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 (45)
Submitting legible copies of assignment documents to the USPTO is crucial because the quality of the recorded document depends on the quality of the submitted copy. The USPTO does not improve or enhance the quality of submitted documents.
According to MPEP 302.01: If the copy submitted for recordation is illegible, the recorded document will be illegible.
This means that if you submit an illegible copy, the officially recorded document will also be illegible, potentially causing issues with proving ownership or assignment in the future. To avoid such problems, always ensure that you submit clear, high-quality copies of your assignment documents for recordation.
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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.
Assignment documents are not placed directly in application or patent files to ensure proper recording and management. According to MPEP 318:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This practice serves several purposes:
- It ensures that assignments are properly recorded by the specialized Assignment Division.
- It maintains the integrity and organization of application and patent files.
- It allows for efficient tracking and retrieval of assignment information.
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When submitting assignment documents along with new patent applications, the mailing address is different from the general assignment recordation address. According to MPEP 302.08:
Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
This ensures that your assignment documents are properly associated with the new patent application and processed accordingly by the USPTO.
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The Electronic Patent Assignment System (EPAS) accepts various types of assignment-related documents. As stated in MPEP 302.10:
“The EPAS system allows customers to submit assignments and other documents related to title (e.g., lien agreements, probate documents, licenses, etc.) directly into the automated Patent and Trademark Assignment System.”
This system streamlines the submission process for a wide range of ownership and assignment documents.
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The recording date for a document at the USPTO is the date when the document meeting all recording requirements is filed with the Office. As stated in 37 CFR 3.51, “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.” This means that all necessary criteria, including proper identification and fees, must be met for the document to be officially recorded on that date.
The mailing address for submitting assignment documents depends on whether they are being filed with new applications or not. According to MPEP 302.08:
- For documents not filed with new applications: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450
- For documents filed with new applications: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450
As stated in the MPEP, In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications.
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The correct procedure for submitting assignment documents to the USPTO involves sending them to the Assignment Division for recording, rather than placing them directly in application or patent files. MPEP 318 clearly states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This process ensures that assignment documents are properly recorded and maintained by the appropriate division within the USPTO.
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37 CFR 3.27 is a federal regulation that specifies the mailing address for submitting documents to be recorded at the USPTO. According to MPEP 302.08:
37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office.
This regulation ensures that assignment documents and other recordable documents are sent to the correct address for proper processing. It’s crucial for patent attorneys, inventors, and anyone submitting assignment documents to follow this regulation to avoid delays or misrouting of important legal documents.
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If there’s an error in the recorded assignment document itself (not just the cover sheet), the process is different:
- The party responsible for the error (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it.
- If the assignor is unavailable, the assignee can submit an affidavit or declaration identifying the error and requesting correction.
As stated in MPEP 323.01(b), “The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).”
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.
If you fail to correct and resubmit the returned assignment documents within the specified time period, the USPTO will consider the date of receipt of the corrected papers as the new recording date. The MPEP 317.02 clearly states:
“If the returned papers are not corrected and resubmitted within the specified period, the date of receipt of the corrected papers will be considered to be the date of recording of the document.”
It’s crucial to note that this may affect the priority date of your assignment, potentially impacting your rights. Additionally, the MPEP emphasizes that “The specified period to resubmit the returned papers will not be extended.” Therefore, it’s essential to act promptly when you receive returned documents to avoid losing the benefit of the original filing date.
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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.
The USPTO accepts the following file formats for electronic submission of assignment documents:
- PDF (Portable Document Format)
- TIFF (Tagged Image File Format)
As stated in MPEP 302.10: “The USPTO will accept electronic submissions of assignment documents in TIFF or PDF format.” It’s important to note that these formats are chosen for their ability to preserve document integrity and ensure long-term accessibility.
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MPEP 303 states that certified copies of patent applications as filed do not include an indication of assignment documents. The section specifically notes:
“Certified copies of patent applications as filed do not include an indication of assignment documents.” (MPEP 303)
This means that if an applicant wants to have proof of assignment documents, they need to request this separately.
According to MPEP 318, assignment documents submitted for recording should not be placed directly in application or patent files. The section states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This means that when assignment documents are submitted, they should be sent to the Assignment Division for proper recording rather than being inserted into the application or patent files themselves.
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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.
What are the requirements for faxed assignment documents to be recorded at the USPTO?
