

• Lack of legal notice: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as notice to the world of the ownership of the patent.’ Without recording, third parties may not have legal notice of the assignment.
• Potential validity issues: In some cases, failure to record an assignment could affect the validity of subsequent actions taken by the assignee.
• Difficulties in enforcement: Unrecorded assignments may complicate patent enforcement efforts, as the assignee’s standing to sue could be challenged.
• Problems in future transactions: Lack of a clear chain of title can cause issues in future sales, licenses, or other transactions involving the patent.

While recording is not mandatory, it is highly recommended to protect the assignee’s rights and ensure a clear chain of title for the patent.

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

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

When preparing an assignment document for recording with the USPTO, follow these guidelines based on 37 CFR 3.24 and MPEP 302.01:

1. For electronic submissions:
   • Submit either a copy of the original document or an extract of it
   • Ensure the document is in Tagged Image File Format (TIFF) or another prescribed format
   • When printed, the document should be legible on 8.5 x 11 inch or A4 paper with 1-inch margins on all sides
2. For paper or facsimile submissions:
   • Submit a copy of the original document or an extract (not the original)
   • Use only one side of each page
   • Use 8.5 x 11 inch or A4 paper with 1-inch margins on all sides
   • For paper submissions, use flexible, strong white, non-shiny, and durable paper
3. Ensure the document is legible, as the recorded document will only be as clear as the submitted copy
4. Include a completed cover sheet as specified in 37 CFR 3.28 and 3.31

MPEP 302.01 states: “The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document.” Remember, the document submitted for recordation will not be returned, so do not submit original documents.

According to 37 CFR 3.21 and MPEP 302.03, a patent or application should be identified in an assignment document as follows:

• For a patent: Use the patent number
• For a national patent application: Use the application number (series code and serial number, e.g., 07/123,456)
• For an international patent application designating the U.S.: Use the international application number (e.g., PCT/US2012/012345)
• For an international design application designating the U.S.: Use either the international registration number or the U.S. application number

For applications not yet filed or without an assigned number:

• For a non-provisional application: Identify by inventor name(s) and the title of the invention
• For a provisional application: Identify by inventor name(s) and the title of the invention

MPEP 302.03 suggests: “It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is: ‘I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.'”

To record a joint research agreement with the USPTO, follow these steps based on 37 CFR 3.11(c) and 37 CFR 3.31(g):

1. Prepare either a copy of the joint research agreement or an excerpt of it.
2. Complete a cover sheet that includes:
   • Identification of the document as a “joint research agreement” in the space for describing the interest conveyed
   • The name of the owner of the application or patent
   • The name of each other party to the joint research agreement
   • The date the joint research agreement was executed
3. Submit the document and cover sheet to the USPTO for recordation.

As stated in MPEP 302.07: “If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a ‘joint research agreement’ (in the space provided for the description of the interest conveyed if using Form PTO-1595).”

According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it:

1. Prepare a written document signed by the assignee.
2. State the name and address of a person residing within the United States who may be served process or notice of proceedings affecting the patent or rights under it.
3. Submit this document to the USPTO as a separate paper from any assignment document.
4. Clearly label the document as “Designation of Domestic Representative.”
5. Ensure the document is signed in accordance with 37 CFR 1.33(b).

As stated in MPEP 302.04: “The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.”

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

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

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

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

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

How does the USPTO handle incorrect or erroneous assignment recordings?

The USPTO has a specific process for handling incorrect or erroneous assignment recordings:

1. No expungement: The USPTO does not expunge or remove assignment documents once they are recorded.
2. Corrective documents: Parties can record corrective documents to address errors or provide clarifications.
3. Maintaining integrity: This approach preserves the integrity of the assignment records.

As stated in MPEP 302: ‘Even if a recorded document is subsequently found to be invalid, the recording will be maintained in the assignment records and the assignment records will not be expunged.’ This policy ensures a complete historical record of all recorded documents.

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

How does the USPTO handle assignment documents that contain errors?

The USPTO has procedures in place for handling assignment documents with errors:

• Minor errors: The USPTO may correct minor errors in assignment documents without requiring a new submission. As stated in MPEP 302: ‘Minor corrections to documents recorded pursuant to 37 CFR 3.11 will be made by the Assignment Division, provided that the corrections do not involve the re-recording of the entire assignment document.’
• Major errors: For significant errors, a new corrected document must be submitted. The MPEP notes: ‘Other corrections may be made only by the submission of a new document.’
• Erroneous recording: If an assignment is erroneously recorded, the USPTO will correct its records upon notification.

It’s important to review assignment documents carefully before submission to avoid delays and potential legal issues.

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

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

To record an assignment document with the USPTO, you must:

• Submit a copy of the original assignment document
• Include a completed cover sheet (Form PTO-1595 or equivalent)
• Pay the required recording fee

The cover sheet must contain key information like the names of the parties, description of the interest conveyed, and patent/application numbers affected. As stated in MPEP 302.07: “Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28.”

Documents can be submitted electronically via EPAS, by mail, or by fax. Electronic submission is recommended as it has a $0 fee.

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

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

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

For more information on USPTO, visit: USPTO.

To record a joint research agreement (JRA) with the USPTO, follow these steps:

1. Prepare the JRA document or an excerpt of it
2. Complete a cover sheet, clearly identifying the document as a “joint research agreement”
3. Submit the document and cover sheet to the USPTO

As stated in MPEP 302.07: “If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a ‘joint research agreement’.”

The cover sheet for a JRA must include:

• The name of the owner of the application or patent
• The name of each other party to the joint research agreement
• The date the joint research agreement was executed

JRAs can be submitted electronically via EPAS, by mail, or by fax, following the same procedures as other assignment documents.

For more information on joint research agreement, visit: joint research agreement.

Recording a government interest in a patent requires special procedures:

1. Prepare the document establishing the government interest
2. Complete a patent cover sheet, indicating it relates to a government interest
3. Submit the document and cover sheet to the USPTO

As stated in MPEP 302.07: “Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.”

Key points for government interest recordations:

• No fee is required if the document doesn’t affect title and is properly identified
• These documents are recorded in a special Departmental Register
• Some government documents may be recorded in a Secret Register with restricted access

Government agencies should follow Executive Order 9424 which requires prompt forwarding of government interests in patents for recording.

