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 106-Control of Inspection by Assignee (6)
The MPEP 106.01 highlights a key difference in assignee rights for patent applications filed before and after September 16, 2012:
- For applications filed before September 16, 2012: The assignee of record of the entire interest can intervene in the prosecution of an application or interference to the exclusion of the applicant.
- For applications filed on or after September 16, 2012: The assignee of record of the entire interest can not only intervene but also prosecute the application after becoming the applicant under 37 CFR 1.46.
For more detailed information, the MPEP directs readers to:
- MPEP ยง 324 for applications filed before September 16, 2012
- MPEP ยง 325 for applications filed on or after September 16, 2012
The USPTO verifies an assignee’s right to inspect a patent application through documentation. As per MPEP 106.01, the assignee must provide either a copy of the assignment recorded in the USPTO or other evidence of ownership. This documentation is necessary to establish the assignee’s legal right to access the confidential information contained in the patent application.
The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:
‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’
This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.
For more detailed information on how the AIA affects assignee rights, refer to MPEP ยง 325 for applications filed on or after September 16, 2012.
No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.
The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.
Yes, an assignee of record of the entire interest in a patent application can control access to it. According to MPEP 106, “The applicant or assignee of record of the entire interest in an application may file an application or intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice.” This means that the assignee can manage the application’s prosecution and potentially limit access to it.
However, it’s important to note that “Such an application filing or intervention, however, does not exclude the inventor from access to the application to see that it is being prosecuted properly, unless the applicant or assignee makes specific request to that effect.” Any request to prevent the inventor’s access must be filed separately and directed to the Office of Petitions.
For more information on assignee rights, visit: assignee rights.
For more information on inventor access, visit: inventor access.
For more information on Office of Petitions, visit: Office of Petitions.
Yes, the applicant or assignee of record of the entire interest in an application can make a specific request to prevent the inventor from obtaining access to the application file. This request should be filed as a separate paper under 37 CFR 1.4(c) and directed to the Office of Petitions. If granted, the inventor will only be permitted to inspect the application upon sufficient showing of why it is necessary to preserve their rights.
Any request to prevent the inventor from obtaining access to the file should be filed as a separate paper, 37 CFR 1.4(c), and should be directed to the Office of Petitions. If the request is granted, the inventor will be informed that he or she will only be permitted to inspect the application on sufficient showing why such inspection is necessary to conserve his or her rights.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant.
If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is entitled to claim priority to the foreign application.
If the U.S. application and the certified copy do not name the same inventor or have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. [MPEP 216]
MPEP 216 - Entitlement to Priority (1)
Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant.
If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is entitled to claim priority to the foreign application.
If the U.S. application and the certified copy do not name the same inventor or have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. [MPEP 216]
MPEP 300 - Ownership and Assignment (12)
For pre-AIA patent applications (filed before September 16, 2012), the submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. According to MPEP 324, this can be done in several ways:
- A person with apparent authority in the organization, such as an officer (e.g., CEO, president, vice-president, secretary, or treasurer).
- Any person, if the submission clearly states that the person is authorized to act on behalf of the assignee.
- A person empowered by an organizational resolution, if a copy of the resolution is submitted.
The MPEP notes: Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required.
It’s important to ensure that the proper authority is established to avoid delays in patent prosecution.
For more information on assignee rights, visit: assignee rights.
For more information on authorized signatories, visit: authorized signatories.
For more information on pre-AIA applications, visit: pre-AIA applications.
What is the purpose of Form PTO/AIA/96?
Form PTO/AIA/96 is used to establish the right of an assignee to take action in a patent application filed on or after September 16, 2012. According to the MPEP 325:
“Form PTO/AIA/96 may be used to establish the right of an assignee to take action in an application filed on or after September 16, 2012.”
This form is crucial for assignees who wish to prosecute the application or take other actions on behalf of the inventors. It serves as a declaration that the assignee has the right to take action in the application, which is necessary under 37 CFR 3.71(b).
