Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 300 - Ownership and Assignment (2)
According to 35 U.S.C. 118, the following parties can file a patent application:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor
The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
When a patent is granted on an application filed by someone other than the inventor, it is issued to the real party in interest. This is stipulated in both 35 U.S.C. 118 and 37 CFR 1.46(e):
35 U.S.C. 118 states: If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
37 CFR 1.46(e) further clarifies: If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.
MPEP 308 - Issue to Applicant (2)
According to 35 U.S.C. 118, the following parties can file a patent application:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor
The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
When a patent is granted on an application filed by someone other than the inventor, it is issued to the real party in interest. This is stipulated in both 35 U.S.C. 118 and 37 CFR 1.46(e):
35 U.S.C. 118 states: If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
37 CFR 1.46(e) further clarifies: If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.
MPEP 400 - Representative of Applicant or Owner (1)
Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):
“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”
This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.
When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.
To learn more:
To learn more:
Patent Law (3)
According to 35 U.S.C. 118, the following parties can file a patent application:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor
The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):
“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”
This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.
When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.
To learn more:
To learn more:
When a patent is granted on an application filed by someone other than the inventor, it is issued to the real party in interest. This is stipulated in both 35 U.S.C. 118 and 37 CFR 1.46(e):
35 U.S.C. 118 states: If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
37 CFR 1.46(e) further clarifies: If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.
Patent Procedure (3)
According to 35 U.S.C. 118, the following parties can file a patent application:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor
The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):
“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”
This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.
When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.
To learn more:
To learn more:
When a patent is granted on an application filed by someone other than the inventor, it is issued to the real party in interest. This is stipulated in both 35 U.S.C. 118 and 37 CFR 1.46(e):
35 U.S.C. 118 states: If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.
37 CFR 1.46(e) further clarifies: If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81.