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

According to 37 CFR 3.21, a patent assignment must identify the patent by patent number. For patent applications:

• National applications: Identify by application number (series code and serial number)
• International applications designating the US: Identify by international application number
• International design applications designating the US: Identify by international registration number or US application number

If the assignment is executed before filing but after the application is executed, it must identify the application by inventor name(s) and invention title. For provisional applications not yet filed, identify by inventor name(s) and invention title.

The MPEP suggests including language like: I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.

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

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

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

The USPTO allows electronic submission of assignment documents through the Electronic Patent Assignment System (EPAS). According to the MPEP:

• Visit http://epas.uspto.gov for the EPAS system
• Include an identified application or patent number
• Complete one online cover sheet for a single transaction

For electronic submissions, the signature must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2). This typically involves an S-signature between forward slashes (e.g., /John Smith/).

The MPEP notes: The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation.

The recordation date for electronic submissions is the date the complete transmission is received by the USPTO.

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

For more information on EPAS, visit: EPAS.

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

There are three main ways to submit a patent assignment document to the USPTO:

1. Mail: Documents can be mailed to the address specified in 37 CFR 3.27: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
2. Fax: Documents can be submitted via facsimile, as outlined in MPEP 302.09. However, certain documents cannot be faxed, such as assignments submitted with new applications.
3. Electronic Submission: Documents can be submitted electronically through the Electronic Patent Assignment System (EPAS) as described in MPEP 302.10.

Each method has specific requirements and limitations, so it’s important to review the relevant MPEP sections or consult the USPTO website for detailed instructions.

Foreign assignees can designate a domestic representative for USPTO correspondence as outlined in 35 U.S.C. 293 and 37 CFR 3.61. The MPEP states:

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative.

Key points for this designation:

• It should be submitted as a separate paper from any assignment document
• It should be clearly labeled ‘Designation of Domestic Representative’
• It will be entered into the record of the appropriate application or patent file
• It must be signed in accordance with 37 CFR 1.33(b)
• It should state the name and address of a person residing within the United States

This designation allows for service of process or notice of proceedings affecting the patent or rights under the patent to be served on the designated representative.

For more information on domestic representative, visit: domestic representative.

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

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

No, you should not submit original documents for recording patent assignments. The USPTO explicitly states:

“The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317. The document submitted for recordation will not be returned to the submitter.”

It’s crucial to submit only copies of original documents, as the USPTO will not return the recorded documents. This ensures that you retain your original documents while still complying with the recording requirements.

Can I submit a photocopy or digital scan of my assignment document for USPTO recording?

Yes, you can submit a photocopy or digital scan of your assignment document for USPTO recording, as long as it’s a complete and legible copy. The MPEP 302.01 specifies: ‘The copy of the document to be recorded should be presented to the Office for recordation.’ This means that:

• Photocopies are acceptable
• Digital scans saved as PDF files are also acceptable
• The copy must be clear and readable
• All pages and attachments must be included

Remember, while you’re submitting a copy, it must accurately represent the original document in its entirety.

Yes, you can submit a patent assignment electronically through the USPTO’s Electronic Patent Assignment System (EPAS). This is the recommended method for several reasons:

• It’s free – there is no recordation fee for electronic submissions
• It’s fast – documents are processed more quickly
• It’s convenient – you can submit 24/7 from anywhere with internet access

As stated in MPEP 302.10: “Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS).”

To use EPAS, you’ll need to complete an online cover sheet and upload a copy of the assignment document. The signature on the electronic cover sheet must comply with USPTO regulations for electronic signatures.

For more information and to access EPAS, visit the USPTO EPAS website.

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

For more information on EPAS, visit: EPAS.

Can I submit a handwritten assignment document for recording at the USPTO?

While handwritten assignment documents are not explicitly prohibited, they are generally discouraged and may face challenges in the recording process. The MPEP 302.01 states that “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” Handwritten documents may not meet this standard, especially if the handwriting is not clear and easily readable. To ensure smooth processing and avoid potential rejection, it’s recommended to submit typed or printed assignment documents that are clearly legible and meet all USPTO requirements.

Can I record an assignment for a pending patent application?

Yes, you can record an assignment for a pending patent application. In fact, the USPTO encourages early recordation of assignments. According to MPEP 302:

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234).

To record an assignment for a pending application:

• Use the application number to identify the application
• Ensure all necessary parties have signed the assignment document
• Submit the assignment document along with the required cover sheet and fee to the USPTO

Early recordation can help establish clear ownership and facilitate future transactions or licensing agreements.

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

Can foreign language assignment documents be recorded at the USPTO?

Yes, foreign language assignment documents can be recorded at the USPTO, but they must be accompanied by an English translation. The MPEP 302 states:

“Unless an assignment is in a language other than English, the Office may rely on the assignment document (or a copy thereof) as filed.”

If the assignment is in a foreign language, you must provide:

• The original foreign language document
• An English language translation
• A statement verifying that the translation is accurate

This ensures that the USPTO can properly review and record the assignment, maintaining accurate ownership records for patents and patent applications.

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

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

For more information on USPTO, visit: USPTO.

Can electronic copies of assignment documents be submitted for recording?

Yes, electronic copies of assignment documents can be submitted for recording at the USPTO. The MPEP 302.01 states: Any legible copies, including facsimile transmissions and computer generated copies, of original assignment documents will be acceptable for recording.

This means you can submit:

• Scanned copies of original documents
• Faxed copies
• Computer-generated copies

The key requirement is that the electronic copy must be legible. Ensure that all text, signatures, and dates are clearly visible in the electronic copy. You can submit these electronic copies through the USPTO’s Electronic Patent Assignment System (EPAS) for efficient processing.

Can assignment documents be submitted electronically to the USPTO?

Yes, assignment documents can be submitted electronically to the USPTO. The MPEP 302 states:

‘Assignment documents can be submitted to the Office in paper or electronically.’

The USPTO provides an electronic system for submitting assignment documents, which can be more convenient and efficient than paper submissions. However, it’s important to note that regardless of the submission method, the documents must meet all legal requirements and be properly executed to be considered valid.

For electronic submissions, users can utilize the Electronic Patent Assignment System (EPAS) provided by the USPTO. This system allows for quick and secure submission of assignment documents directly to the USPTO’s database.