For more information on assignee rights, visit: assignee rights.
For more information on USPTO Forms, visit: USPTO Forms.
To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either:
- Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence was or is being submitted for recordation.
- Providing a statement specifying where such evidence is recorded in the USPTO (by reel and frame number).
As stated in the MPEP: 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.
This ensures that the assignee has the right to take action in the application.
For more information on assignee rights, visit: assignee rights.
For more information on pre-AIA applications, visit: pre-AIA applications.
For more information on USPTO procedures, visit: USPTO procedures.
To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:
- The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
- A statement affirming that the documentary evidence was or is being submitted for recordation.
- The submission must be signed by a person authorized to act on behalf of the assignee.
This is outlined in pre-AIA 37 CFR 3.73(b), which states:
“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to ยง 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”
For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:
- An assignment document recorded in the USPTO
- A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee
According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on pre-AIA applications, visit: pre-AIA applications.
An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:
- Signing a reply to an Office action
- Requesting a continued prosecution application (CPA)
- Signing a terminal disclaimer
- Submitting a Fee(s) Transmittal form
- Requesting status of an application
- Appointing a registered patent practitioner to prosecute the application
- Granting power to inspect an application
- Consenting to the filing of a reissue application
- Consenting to the correction of inventorship
The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances.
However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.
For more information on assignee rights, visit: assignee rights.
For more information on patent prosecution, visit: patent prosecution.
For more information on pre-AIA applications, visit: pre-AIA applications.
To establish the right to take action in a patent application filed before September 16, 2012, an assignee must meet the following requirements:
- The assignee must be of the entire right, title, and interest in the application.
- A proper documentary evidence of chain of title from the original owner to the assignee must be submitted.
- The evidence must be recorded in the United States Patent and Trademark Office (USPTO) no later than the date of payment of the issue fee.
As stated in MPEP 324: 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.
It’s important to note that these requirements are specific to applications filed before September 16, 2012. Different rules may apply for applications filed on or after this date.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on USPTO, visit: USPTO.
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:
- File a request to change the applicant under 37 CFR 1.46(c)(2)
- File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
- 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.”
How can an assignee establish the right to take action in a pre-AIA application?
For pre-AIA applications (filed before September 16, 2012), an assignee can establish the right to take action by:
- Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or
- Specifying in the papers requesting or taking action that action is being taken pursuant to a specific 37 CFR provision.
According to MPEP 324: “The assignee must establish its ownership of the property to the satisfaction of the Director. The chain of title from the inventor to the assignee must be clearly established.” This typically involves submitting assignment documents or other evidence of ownership to the USPTO.
For more information on assignee rights, visit: assignee rights.
For more information on pre-AIA, visit: pre-AIA.
For more information on USPTO procedures, visit: USPTO procedures.
Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded.
According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may take action in a patent application under 37 CFR 3.73(b) by submitting a statement under 37 CFR 3.73(b) which is signed by a party authorized by the assignee.
This means that even if the assignment is not yet recorded, the assignee can still take action by:
- Submitting a statement under 37 CFR 3.73(b)
- Ensuring the statement is signed by an authorized party
- Including a copy of the assignment document with the statement
However, it’s important to note that the assignment must still be recorded in the USPTO no later than the date of payment of the issue fee. Failure to record the assignment by this deadline could result in the loss of assignee rights.
For more information on assignee rights, visit: assignee rights.
Yes, an assignee can correct a typographical error in an assignment document, but the process depends on the availability of the assignor. According to MPEP 323.01(b):
If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction.
This means that:
- If the assignor is available, they should make the correction or execute a new document.
- If the assignor is not available, the assignee can submit an affidavit or declaration to correct the error.
The assignee must also provide a copy of the originally recorded papers, a cover sheet, and pay the required fee for each application or patent to be corrected, as per 37 CFR 3.41.