For faxed assignment documents to be recorded at the USPTO, they must meet the following requirements:
- The document must be legible and capable of being reproduced in legible form.
- The fax must include a cover sheet with the sender’s name, address, and telephone number.
- Payment of the recording fee must be included or authorized.
- The fax should be sent to the specific fax number designated for assignment submissions.
As stated in MPEP 302.09: “The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.” This means that the fax transmission must be complete and received by the USPTO to be considered officially submitted.
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What are the requirements for facsimile submission of assignment documents to the USPTO?
The USPTO has specific requirements for facsimile submission of assignment documents:
- The facsimile must be legible and complete.
- The document should be submitted to the Assignment Recordation Branch at the designated fax number.
- A cover sheet must accompany the submission, stating the total number of pages, including the cover sheet.
- The original document is not required unless specifically requested by the Office.
As stated in MPEP 302.09: “The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.”
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For paper or facsimile submissions of patent assignment documents to the USPTO, the following requirements apply:
- Either a copy of the original document or an extract of the original document must be submitted
- Only one side of each page may be used
- Paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4)
- A 2.5 cm (one-inch) margin must be present on all sides
- The paper should be flexible, strong white, non-shiny, and durable
As stated in 37 CFR 3.24(b): For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used.
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For electronic submissions of assignment documents, the USPTO requires:
- Either a copy of the original document or an extract of the original document
- Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format
- When printed to paper size of 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible
- A 2.5 cm (one-inch) margin must be present 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.
To learn more:
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.”
What are the benefits of using EPAS for assignment submissions?
The Electronic Patent Assignment System (EPAS) offers several advantages for submitting assignment documents:
- 24/7 availability for submissions
- Immediate confirmation of receipt
- Faster processing times compared to paper submissions
- Reduced risk of errors through guided data entry
- Ability to save and resume incomplete submissions
The MPEP 302.10 states, ‘Assignment documents can be electronically submitted via the Electronic Patent Assignment System (EPAS) by registered ePAS users.’ This system streamlines the assignment process and improves efficiency for both applicants and the USPTO.
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Electronically submitting assignment documents to the USPTO offers several benefits:
- Faster Processing: Electronic submissions are typically processed more quickly than paper submissions.
- Immediate Confirmation: You receive immediate confirmation of your submission.
- Cost-Effective: No mailing costs or delays associated with physical delivery.
- 24/7 Availability: You can submit documents at any time, not limited to office hours.
- Reduced Risk of Loss: Electronic submissions minimize the risk of documents being lost in transit.
- Environmentally Friendly: Reduces paper usage and associated environmental impacts.
The MPEP 302.10 states: “Assignment documents can be submitted to the Office electronically via the Office’s Electronic Patent Assignment System (EPAS).” This system is designed to streamline the submission process and provide these benefits to patent applicants and owners.
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Assignment documents submitted by mail for recordation should be addressed according to MPEP 302.08 and 37 CFR 3.27. The MPEP states:
Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.
This ensures that your documents are properly routed and processed by the USPTO.
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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.'”
How is the receipt date determined for faxed assignment documents at the USPTO?
The determination of the receipt date for faxed assignment documents at the USPTO is crucial for establishing priority and effective dates. According to MPEP 302.09:
“The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.”
This means that:
- The receipt date is when the entire document has been successfully transmitted and received by the USPTO.
- Partial transmissions or incomplete faxes will not establish a receipt date.
- The time zone of the USPTO (Eastern Time) is used for determining the date.
- If a transmission is completed after business hours, the next business day may be considered the receipt date.
It’s important to ensure that the fax transmission is complete and to keep confirmation records of the transmission for your files.
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The USPTO maintains a clear separation between assignment documents and patent files to ensure proper organization and management of records. MPEP 318 specifies:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This separation is maintained by:
- Directing assignment documents to the Assignment Division instead of application or patent files
- Keeping a separate database for assignment records
- Ensuring that patent examiners and other USPTO personnel refer to the Assignment Division for ownership information
- Maintaining distinct processes for handling assignments and patent prosecution
This approach helps in preserving the integrity of both assignment records and patent files while facilitating efficient access to ownership information when needed.
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The USPTO recognizes and accepts electronic signatures on assignment documents submitted electronically. According to MPEP 302.10:
“The USPTO will accept electronic signatures on documents submitted electronically.”