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

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

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

Can an assignment be recorded electronically with the USPTO?

Yes, assignments can be recorded electronically with the USPTO. The MPEP 302 states:

“The USPTO provides for the electronic filing of patent assignment documents through the Electronic Patent Assignment System (EPAS).”

Electronic filing offers several advantages:

• Faster processing times
• Immediate confirmation of receipt
• Reduced risk of errors in data entry
• 24/7 accessibility

To use EPAS, users must have a USPTO.gov account and follow the specific guidelines for electronic submission. For detailed instructions, visit the Electronic Patent Assignment System (EPAS) on the USPTO website.

For more information on electronic filing, visit: electronic filing.

For more information on EPAS, visit: EPAS.

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

For more information on USPTO, visit: USPTO.

Can a patent assignment be recorded electronically?

Yes, patent assignments can be recorded electronically. The USPTO provides an electronic system for recording assignment documents. According to MPEP 302:

‘Assignment documents can be submitted for recordation via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://www.uspto.gov/patents-application-process/documenting-patent-ownership/epas-electronic-patent-assignment-system for additional information regarding EPAS.’

Electronic submission through EPAS is often faster and more convenient than paper submissions. However, it’s important to ensure that all necessary information and signatures are included in the electronic submission.

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

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

Document legibility is crucial when submitting patent assignments because:

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

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

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

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

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

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

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

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

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

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

To record a document:

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

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

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

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

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

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

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

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

For more information on licenses, visit: licenses.

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

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

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

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

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

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

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

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

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

Types of documents that can be recorded include:

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

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

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

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

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

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

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

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

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

For more information on USPTO, visit: USPTO.

What is the purpose of recording patent assignment documents?

Recording patent assignment documents serves several important purposes:

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

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

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

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

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

Recording an assignment with the USPTO serves several important purposes:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Recording and registering a patent assignment are two distinct processes:

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

When submitting an extract:

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

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

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

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

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

To correct the error:

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

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

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

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

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

To correct an error, you need to submit:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

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

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

As stated in MPEP 302.10: “Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.”

What happens if an assignment document is not recorded at the USPTO?

If an assignment document is not recorded at the USPTO, it can have significant legal implications. According to MPEP 302:

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

In other words, failing to record an assignment within the specified timeframe can render it invalid against subsequent purchasers or mortgagees who were unaware of the previous assignment. This highlights the importance of timely recording assignments to protect the rights of assignees.

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

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

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

For more information on USPTO, visit: USPTO.

What happens if an assignment document is not legible for recording?

If an assignment document is not legible for recording, it will be rejected by the USPTO. According to MPEP 302.01, “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” If a document is rejected due to legibility issues, the USPTO will notify the person who submitted the document, and they will need to resubmit a legible copy for recording.

What happens if an assignment document is not a copy when submitted for recording?

If an assignment document submitted for recording is not a copy, it will not be accepted for recording. The MPEP clearly states: The Assignment Division will not accept an original assignment document because it becomes part of the USPTO permanent records. This is to protect the original document and ensure that the USPTO maintains proper records. If you submit an original document, it will be returned to you unrecorded, and you will need to submit a copy instead.

To ensure your assignment is properly recorded, always submit a legible copy of the original assignment document. This can be a photocopy or other reproduction of the original.

What happens if a patent assignment is not recorded with the USPTO?

Failing to record a patent assignment with the USPTO can have significant consequences:

• Lack of Constructive Notice: Third parties may not be aware of the ownership transfer.
• Potential Legal Issues: It may affect the assignee’s ability to enforce the patent or recover damages in infringement cases.
• Validity of Subsequent Transfers: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as valid, for purposes of recording, unless overcome by a showing that such assignment was fraudulently procured or is otherwise invalid.’

While recording is not mandatory for the assignment to be valid between the parties involved, it is highly recommended to protect the assignee’s rights and provide public notice of the ownership change.

For more information on USPTO, visit: USPTO.

According to 37 CFR 3.11, the following documents can be recorded with the USPTO related to patent assignments:

• Assignments of applications, patents, and registrations
• Other documents relating to interests in patent applications and patents
• Documents affecting title to applications, patents, or registrations
• Licenses, assignments, or other interests of the Government in or under patents or patent applications
• Joint research agreements or excerpts of joint research agreements

These documents must be accompanied by completed cover sheets as specified in 37 CFR 3.28 and 3.31.

According to 37 CFR 3.31, the cover sheet for patent assignments must contain:

• Name of the party conveying the interest
• Name and address of the party receiving the interest
• Description of the interest conveyed or transaction to be recorded
• Identification of the patent or application
• Name and address for correspondence
• Date of execution
• Signature of the party submitting the document

For joint research agreements, the cover sheet must also:

• Identify the document as a ‘joint research agreement’
• Indicate the name of the patent owner
• Indicate the names of other parties to the agreement
• Indicate the date the agreement was executed

The MPEP notes that Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

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

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

According to 37 CFR 3.26, assignment documents in languages other than English can be recorded with the USPTO, but specific requirements must be met. The MPEP states:

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

Key points for submitting non-English assignment documents:

• The original non-English document must be submitted
• An English translation of the document must be provided
• The translation must be signed by the individual who performed the translation
• Both the original document and the translation will be recorded

It’s important to ensure that the translation accurately reflects the content of the original document to avoid any legal complications or misunderstandings regarding the assignment.

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

To submit an assignment document electronically to the USPTO, the following requirements must be met:

• The document must be submitted via the Electronic Patent Assignment System (EPAS)
• An identified application or patent number must be included
• One cover sheet must be completed online to record a single transaction
• The signature on the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2)

As stated in 37 CFR 1.4(d)(2), an S-signature may be used, which consists of letters and/or numbers between forward slashes (e.g., /John Doe/). For patent practitioners, their registration number must also be included.

Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must:

• Identify the document as a ‘joint research agreement’ in the description of interest conveyed
• Indicate the name of the owner of the application or patent
• Indicate the name of each other party to the joint research agreement
• Indicate the date the joint research agreement was executed

The document submitted can be either the entire joint research agreement or an excerpt of it. As with other recorded documents, it must be accompanied by a completed cover sheet as specified in 37 CFR 3.28 and 3.31.