To learn more:
Can a patent be issued to an assignee if the assignment is not recorded?
Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met:
- The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b).
- The request must be submitted no later than the date the issue fee is paid.
- The request must include clear evidence of the assignment.
According to MPEP 307: “An assignee who otherwise shows sufficient proprietary interest in the matter may also be entitled to such a patent.” This means that even without a recorded assignment, an assignee can still have the patent issued to them if they can demonstrate their proprietary interest.
For more information on assignee rights, visit: assignee rights.
For more information on patent issuance, visit: patent issuance.
For more information on proprietary interest, visit: proprietary interest.
MPEP 307 - Issue to Non - Applicant Assignee (1)
Can a patent be issued to an assignee if the assignment is not recorded?
Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met:
- The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b).
- The request must be submitted no later than the date the issue fee is paid.
- The request must include clear evidence of the assignment.
According to MPEP 307: “An assignee who otherwise shows sufficient proprietary interest in the matter may also be entitled to such a patent.” This means that even without a recorded assignment, an assignee can still have the patent issued to them if they can demonstrate their proprietary interest.
For more information on assignee rights, visit: assignee rights.
For more information on patent issuance, visit: patent issuance.
For more information on proprietary interest, visit: proprietary interest.
MPEP 400 - Representative of Applicant or Owner (3)
Can an assignee revoke power of attorney in all types of patent applications?
An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:
“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”
This means assignees can revoke power of attorney in:
- Applications involved in interference or derivation proceedings
- National stage applications under 35 U.S.C. 371
For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.
To learn more:
Can an assignee revoke a power of attorney given by the applicant in a patent application?
Yes, an assignee can revoke a power of attorney given by the applicant in a patent application, provided certain conditions are met. According to MPEP 402.07:
“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner.”
This is possible when:
- The assignee has properly become of record pursuant to 37 CFR 3.71.
- The application is involved in an interference or derivation proceeding.
- The application is national stage application filed under 35 U.S.C. 371.
It’s important to note that the assignee must follow proper procedures and file the necessary documents with the USPTO to effectuate this change.
To learn more:
Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:
- The assignee must have originally appointed the withdrawing attorney or agent.
- The assignee becomes recognized by the Office for all purposes in the application.
- The assignee can sign amendments and other papers related to the prosecution.
The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’
It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.
To learn more:
Patent Law (25)
For pre-AIA patent applications (filed before September 16, 2012), the submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. According to MPEP 324, this can be done in several ways:
- A person with apparent authority in the organization, such as an officer (e.g., CEO, president, vice-president, secretary, or treasurer).
- Any person, if the submission clearly states that the person is authorized to act on behalf of the assignee.
- A person empowered by an organizational resolution, if a copy of the resolution is submitted.
The MPEP notes: Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required.
It’s important to ensure that the proper authority is established to avoid delays in patent prosecution.
For more information on assignee rights, visit: assignee rights.
For more information on authorized signatories, visit: authorized signatories.
For more information on pre-AIA applications, visit: pre-AIA applications.
According to MPEP 106.01, only the assignee of record of the entire interest in a patent application can intervene in its prosecution. The MPEP states:
While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant […]
This means that partial assignees, licensees of exclusive rights, or other parties with limited interests cannot intervene in the prosecution process or exclude the original applicant. The right to intervene is reserved exclusively for the assignee who has been recorded as having the entire interest in the application.
For applications filed on or after September 16, 2012, the assignee of the entire interest can also become the applicant under 37 CFR 1.46 and prosecute the application directly.
To learn more:
What is the purpose of Form PTO/AIA/96?
Form PTO/AIA/96 is used to establish the right of an assignee to take action in a patent application filed on or after September 16, 2012. According to the MPEP 325:
“Form PTO/AIA/96 may be used to establish the right of an assignee to take action in an application filed on or after September 16, 2012.”
