Patent Law FAQ

According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:

1. A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
2. Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
3. A patent practitioner of record
4. A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted

The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”

An assignee must establish ownership under 37 CFR 3.73(c) in various situations, including when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Signs a Fee Transmittal (PTOL-85B)

The MPEP notes: “Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.”

For an assignee to take action in a patent application filed on or after September 16, 2012, the following requirements must be met:

• The assignee must be of the entire right, title, and interest in the application.
• A statement under 37 CFR 3.73(c) must be filed in the application.
• The statement must identify the assignee and establish the assignee’s ownership.

As stated in MPEP 325: “The assignee must establish its ownership of the entire right, title, and interest in an application in order to take action in that application.”

For more information on 37 CFR 3.73(c), visit: 37 CFR 3.73(c).

To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must:

1. File a request to change the applicant under 37 CFR 1.46(c)(2)
2. File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
3. Submit a statement under 37 CFR 3.73(c) establishing ownership

The 37 CFR 3.73(c) statement must contain either:

• Documentary evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence was submitted for recordation, or
• A statement specifying where such evidence is recorded in the Office (e.g., reel and frame number)

The MPEP states: “The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.”

When multiple assignees seek to take action in a patent matter, each partial assignee must provide a submission under 37 CFR 3.73(c). According to the MPEP:

In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners). 37 CFR 3.73(c)(2)(i).

Assignees have two options:

1. Specify the percentage of ownership interest for each assignee, accounting for 100% of ownership.
2. Identify all parties (including inventors) who together own the entire right, title, and interest, and state that all identified parties own the entire right, title, and interest.

The MPEP warns: “If the extent of the partial assignee’s ownership interest is not set forth in the submission under 37 CFR 3.73(c), the Office may refuse to accept the submission as an establishment of ownership interest.”

According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:

1. A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
2. Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
3. A patent practitioner of record
4. A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted

The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”

An assignee must establish ownership under 37 CFR 3.73(c) in various situations, including when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Signs a Fee Transmittal (PTOL-85B)

The MPEP notes: “Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.”

For an assignee to take action in a patent application filed on or after September 16, 2012, the following requirements must be met:

• The assignee must be of the entire right, title, and interest in the application.
• A statement under 37 CFR 3.73(c) must be filed in the application.
• The statement must identify the assignee and establish the assignee’s ownership.

As stated in MPEP 325: “The assignee must establish its ownership of the entire right, title, and interest in an application in order to take action in that application.”

For more information on 37 CFR 3.73(c), visit: 37 CFR 3.73(c).

To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must:

1. File a request to change the applicant under 37 CFR 1.46(c)(2)
2. File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
3. Submit a statement under 37 CFR 3.73(c) establishing ownership

The 37 CFR 3.73(c) statement must contain either:

• Documentary evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence was submitted for recordation, or
• A statement specifying where such evidence is recorded in the Office (e.g., reel and frame number)

The MPEP states: “The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.”

When multiple assignees seek to take action in a patent matter, each partial assignee must provide a submission under 37 CFR 3.73(c). According to the MPEP:

In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners). 37 CFR 3.73(c)(2)(i).

Assignees have two options:

1. Specify the percentage of ownership interest for each assignee, accounting for 100% of ownership.
2. Identify all parties (including inventors) who together own the entire right, title, and interest, and state that all identified parties own the entire right, title, and interest.

The MPEP warns: “If the extent of the partial assignee’s ownership interest is not set forth in the submission under 37 CFR 3.73(c), the Office may refuse to accept the submission as an establishment of ownership interest.”

According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:

1. A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
2. Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
3. A patent practitioner of record
4. A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted

The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”

An assignee must establish ownership under 37 CFR 3.73(c) in various situations, including when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Signs a Fee Transmittal (PTOL-85B)

The MPEP notes: “Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.”

For an assignee to take action in a patent application filed on or after September 16, 2012, the following requirements must be met:

• The assignee must be of the entire right, title, and interest in the application.
• A statement under 37 CFR 3.73(c) must be filed in the application.
• The statement must identify the assignee and establish the assignee’s ownership.

As stated in MPEP 325: “The assignee must establish its ownership of the entire right, title, and interest in an application in order to take action in that application.”

For more information on 37 CFR 3.73(c), visit: 37 CFR 3.73(c).

To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must:

1. File a request to change the applicant under 37 CFR 1.46(c)(2)
2. File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
3. Submit a statement under 37 CFR 3.73(c) establishing ownership

The 37 CFR 3.73(c) statement must contain either:

• Documentary evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence was submitted for recordation, or
• A statement specifying where such evidence is recorded in the Office (e.g., reel and frame number)

The MPEP states: “The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.”

When multiple assignees seek to take action in a patent matter, each partial assignee must provide a submission under 37 CFR 3.73(c). According to the MPEP:

In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners). 37 CFR 3.73(c)(2)(i).

Assignees have two options:

1. Specify the percentage of ownership interest for each assignee, accounting for 100% of ownership.
2. Identify all parties (including inventors) who together own the entire right, title, and interest, and state that all identified parties own the entire right, title, and interest.

The MPEP warns: “If the extent of the partial assignee’s ownership interest is not set forth in the submission under 37 CFR 3.73(c), the Office may refuse to accept the submission as an establishment of ownership interest.”