Remember that A patent cover sheet may not refer to trademark applications or registrations. Separate cover sheets must be used for patents and trademarks.

For more information on joint research agreement, visit: joint research agreement.

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

For more information on recordation, visit: recordation.

For paper submissions of patent assignment documents, the following requirements must be met:

• Submit either a copy of the original document or an extract of the original document.
• Use only one side of each page.
• Paper size must be either 8.5″ x 11″ or A4, with a 1-inch margin on all sides.
• Use flexible, strong white, non-shiny, and durable paper.

As stated in 37 CFR 3.24(b): “For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable.” This ensures that the document can be properly recorded and stored by the USPTO.

For electronic submissions of assignment documents, the following requirements apply:

• Either a copy of the original document or an extract of the original document may be submitted.
• Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format.
• When printed to paper size (8.5″ x 11″ or A4), the document must be legible with a 1-inch margin on all sides.

As stated in 37 CFR 3.24(a): “All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director.”

The fees for recording assignment documents are set forth in 37 CFR 3.41. According to the MPEP:

• For electronic submissions: The fee is currently $0 (as per 37 CFR 1.21(h)(1))
• For paper or facsimile submissions: The fee is set in 37 CFR 1.21(h)(2)

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

It’s important to note that a fee is required for each application, patent, and registration against which the document is recorded, as identified in the cover sheet. However, there are exceptions:

• No fee is required for documents required by Executive Order 9424 if the document does not affect title and is identified as such in the cover sheet
• The document must be either faxed, electronically submitted, or mailed in compliance with 37 CFR 3.27

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

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

The fees for recording a patent assignment depend on the submission method:

• Electronic submission via EPAS (Electronic Patent Assignment System): $0
• Paper or facsimile submission: See current fee schedule

As stated in MPEP 302.06: “If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2).”

It’s important to note that fees are subject to change. Always check the current USPTO fee schedule before submitting documents for recordation.

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

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

What are the consequences of submitting a poor-quality copy of an assignment document to the USPTO?

Submitting a poor-quality copy of an assignment document to the USPTO can lead to rejection of the recording request. The MPEP 302.01 clearly states that “Only copies of an original assignment document (with the exception of those submitted via EFS-Web) may be submitted for recording.” Furthermore, it emphasizes that “The copy must be legible, capable of reproduction and otherwise meet the usual requirements of documents for recording.” If a poor-quality copy is submitted:

• The recording request may be rejected
• The effective date of recordation could be delayed
• Additional fees may be incurred for resubmission
• There could be potential legal implications if the assignment is not properly recorded in a timely manner

To avoid these issues, always ensure that the copy submitted is of high quality and meets all USPTO requirements for legibility and reproducibility.

What are the consequences of failing to record a patent assignment with the USPTO?

Failing to record a patent assignment with the USPTO can have several important consequences:

• Lack of legal notice: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as notice to the world of the ownership of the patent.’ Without recording, third parties may not have legal notice of the assignment.
• Potential validity issues: In some cases, failure to record an assignment could affect the validity of subsequent actions taken by the assignee.
• Difficulties in enforcement: Unrecorded assignments may complicate patent enforcement efforts, as the assignee’s standing to sue could be challenged.
• Problems in future transactions: Lack of a clear chain of title can cause issues in future sales, licenses, or other transactions involving the patent.

While recording is not mandatory, it is highly recommended to protect the assignee’s rights and ensure a clear chain of title for the patent.

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

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

When preparing an assignment document for recording with the USPTO, follow these guidelines based on 37 CFR 3.24 and MPEP 302.01:

1. For electronic submissions:
   • Submit either a copy of the original document or an extract of it
   • Ensure the document is in Tagged Image File Format (TIFF) or another prescribed format
   • When printed, the document should be legible on 8.5 x 11 inch or A4 paper with 1-inch margins on all sides
2. For paper or facsimile submissions:
   • Submit a copy of the original document or an extract (not the original)
   • Use only one side of each page
   • Use 8.5 x 11 inch or A4 paper with 1-inch margins on all sides
   • For paper submissions, use flexible, strong white, non-shiny, and durable paper
3. Ensure the document is legible, as the recorded document will only be as clear as the submitted copy
4. Include a completed cover sheet as specified in 37 CFR 3.28 and 3.31

MPEP 302.01 states: “The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document.” Remember, the document submitted for recordation will not be returned, so do not submit original documents.

According to 37 CFR 3.21 and MPEP 302.03, a patent or application should be identified in an assignment document as follows:

• For a patent: Use the patent number
• For a national patent application: Use the application number (series code and serial number, e.g., 07/123,456)
• For an international patent application designating the U.S.: Use the international application number (e.g., PCT/US2012/012345)
• For an international design application designating the U.S.: Use either the international registration number or the U.S. application number

For applications not yet filed or without an assigned number:

• For a non-provisional application: Identify by inventor name(s) and the title of the invention
• For a provisional application: Identify by inventor name(s) and the title of the invention

MPEP 302.03 suggests: “It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is: ‘I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.'”

To record a joint research agreement with the USPTO, follow these steps based on 37 CFR 3.11(c) and 37 CFR 3.31(g):

1. Prepare either a copy of the joint research agreement or an excerpt of it.
2. Complete a cover sheet that includes:
   • Identification of the document as a “joint research agreement” in the space for describing the interest conveyed
   • The name of the owner of the application or patent
   • The name of each other party to the joint research agreement
   • The date the joint research agreement was executed
3. Submit the document and cover sheet to the USPTO for recordation.

As stated in MPEP 302.07: “If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a ‘joint research agreement’ (in the space provided for the description of the interest conveyed if using Form PTO-1595).”

According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it:

1. Prepare a written document signed by the assignee.
2. State the name and address of a person residing within the United States who may be served process or notice of proceedings affecting the patent or rights under it.
3. Submit this document to the USPTO as a separate paper from any assignment document.
4. Clearly label the document as “Designation of Domestic Representative.”
5. Ensure the document is signed in accordance with 37 CFR 1.33(b).

As stated in MPEP 302.04: “The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.”

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

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

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

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

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

How does the USPTO handle incorrect or erroneous assignment recordings?