This form is crucial for assignees who wish to prosecute the application or take other actions on behalf of the inventors. It serves as a declaration that the assignee has the right to take action in the application, which is necessary under 37 CFR 3.71(b).
For more information on assignee rights, visit: assignee rights.
For more information on USPTO Forms, visit: USPTO Forms.
To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either:
- Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence was or is being submitted for recordation.
- Providing a statement specifying where such evidence is recorded in the USPTO (by reel and frame number).
As stated in the MPEP: 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.
This ensures that the assignee has the right to take action in the application.
For more information on assignee rights, visit: assignee rights.
For more information on pre-AIA applications, visit: pre-AIA applications.
For more information on USPTO procedures, visit: USPTO procedures.
To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:
- The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
- A statement affirming that the documentary evidence was or is being submitted for recordation.
- The submission must be signed by a person authorized to act on behalf of the assignee.
This is outlined in pre-AIA 37 CFR 3.73(b), which states:
“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to ยง 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”
For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:
- An assignment document recorded in the USPTO
- A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee
According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on pre-AIA applications, visit: pre-AIA applications.
Assignees of part interest in a patent application have specific inspection rights. According to MPEP 106.01:
[A]n assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.
This means that while assignees of part interest cannot prosecute the application or exclude the applicant from the prosecution process, they do have the right to review and inspect the contents of the patent application. This inspection right allows them to stay informed about the application’s status and content, even though they cannot directly intervene in its prosecution.
To learn more:
The MPEP 106.01 highlights a key difference in assignee rights for patent applications filed before and after September 16, 2012:
- For applications filed before September 16, 2012: The assignee of record of the entire interest can intervene in the prosecution of an application or interference to the exclusion of the applicant.
- For applications filed on or after September 16, 2012: The assignee of record of the entire interest can not only intervene but also prosecute the application after becoming the applicant under 37 CFR 1.46.
For more detailed information, the MPEP directs readers to:
- MPEP ยง 324 for applications filed before September 16, 2012
- MPEP ยง 325 for applications filed on or after September 16, 2012
An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:
- Signing a reply to an Office action
- Requesting a continued prosecution application (CPA)
- Signing a terminal disclaimer
- Submitting a Fee(s) Transmittal form
- Requesting status of an application
- Appointing a registered patent practitioner to prosecute the application
- Granting power to inspect an application
- Consenting to the filing of a reissue application
- Consenting to the correction of inventorship
The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances.
However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.
For more information on assignee rights, visit: assignee rights.
For more information on patent prosecution, visit: patent prosecution.
For more information on pre-AIA applications, visit: pre-AIA applications.
The USPTO verifies an assignee’s right to inspect a patent application through documentation. As per MPEP 106.01, the assignee must provide either a copy of the assignment recorded in the USPTO or other evidence of ownership. This documentation is necessary to establish the assignee’s legal right to access the confidential information contained in the patent application.
The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:
‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’
This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.
For more detailed information on how the AIA affects assignee rights, refer to MPEP ยง 325 for applications filed on or after September 16, 2012.
To establish the right to take action in a patent application filed before September 16, 2012, an assignee must meet the following requirements:
- The assignee must be of the entire right, title, and interest in the application.
- A proper documentary evidence of chain of title from the original owner to the assignee must be submitted.
- The evidence must be recorded in the United States Patent and Trademark Office (USPTO) no later than the date of payment of the issue fee.
As stated in MPEP 324: 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.
It’s important to note that these requirements are specific to applications filed before September 16, 2012. Different rules may apply for applications filed on or after this date.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on USPTO, visit: USPTO.
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:
- File a request to change the applicant under 37 CFR 1.46(c)(2)
- File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
- 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.”
The America Invents Act (AIA) introduced changes to assignee prosecution rights for patent applications filed on or after September 16, 2012. According to MPEP 106.01:
[F]or applications filed on or after September 16, 2012, [the assignee of record of the entire interest] can prosecute the application after becoming the applicant under 37 CFR 1.46.
This change allows the assignee of the entire interest to become the applicant and prosecute the application directly. For more detailed information:
- For applications filed before September 16, 2012, refer to MPEP ยง 324
- For applications filed on or after September 16, 2012, refer to MPEP ยง 325
To learn more:
How can an assignee establish the right to take action in a pre-AIA application?
For pre-AIA applications (filed before September 16, 2012), an assignee can establish the right to take action by:
- Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or
- Specifying in the papers requesting or taking action that action is being taken pursuant to a specific 37 CFR provision.
According to MPEP 324: “The assignee must establish its ownership of the property to the satisfaction of the Director. The chain of title from the inventor to the assignee must be clearly established.” This typically involves submitting assignment documents or other evidence of ownership to the USPTO.
For more information on assignee rights, visit: assignee rights.
For more information on pre-AIA, visit: pre-AIA.
For more information on USPTO procedures, visit: USPTO procedures.
Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant.
If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is entitled to claim priority to the foreign application.
If the U.S. application and the certified copy do not name the same inventor or have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. [MPEP 216]
Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded.
According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may take action in a patent application under 37 CFR 3.73(b) by submitting a statement under 37 CFR 3.73(b) which is signed by a party authorized by the assignee.
This means that even if the assignment is not yet recorded, the assignee can still take action by:
- Submitting a statement under 37 CFR 3.73(b)
- Ensuring the statement is signed by an authorized party
- Including a copy of the assignment document with the statement
However, it’s important to note that the assignment must still be recorded in the USPTO no later than the date of payment of the issue fee. Failure to record the assignment by this deadline could result in the loss of assignee rights.
For more information on assignee rights, visit: assignee rights.
Can an assignee revoke power of attorney in all types of patent applications?
An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:
“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”
This means assignees can revoke power of attorney in:
- Applications involved in interference or derivation proceedings
- National stage applications under 35 U.S.C. 371
For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.
To learn more:
Can an assignee revoke a power of attorney given by the applicant in a patent application?
Yes, an assignee can revoke a power of attorney given by the applicant in a patent application, provided certain conditions are met. According to MPEP 402.07:
“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner.”
This is possible when:
- The assignee has properly become of record pursuant to 37 CFR 3.71.
- The application is involved in an interference or derivation proceeding.
- The application is national stage application filed under 35 U.S.C. 371.
It’s important to note that the assignee must follow proper procedures and file the necessary documents with the USPTO to effectuate this change.
To learn more:
No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.
The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.
Yes, an assignee can correct a typographical error in an assignment document, but the process depends on the availability of the assignor. According to MPEP 323.01(b):
If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction.
This means that:
- If the assignor is available, they should make the correction or execute a new document.
- If the assignor is not available, the assignee can submit an affidavit or declaration to correct the error.
The assignee must also provide a copy of the originally recorded papers, a cover sheet, and pay the required fee for each application or patent to be corrected, as per 37 CFR 3.41.
To learn more:
Yes, an assignee of record of the entire interest in a patent application can control access to it. According to MPEP 106, “The applicant or assignee of record of the entire interest in an application may file an application or intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice.” This means that the assignee can manage the application’s prosecution and potentially limit access to it.
However, it’s important to note that “Such an application filing or intervention, however, does not exclude the inventor from access to the application to see that it is being prosecuted properly, unless the applicant or assignee makes specific request to that effect.” Any request to prevent the inventor’s access must be filed separately and directed to the Office of Petitions.
For more information on assignee rights, visit: assignee rights.
For more information on inventor access, visit: inventor access.
For more information on Office of Petitions, visit: Office of Petitions.
Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:
- The assignee must have originally appointed the withdrawing attorney or agent.
- The assignee becomes recognized by the Office for all purposes in the application.
- The assignee can sign amendments and other papers related to the prosecution.
The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’
It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.