The USPTO has a specific process for handling incorrect or erroneous assignment recordings:

1. No expungement: The USPTO does not expunge or remove assignment documents once they are recorded.
2. Corrective documents: Parties can record corrective documents to address errors or provide clarifications.
3. Maintaining integrity: This approach preserves the integrity of the assignment records.

As stated in MPEP 302: ‘Even if a recorded document is subsequently found to be invalid, the recording will be maintained in the assignment records and the assignment records will not be expunged.’ This policy ensures a complete historical record of all recorded documents.

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

How does the USPTO handle assignment documents that contain errors?

The USPTO has procedures in place for handling assignment documents with errors:

• Minor errors: The USPTO may correct minor errors in assignment documents without requiring a new submission. As stated in MPEP 302: ‘Minor corrections to documents recorded pursuant to 37 CFR 3.11 will be made by the Assignment Division, provided that the corrections do not involve the re-recording of the entire assignment document.’
• Major errors: For significant errors, a new corrected document must be submitted. The MPEP notes: ‘Other corrections may be made only by the submission of a new document.’
• Erroneous recording: If an assignment is erroneously recorded, the USPTO will correct its records upon notification.

It’s important to review assignment documents carefully before submission to avoid delays and potential legal issues.

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

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

To record an assignment document with the USPTO, you must:

• Submit a copy of the original assignment document
• Include a completed cover sheet (Form PTO-1595 or equivalent)
• Pay the required recording fee

The cover sheet must contain key information like the names of the parties, description of the interest conveyed, and patent/application numbers affected. As stated in MPEP 302.07: “Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28.”

Documents can be submitted electronically via EPAS, by mail, or by fax. Electronic submission is recommended as it has a $0 fee.

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

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

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

For more information on USPTO, visit: USPTO.

To record a joint research agreement (JRA) with the USPTO, follow these steps:

1. Prepare the JRA document or an excerpt of it
2. Complete a cover sheet, clearly identifying the document as a “joint research agreement”
3. Submit the document and cover sheet to the USPTO

As stated in MPEP 302.07: “If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a ‘joint research agreement’.”

The cover sheet for a JRA must include:

• The name of the owner of the application or patent
• The name of each other party to the joint research agreement
• The date the joint research agreement was executed

JRAs can be submitted electronically via EPAS, by mail, or by fax, following the same procedures as other assignment documents.

For more information on joint research agreement, visit: joint research agreement.

Recording a government interest in a patent requires special procedures:

1. Prepare the document establishing the government interest
2. Complete a patent cover sheet, indicating it relates to a government interest
3. Submit the document and cover sheet to the USPTO

As stated in MPEP 302.07: “Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.”

Key points for government interest recordations:

• No fee is required if the document doesn’t affect title and is properly identified
• These documents are recorded in a special Departmental Register
• Some government documents may be recorded in a Secret Register with restricted access

Government agencies should follow Executive Order 9424 which requires prompt forwarding of government interests in patents for recording.

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

According to 37 CFR 3.21, a patent assignment must identify the patent by patent number. For patent applications:

• National applications: Identify by application number (series code and serial number)
• International applications designating the US: Identify by international application number
• International design applications designating the US: Identify by international registration number or US application number

If the assignment is executed before filing but after the application is executed, it must identify the application by inventor name(s) and invention title. For provisional applications not yet filed, identify by inventor name(s) and invention title.

The MPEP suggests including language like: I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.

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

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

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

The USPTO allows electronic submission of assignment documents through the Electronic Patent Assignment System (EPAS). According to the MPEP:

• Visit http://epas.uspto.gov for the EPAS system
• Include an identified application or patent number
• Complete one online cover sheet for a single transaction

For electronic submissions, the signature must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2). This typically involves an S-signature between forward slashes (e.g., /John Smith/).

The MPEP notes: The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation.

The recordation date for electronic submissions is the date the complete transmission is received by the USPTO.

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

For more information on EPAS, visit: EPAS.

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

There are three main ways to submit a patent assignment document to the USPTO:

1. Mail: Documents can be mailed to the address specified in 37 CFR 3.27: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
2. Fax: Documents can be submitted via facsimile, as outlined in MPEP 302.09. However, certain documents cannot be faxed, such as assignments submitted with new applications.
3. Electronic Submission: Documents can be submitted electronically through the Electronic Patent Assignment System (EPAS) as described in MPEP 302.10.

Each method has specific requirements and limitations, so it’s important to review the relevant MPEP sections or consult the USPTO website for detailed instructions.

Foreign assignees can designate a domestic representative for USPTO correspondence as outlined in 35 U.S.C. 293 and 37 CFR 3.61. The MPEP states:

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative.

Key points for this designation:

• It should be submitted as a separate paper from any assignment document
• It should be clearly labeled ‘Designation of Domestic Representative’
• It will be entered into the record of the appropriate application or patent file
• It must be signed in accordance with 37 CFR 1.33(b)
• It should state the name and address of a person residing within the United States

This designation allows for service of process or notice of proceedings affecting the patent or rights under the patent to be served on the designated representative.

For more information on domestic representative, visit: domestic representative.

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

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

No, you should not submit original documents for recording patent assignments. The USPTO explicitly states:

“The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document. See MPEP § 317. The document submitted for recordation will not be returned to the submitter.”

It’s crucial to submit only copies of original documents, as the USPTO will not return the recorded documents. This ensures that you retain your original documents while still complying with the recording requirements.

Can I submit a photocopy or digital scan of my assignment document for USPTO recording?

Yes, you can submit a photocopy or digital scan of your assignment document for USPTO recording, as long as it’s a complete and legible copy. The MPEP 302.01 specifies: ‘The copy of the document to be recorded should be presented to the Office for recordation.’ This means that:

• Photocopies are acceptable
• Digital scans saved as PDF files are also acceptable
• The copy must be clear and readable
• All pages and attachments must be included

Remember, while you’re submitting a copy, it must accurately represent the original document in its entirety.

Yes, you can submit a patent assignment electronically through the USPTO’s Electronic Patent Assignment System (EPAS). This is the recommended method for several reasons:

• It’s free – there is no recordation fee for electronic submissions
• It’s fast – documents are processed more quickly
• It’s convenient – you can submit 24/7 from anywhere with internet access

As stated in MPEP 302.10: “Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS).”