To learn more:
Yes, the applicant or assignee of record of the entire interest in an application can make a specific request to prevent the inventor from obtaining access to the application file. This request should be filed as a separate paper under 37 CFR 1.4(c) and directed to the Office of Petitions. If granted, the inventor will only be permitted to inspect the application upon sufficient showing of why it is necessary to preserve their rights.
Any request to prevent the inventor from obtaining access to the file should be filed as a separate paper, 37 CFR 1.4(c), and should be directed to the Office of Petitions. If the request is granted, the inventor will be informed that he or she will only be permitted to inspect the application on sufficient showing why such inspection is necessary to conserve his or her rights.
Can a patent be issued to an assignee if the assignment is not recorded?
Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met:
- The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b).
- The request must be submitted no later than the date the issue fee is paid.
- The request must include clear evidence of the assignment.
According to MPEP 307: “An assignee who otherwise shows sufficient proprietary interest in the matter may also be entitled to such a patent.” This means that even without a recorded assignment, an assignee can still have the patent issued to them if they can demonstrate their proprietary interest.
For more information on assignee rights, visit: assignee rights.
For more information on patent issuance, visit: patent issuance.
For more information on proprietary interest, visit: proprietary interest.
Patent Procedure (24)
For pre-AIA patent applications (filed before September 16, 2012), the submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. According to MPEP 324, this can be done in several ways:
- A person with apparent authority in the organization, such as an officer (e.g., CEO, president, vice-president, secretary, or treasurer).
- Any person, if the submission clearly states that the person is authorized to act on behalf of the assignee.
- A person empowered by an organizational resolution, if a copy of the resolution is submitted.
The MPEP notes: Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required.
It’s important to ensure that the proper authority is established to avoid delays in patent prosecution.
For more information on assignee rights, visit: assignee rights.
For more information on authorized signatories, visit: authorized signatories.
For more information on pre-AIA applications, visit: pre-AIA applications.
According to MPEP 106.01, only the assignee of record of the entire interest in a patent application can intervene in its prosecution. The MPEP states:
While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant […]
This means that partial assignees, licensees of exclusive rights, or other parties with limited interests cannot intervene in the prosecution process or exclude the original applicant. The right to intervene is reserved exclusively for the assignee who has been recorded as having the entire interest in the application.
For applications filed on or after September 16, 2012, the assignee of the entire interest can also become the applicant under 37 CFR 1.46 and prosecute the application directly.
To learn more:
What is the purpose of Form PTO/AIA/96?
Form PTO/AIA/96 is used to establish the right of an assignee to take action in a patent application filed on or after September 16, 2012. According to the MPEP 325:
“Form PTO/AIA/96 may be used to establish the right of an assignee to take action in an application filed on or after September 16, 2012.”
This form is crucial for assignees who wish to prosecute the application or take other actions on behalf of the inventors. It serves as a declaration that the assignee has the right to take action in the application, which is necessary under 37 CFR 3.71(b).
For more information on assignee rights, visit: assignee rights.
For more information on USPTO Forms, visit: USPTO Forms.
To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either:
- Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence was or is being submitted for recordation.
- Providing a statement specifying where such evidence is recorded in the USPTO (by reel and frame number).
As stated in the MPEP: 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.
This ensures that the assignee has the right to take action in the application.
For more information on assignee rights, visit: assignee rights.
For more information on pre-AIA applications, visit: pre-AIA applications.
For more information on USPTO procedures, visit: USPTO procedures.
To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:
- The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
- A statement affirming that the documentary evidence was or is being submitted for recordation.
- The submission must be signed by a person authorized to act on behalf of the assignee.
This is outlined in pre-AIA 37 CFR 3.73(b), which states:
“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to ยง 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”
For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:
- An assignment document recorded in the USPTO
- A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee
According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on pre-AIA applications, visit: pre-AIA applications.