To use EPAS, you’ll need to complete an online cover sheet and upload a copy of the assignment document. The signature on the electronic cover sheet must comply with USPTO regulations for electronic signatures.

For more information and to access EPAS, visit the USPTO EPAS website.

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

For more information on EPAS, visit: EPAS.

Can I submit a handwritten assignment document for recording at the USPTO?

While handwritten assignment documents are not explicitly prohibited, they are generally discouraged and may face challenges in the recording process. The MPEP 302.01 states that “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” Handwritten documents may not meet this standard, especially if the handwriting is not clear and easily readable. To ensure smooth processing and avoid potential rejection, it’s recommended to submit typed or printed assignment documents that are clearly legible and meet all USPTO requirements.

Can I record an assignment for a pending patent application?

Yes, you can record an assignment for a pending patent application. In fact, the USPTO encourages early recordation of assignments. According to MPEP 302:

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234).

To record an assignment for a pending application:

• Use the application number to identify the application
• Ensure all necessary parties have signed the assignment document
• Submit the assignment document along with the required cover sheet and fee to the USPTO

Early recordation can help establish clear ownership and facilitate future transactions or licensing agreements.

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

Can foreign language assignment documents be recorded at the USPTO?

Yes, foreign language assignment documents can be recorded at the USPTO, but they must be accompanied by an English translation. The MPEP 302 states:

“Unless an assignment is in a language other than English, the Office may rely on the assignment document (or a copy thereof) as filed.”

If the assignment is in a foreign language, you must provide:

• The original foreign language document
• An English language translation
• A statement verifying that the translation is accurate

This ensures that the USPTO can properly review and record the assignment, maintaining accurate ownership records for patents and patent applications.

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

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

For more information on USPTO, visit: USPTO.

Can electronic copies of assignment documents be submitted for recording?

Yes, electronic copies of assignment documents can be submitted for recording at the USPTO. The MPEP 302.01 states: Any legible copies, including facsimile transmissions and computer generated copies, of original assignment documents will be acceptable for recording.

This means you can submit:

• Scanned copies of original documents
• Faxed copies
• Computer-generated copies

The key requirement is that the electronic copy must be legible. Ensure that all text, signatures, and dates are clearly visible in the electronic copy. You can submit these electronic copies through the USPTO’s Electronic Patent Assignment System (EPAS) for efficient processing.

Can assignment documents be submitted electronically to the USPTO?

Yes, assignment documents can be submitted electronically to the USPTO. The MPEP 302 states:

‘Assignment documents can be submitted to the Office in paper or electronically.’

The USPTO provides an electronic system for submitting assignment documents, which can be more convenient and efficient than paper submissions. However, it’s important to note that regardless of the submission method, the documents must meet all legal requirements and be properly executed to be considered valid.

For electronic submissions, users can utilize the Electronic Patent Assignment System (EPAS) provided by the USPTO. This system allows for quick and secure submission of assignment documents directly to the USPTO’s database.

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

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

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

Can an assignment be recorded electronically with the USPTO?

Yes, assignments can be recorded electronically with the USPTO. The MPEP 302 states:

“The USPTO provides for the electronic filing of patent assignment documents through the Electronic Patent Assignment System (EPAS).”

Electronic filing offers several advantages:

• Faster processing times
• Immediate confirmation of receipt
• Reduced risk of errors in data entry
• 24/7 accessibility

To use EPAS, users must have a USPTO.gov account and follow the specific guidelines for electronic submission. For detailed instructions, visit the Electronic Patent Assignment System (EPAS) on the USPTO website.

For more information on electronic filing, visit: electronic filing.

For more information on EPAS, visit: EPAS.

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

For more information on USPTO, visit: USPTO.

Can a patent assignment be recorded electronically?

Yes, patent assignments can be recorded electronically. The USPTO provides an electronic system for recording assignment documents. According to MPEP 302:

‘Assignment documents can be submitted for recordation via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://www.uspto.gov/patents-application-process/documenting-patent-ownership/epas-electronic-patent-assignment-system for additional information regarding EPAS.’

Electronic submission through EPAS is often faster and more convenient than paper submissions. However, it’s important to ensure that all necessary information and signatures are included in the electronic submission.

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

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

Document legibility is crucial when submitting patent assignments because:

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

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

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

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

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

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

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

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

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

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

To record a document:

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

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

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

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

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

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

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

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

For more information on licenses, visit: licenses.

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

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

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

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

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

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

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

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

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

Types of documents that can be recorded include:

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

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

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

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

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

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

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

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

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

For more information on USPTO, visit: USPTO.

What is the purpose of recording patent assignment documents?

Recording patent assignment documents serves several important purposes:

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

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

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

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

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

Recording an assignment with the USPTO serves several important purposes:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Recording and registering a patent assignment are two distinct processes:

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

When submitting an extract:

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

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

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

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

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

To correct the error:

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

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

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

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

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

To correct an error, you need to submit:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

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

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

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

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

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

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

As stated in MPEP 302.10: “Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.”

What happens if an assignment document is not recorded at the USPTO?

If an assignment document is not recorded at the USPTO, it can have significant legal implications. According to MPEP 302:

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

In other words, failing to record an assignment within the specified timeframe can render it invalid against subsequent purchasers or mortgagees who were unaware of the previous assignment. This highlights the importance of timely recording assignments to protect the rights of assignees.

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

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

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

For more information on USPTO, visit: USPTO.

What happens if an assignment document is not legible for recording?

If an assignment document is not legible for recording, it will be rejected by the USPTO. According to MPEP 302.01, “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” If a document is rejected due to legibility issues, the USPTO will notify the person who submitted the document, and they will need to resubmit a legible copy for recording.

What happens if an assignment document is not a copy when submitted for recording?

If an assignment document submitted for recording is not a copy, it will not be accepted for recording. The MPEP clearly states: The Assignment Division will not accept an original assignment document because it becomes part of the USPTO permanent records. This is to protect the original document and ensure that the USPTO maintains proper records. If you submit an original document, it will be returned to you unrecorded, and you will need to submit a copy instead.

To ensure your assignment is properly recorded, always submit a legible copy of the original assignment document. This can be a photocopy or other reproduction of the original.

What happens if a patent assignment is not recorded with the USPTO?