Assignees of part interest in a patent application have specific inspection rights. According to MPEP 106.01:
[A]n assignee of a part interest or a licensee of exclusive right is entitled to inspect the application.
This means that while assignees of part interest cannot prosecute the application or exclude the applicant from the prosecution process, they do have the right to review and inspect the contents of the patent application. This inspection right allows them to stay informed about the application’s status and content, even though they cannot directly intervene in its prosecution.
To learn more:
The MPEP 106.01 highlights a key difference in assignee rights for patent applications filed before and after September 16, 2012:
- For applications filed before September 16, 2012: The assignee of record of the entire interest can intervene in the prosecution of an application or interference to the exclusion of the applicant.
- For applications filed on or after September 16, 2012: The assignee of record of the entire interest can not only intervene but also prosecute the application after becoming the applicant under 37 CFR 1.46.
For more detailed information, the MPEP directs readers to:
- MPEP ยง 324 for applications filed before September 16, 2012
- MPEP ยง 325 for applications filed on or after September 16, 2012
An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include:
- Signing a reply to an Office action
- Requesting a continued prosecution application (CPA)
- Signing a terminal disclaimer
- Submitting a Fee(s) Transmittal form
- Requesting status of an application
- Appointing a registered patent practitioner to prosecute the application
- Granting power to inspect an application
- Consenting to the filing of a reissue application
- Consenting to the correction of inventorship
The MPEP states: The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances.
However, it’s important to note that as of September 16, 2012, juristic entities must be represented by a patent practitioner for most actions.
For more information on assignee rights, visit: assignee rights.
For more information on patent prosecution, visit: patent prosecution.
For more information on pre-AIA applications, visit: pre-AIA applications.
The USPTO verifies an assignee’s right to inspect a patent application through documentation. As per MPEP 106.01, the assignee must provide either a copy of the assignment recorded in the USPTO or other evidence of ownership. This documentation is necessary to establish the assignee’s legal right to access the confidential information contained in the patent application.
The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change:
‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’
This change allows assignees of the entire interest to take a more active role in patent prosecution by becoming the applicant. The AIA aimed to modernize the U.S. patent system and align it more closely with international practices.
For more detailed information on how the AIA affects assignee rights, refer to MPEP ยง 325 for applications filed on or after September 16, 2012.
To establish the right to take action in a patent application filed before September 16, 2012, an assignee must meet the following requirements:
- The assignee must be of the entire right, title, and interest in the application.
- A proper documentary evidence of chain of title from the original owner to the assignee must be submitted.
- The evidence must be recorded in the United States Patent and Trademark Office (USPTO) no later than the date of payment of the issue fee.
As stated in MPEP 324: 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.
It’s important to note that these requirements are specific to applications filed before September 16, 2012. Different rules may apply for applications filed on or after this date.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on USPTO, visit: USPTO.
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:
- File a request to change the applicant under 37 CFR 1.46(c)(2)
- File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
- 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.”
The America Invents Act (AIA) introduced changes to assignee prosecution rights for patent applications filed on or after September 16, 2012. According to MPEP 106.01:
[F]or applications filed on or after September 16, 2012, [the assignee of record of the entire interest] can prosecute the application after becoming the applicant under 37 CFR 1.46.
This change allows the assignee of the entire interest to become the applicant and prosecute the application directly. For more detailed information:
- For applications filed before September 16, 2012, refer to MPEP ยง 324
- For applications filed on or after September 16, 2012, refer to MPEP ยง 325
To learn more:
How can an assignee establish the right to take action in a pre-AIA application?
For pre-AIA applications (filed before September 16, 2012), an assignee can establish the right to take action by:
- Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or
- Specifying in the papers requesting or taking action that action is being taken pursuant to a specific 37 CFR provision.
According to MPEP 324: “The assignee must establish its ownership of the property to the satisfaction of the Director. The chain of title from the inventor to the assignee must be clearly established.” This typically involves submitting assignment documents or other evidence of ownership to the USPTO.
For more information on assignee rights, visit: assignee rights.
For more information on pre-AIA, visit: pre-AIA.
For more information on USPTO procedures, visit: USPTO procedures.
Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant.
If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is entitled to claim priority to the foreign application.
If the U.S. application and the certified copy do not name the same inventor or have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. [MPEP 216]
Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded.
According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may take action in a patent application under 37 CFR 3.73(b) by submitting a statement under 37 CFR 3.73(b) which is signed by a party authorized by the assignee.
This means that even if the assignment is not yet recorded, the assignee can still take action by:
- Submitting a statement under 37 CFR 3.73(b)
- Ensuring the statement is signed by an authorized party
- Including a copy of the assignment document with the statement
However, it’s important to note that the assignment must still be recorded in the USPTO no later than the date of payment of the issue fee. Failure to record the assignment by this deadline could result in the loss of assignee rights.
For more information on assignee rights, visit: assignee rights.
Can an assignee revoke power of attorney in all types of patent applications?
An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:
“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”
This means assignees can revoke power of attorney in:
- Applications involved in interference or derivation proceedings
- National stage applications under 35 U.S.C. 371
For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.
To learn more:
Can an assignee revoke a power of attorney given by the applicant in a patent application?
Yes, an assignee can revoke a power of attorney given by the applicant in a patent application, provided certain conditions are met. According to MPEP 402.07:
“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner.”
This is possible when:
- The assignee has properly become of record pursuant to 37 CFR 3.71.
- The application is involved in an interference or derivation proceeding.
- The application is national stage application filed under 35 U.S.C. 371.
It’s important to note that the assignee must follow proper procedures and file the necessary documents with the USPTO to effectuate this change.
To learn more:
No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the application have the right to access and inspect the application file.
The USPTO recognizes the rights of all interested parties and ensures that no single party can restrict access to the application information. This policy promotes transparency and fairness in the patent examination process.
Yes, an assignee can correct a typographical error in an assignment document, but the process depends on the availability of the assignor. According to MPEP 323.01(b):
If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction.
This means that:
- If the assignor is available, they should make the correction or execute a new document.
- If the assignor is not available, the assignee can submit an affidavit or declaration to correct the error.
The assignee must also provide a copy of the originally recorded papers, a cover sheet, and pay the required fee for each application or patent to be corrected, as per 37 CFR 3.41.
To learn more:
Yes, an assignee of record of the entire interest in a patent application can control access to it. According to MPEP 106, “The applicant or assignee of record of the entire interest in an application may file an application or intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice.” This means that the assignee can manage the application’s prosecution and potentially limit access to it.
However, it’s important to note that “Such an application filing or intervention, however, does not exclude the inventor from access to the application to see that it is being prosecuted properly, unless the applicant or assignee makes specific request to that effect.” Any request to prevent the inventor’s access must be filed separately and directed to the Office of Petitions.
For more information on assignee rights, visit: assignee rights.
For more information on inventor access, visit: inventor access.
For more information on Office of Petitions, visit: Office of Petitions.
Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:
- The assignee must have originally appointed the withdrawing attorney or agent.
- The assignee becomes recognized by the Office for all purposes in the application.
- The assignee can sign amendments and other papers related to the prosecution.
The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’
It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.
To learn more:
Can a patent be issued to an assignee if the assignment is not recorded?
Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met:
- The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b).
- The request must be submitted no later than the date the issue fee is paid.
- The request must include clear evidence of the assignment.
According to MPEP 307: “An assignee who otherwise shows sufficient proprietary interest in the matter may also be entitled to such a patent.” This means that even without a recorded assignment, an assignee can still have the patent issued to them if they can demonstrate their proprietary interest.
For more information on assignee rights, visit: assignee rights.
For more information on patent issuance, visit: patent issuance.
For more information on proprietary interest, visit: proprietary interest.