Failing to record a patent assignment with the USPTO can have significant consequences:

• Lack of Constructive Notice: Third parties may not be aware of the ownership transfer.
• Potential Legal Issues: It may affect the assignee’s ability to enforce the patent or recover damages in infringement cases.
• Validity of Subsequent Transfers: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as valid, for purposes of recording, unless overcome by a showing that such assignment was fraudulently procured or is otherwise invalid.’

While recording is not mandatory for the assignment to be valid between the parties involved, it is highly recommended to protect the assignee’s rights and provide public notice of the ownership change.

For more information on USPTO, visit: USPTO.

According to 37 CFR 3.11, the following documents can be recorded with the USPTO related to patent assignments:

• Assignments of applications, patents, and registrations
• Other documents relating to interests in patent applications and patents
• Documents affecting title to applications, patents, or registrations
• Licenses, assignments, or other interests of the Government in or under patents or patent applications
• Joint research agreements or excerpts of joint research agreements

These documents must be accompanied by completed cover sheets as specified in 37 CFR 3.28 and 3.31.

According to 37 CFR 3.31, the cover sheet for patent assignments must contain:

• Name of the party conveying the interest
• Name and address of the party receiving the interest
• Description of the interest conveyed or transaction to be recorded
• Identification of the patent or application
• Name and address for correspondence
• Date of execution
• Signature of the party submitting the document

For joint research agreements, the cover sheet must also:

• Identify the document as a ‘joint research agreement’
• Indicate the name of the patent owner
• Indicate the names of other parties to the agreement
• Indicate the date the agreement was executed

The MPEP notes that Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.

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

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

According to 37 CFR 3.26, assignment documents in languages other than English can be recorded with the USPTO, but specific requirements must be met. The MPEP states:

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

Key points for submitting non-English assignment documents:

• The original non-English document must be submitted
• An English translation of the document must be provided
• The translation must be signed by the individual who performed the translation
• Both the original document and the translation will be recorded

It’s important to ensure that the translation accurately reflects the content of the original document to avoid any legal complications or misunderstandings regarding the assignment.

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

To submit an assignment document electronically to the USPTO, the following requirements must be met:

• The document must be submitted via the Electronic Patent Assignment System (EPAS)
• An identified application or patent number must be included
• One cover sheet must be completed online to record a single transaction
• The signature on the cover sheet must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2)

As stated in 37 CFR 1.4(d)(2), an S-signature may be used, which consists of letters and/or numbers between forward slashes (e.g., /John Doe/). For patent practitioners, their registration number must also be included.

Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must:

• Identify the document as a ‘joint research agreement’ in the description of interest conveyed
• Indicate the name of the owner of the application or patent
• Indicate the name of each other party to the joint research agreement
• Indicate the date the joint research agreement was executed

The document submitted can be either the entire joint research agreement or an excerpt of it. As with other recorded documents, it must be accompanied by a completed cover sheet as specified in 37 CFR 3.28 and 3.31.

Remember that A patent cover sheet may not refer to trademark applications or registrations. Separate cover sheets must be used for patents and trademarks.

For more information on joint research agreement, visit: joint research agreement.

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For more information on recordation, visit: recordation.

For paper submissions of patent assignment documents, the following requirements must be met:

• Submit either a copy of the original document or an extract of the original document.
• Use only one side of each page.
• Paper size must be either 8.5″ x 11″ or A4, with a 1-inch margin on all sides.
• Use flexible, strong white, non-shiny, and durable paper.

As stated in 37 CFR 3.24(b): “For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable.” This ensures that the document can be properly recorded and stored by the USPTO.

For electronic submissions of assignment documents, the following requirements apply:

• Either a copy of the original document or an extract of the original document may be submitted.
• Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format.
• When printed to paper size (8.5″ x 11″ or A4), the document must be legible with a 1-inch margin on all sides.

As stated in 37 CFR 3.24(a): “All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director.”

The fees for recording assignment documents are set forth in 37 CFR 3.41. According to the MPEP:

• For electronic submissions: The fee is currently $0 (as per 37 CFR 1.21(h)(1))
• For paper or facsimile submissions: The fee is set in 37 CFR 1.21(h)(2)

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

It’s important to note that a fee is required for each application, patent, and registration against which the document is recorded, as identified in the cover sheet. However, there are exceptions:

• No fee is required for documents required by Executive Order 9424 if the document does not affect title and is identified as such in the cover sheet
• The document must be either faxed, electronically submitted, or mailed in compliance with 37 CFR 3.27

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

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

The fees for recording a patent assignment depend on the submission method:

• Electronic submission via EPAS (Electronic Patent Assignment System): $0
• Paper or facsimile submission: See current fee schedule

As stated in MPEP 302.06: “If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2).”

It’s important to note that fees are subject to change. Always check the current USPTO fee schedule before submitting documents for recordation.

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

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

What are the consequences of submitting a poor-quality copy of an assignment document to the USPTO?

Submitting a poor-quality copy of an assignment document to the USPTO can lead to rejection of the recording request. The MPEP 302.01 clearly states that “Only copies of an original assignment document (with the exception of those submitted via EFS-Web) may be submitted for recording.” Furthermore, it emphasizes that “The copy must be legible, capable of reproduction and otherwise meet the usual requirements of documents for recording.” If a poor-quality copy is submitted:

• The recording request may be rejected
• The effective date of recordation could be delayed
• Additional fees may be incurred for resubmission
• There could be potential legal implications if the assignment is not properly recorded in a timely manner

To avoid these issues, always ensure that the copy submitted is of high quality and meets all USPTO requirements for legibility and reproducibility.

What are the consequences of failing to record a patent assignment with the USPTO?

Failing to record a patent assignment with the USPTO can have several important consequences:

• Lack of legal notice: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as notice to the world of the ownership of the patent.’ Without recording, third parties may not have legal notice of the assignment.
• Potential validity issues: In some cases, failure to record an assignment could affect the validity of subsequent actions taken by the assignee.
• Difficulties in enforcement: Unrecorded assignments may complicate patent enforcement efforts, as the assignee’s standing to sue could be challenged.
• Problems in future transactions: Lack of a clear chain of title can cause issues in future sales, licenses, or other transactions involving the patent.

While recording is not mandatory, it is highly recommended to protect the assignee’s rights and ensure a clear chain of title for the patent.

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

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

When preparing an assignment document for recording with the USPTO, follow these guidelines based on 37 CFR 3.24 and MPEP 302.01:

1. For electronic submissions:
   • Submit either a copy of the original document or an extract of it
   • Ensure the document is in Tagged Image File Format (TIFF) or another prescribed format
   • When printed, the document should be legible on 8.5 x 11 inch or A4 paper with 1-inch margins on all sides
2. For paper or facsimile submissions:
   • Submit a copy of the original document or an extract (not the original)
   • Use only one side of each page
   • Use 8.5 x 11 inch or A4 paper with 1-inch margins on all sides
   • For paper submissions, use flexible, strong white, non-shiny, and durable paper
3. Ensure the document is legible, as the recorded document will only be as clear as the submitted copy
4. Include a completed cover sheet as specified in 37 CFR 3.28 and 3.31

MPEP 302.01 states: “The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document.” Remember, the document submitted for recordation will not be returned, so do not submit original documents.

According to 37 CFR 3.21 and MPEP 302.03, a patent or application should be identified in an assignment document as follows:

• For a patent: Use the patent number
• For a national patent application: Use the application number (series code and serial number, e.g., 07/123,456)
• For an international patent application designating the U.S.: Use the international application number (e.g., PCT/US2012/012345)
• For an international design application designating the U.S.: Use either the international registration number or the U.S. application number

For applications not yet filed or without an assigned number:

• For a non-provisional application: Identify by inventor name(s) and the title of the invention
• For a provisional application: Identify by inventor name(s) and the title of the invention

MPEP 302.03 suggests: “It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is: ‘I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.'”

To record a joint research agreement with the USPTO, follow these steps based on 37 CFR 3.11(c) and 37 CFR 3.31(g):

1. Prepare either a copy of the joint research agreement or an excerpt of it.
2. Complete a cover sheet that includes:
   • Identification of the document as a “joint research agreement” in the space for describing the interest conveyed
   • The name of the owner of the application or patent
   • The name of each other party to the joint research agreement
   • The date the joint research agreement was executed
3. Submit the document and cover sheet to the USPTO for recordation.

As stated in MPEP 302.07: “If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a ‘joint research agreement’ (in the space provided for the description of the interest conveyed if using Form PTO-1595).”

According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it:

1. Prepare a written document signed by the assignee.
2. State the name and address of a person residing within the United States who may be served process or notice of proceedings affecting the patent or rights under it.
3. Submit this document to the USPTO as a separate paper from any assignment document.
4. Clearly label the document as “Designation of Domestic Representative.”
5. Ensure the document is signed in accordance with 37 CFR 1.33(b).

As stated in MPEP 302.04: “The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.”

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

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

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

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

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

How does the USPTO handle incorrect or erroneous assignment recordings?

The USPTO has a specific process for handling incorrect or erroneous assignment recordings:

1. No expungement: The USPTO does not expunge or remove assignment documents once they are recorded.
2. Corrective documents: Parties can record corrective documents to address errors or provide clarifications.
3. Maintaining integrity: This approach preserves the integrity of the assignment records.

As stated in MPEP 302: ‘Even if a recorded document is subsequently found to be invalid, the recording will be maintained in the assignment records and the assignment records will not be expunged.’ This policy ensures a complete historical record of all recorded documents.

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

How does the USPTO handle assignment documents that contain errors?

The USPTO has procedures in place for handling assignment documents with errors:

• Minor errors: The USPTO may correct minor errors in assignment documents without requiring a new submission. As stated in MPEP 302: ‘Minor corrections to documents recorded pursuant to 37 CFR 3.11 will be made by the Assignment Division, provided that the corrections do not involve the re-recording of the entire assignment document.’
• Major errors: For significant errors, a new corrected document must be submitted. The MPEP notes: ‘Other corrections may be made only by the submission of a new document.’
• Erroneous recording: If an assignment is erroneously recorded, the USPTO will correct its records upon notification.

It’s important to review assignment documents carefully before submission to avoid delays and potential legal issues.

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

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

To record an assignment document with the USPTO, you must:

• Submit a copy of the original assignment document
• Include a completed cover sheet (Form PTO-1595 or equivalent)
• Pay the required recording fee

The cover sheet must contain key information like the names of the parties, description of the interest conveyed, and patent/application numbers affected. As stated in MPEP 302.07: “Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28.”

Documents can be submitted electronically via EPAS, by mail, or by fax. Electronic submission is recommended as it has a $0 fee.

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

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

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

For more information on USPTO, visit: USPTO.

To record a joint research agreement (JRA) with the USPTO, follow these steps:

1. Prepare the JRA document or an excerpt of it
2. Complete a cover sheet, clearly identifying the document as a “joint research agreement”
3. Submit the document and cover sheet to the USPTO

As stated in MPEP 302.07: “If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a ‘joint research agreement’.”

The cover sheet for a JRA must include:

• The name of the owner of the application or patent
• The name of each other party to the joint research agreement
• The date the joint research agreement was executed

JRAs can be submitted electronically via EPAS, by mail, or by fax, following the same procedures as other assignment documents.

For more information on joint research agreement, visit: joint research agreement.

Recording a government interest in a patent requires special procedures:

1. Prepare the document establishing the government interest
2. Complete a patent cover sheet, indicating it relates to a government interest
3. Submit the document and cover sheet to the USPTO

As stated in MPEP 302.07: “Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.”

Key points for government interest recordations:

• No fee is required if the document doesn’t affect title and is properly identified
• These documents are recorded in a special Departmental Register
• Some government documents may be recorded in a Secret Register with restricted access

Government agencies should follow Executive Order 9424 which requires prompt forwarding of government interests in patents for recording.

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

According to 37 CFR 3.21, a patent assignment must identify the patent by patent number. For patent applications:

• National applications: Identify by application number (series code and serial number)
• International applications designating the US: Identify by international application number
• International design applications designating the US: Identify by international registration number or US application number

If the assignment is executed before filing but after the application is executed, it must identify the application by inventor name(s) and invention title. For provisional applications not yet filed, identify by inventor name(s) and invention title.

The MPEP suggests including language like: I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.

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

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

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