This means that assignors and assignees can use various forms of electronic signatures, such as:
- Typed names
- Digital signatures
- Scanned images of handwritten signatures
It’s important to ensure that the electronic signature complies with the USPTO’s requirements and is legally binding. The specific requirements for electronic signatures are outlined in MPEP 502.02.
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MPEP 318 provides clear guidance to patent examiners on how to handle assignment documents. The section states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This instruction serves to:
- Remind examiners not to include assignment documents in the main application file
- Direct examiners to forward any received assignment documents to the Assignment Division
- Ensure that the proper procedures for recording assignments are followed
- Maintain the separation between technical examination and ownership recording
By following this guidance, patent examiners help maintain the integrity of both the application files and the assignment records.
How do I submit supporting documents for electronic assignment submissions?
When submitting assignment documents electronically, you can include supporting documents as follows:
- Upload supporting documents as separate PDF files along with the main assignment document.
- Ensure each supporting document is less than 25 MB in size.
- Include a brief description for each supporting document during the submission process.
According to MPEP 302.10, ‘Supporting documents can be submitted as PDF files via EFS-Web and EPAS.’ This allows for a comprehensive submission of all relevant materials related to the assignment.
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The USPTO provides an electronic system for submitting assignment documents. According to MPEP 302.10:
“Assignment documents can be submitted electronically via the Office’s Electronic Patent Assignment System (EPAS).”
EPAS allows for convenient and efficient submission of assignment documents directly to the USPTO.
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To ensure your corrected assignment documents are considered timely submitted, the USPTO provides two methods as outlined in MPEP 317.02:
- Use the certification procedure under 37 CFR 1.8 (see MPEP ยง 512)
- Use the “Priority Mail Expressยฎ” procedure under 37 CFR 1.10 (see MPEP ยง 513)
The MPEP states:
“The certification procedure under 37 CFR 1.8 (see MPEP ยง 512) or the “Priority Mail Expressยฎ” procedure under 37 CFR 1.10 (see MPEP ยง 513) may be used for resubmissions of returned papers to obtain the benefit of the date of deposit in the United States Postal Service to establish that the papers were returned within the time period specified.”
By using either of these methods, you can establish that your corrected documents were submitted within the specified time period, thus maintaining the original receipt date as the recording date of the document.
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If your assignment documents or cover sheets are returned by the Assignment Division, you can correct and resubmit them within a specified time period to maintain the original receipt date. The USPTO states:
“Assignment documents and cover sheets, or copies of the same, which are returned by Assignment Division will be stamped with the original date of receipt by the Office and will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document.”
To ensure timely resubmission, you can use either:
- The certification procedure under 37 CFR 1.8 (see MPEP ยง 512)
- The “Priority Mail Expressยฎ” procedure under 37 CFR 1.10 (see MPEP ยง 513)
It’s important to note that the specified period for resubmission will not be extended, so prompt action is crucial.
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According to MPEP 303, applicants who want information about assignment documents must take specific steps:
- Request separately certified copies of assignment documents
- Submit the fees required by 37 CFR 1.19
The MPEP states:
“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)
No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.
For more information on assignment documents, visit: assignment documents.
For more information on certified copies, visit: certified copies.
For more information on patent applications, visit: patent applications.
For more information on USPTO, visit: USPTO.
No, the period for resubmitting corrected assignment documents cannot be extended. The MPEP 317.02 is explicit on this point:
“The specified period to resubmit the returned papers will not be extended.”
This strict policy underscores the importance of promptly addressing any issues with returned assignment documents. Failing to meet the specified deadline will result in the loss of the original receipt date as the recording date for the document. Instead, the USPTO will use the date they receive the corrected papers as the new recording date. This change can potentially affect the priority of your assignment and impact your intellectual property rights. Therefore, it’s crucial to carefully review any returned documents and act quickly to make the necessary corrections and resubmit within the given timeframe.
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The USPTO does not grant partial access to assignment documents. According to MPEP 301.01:
The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.
This policy ensures transparency and prevents selective disclosure of information. It’s important to note that this approach can have implications for documents that contain both public and potentially confidential information. For example:
- If a document covers both a trademark and a patent application, the entire document becomes public.
- If a document covers multiple patent applications, it becomes public as soon as any one of the applications is published or patented.
This policy underscores the importance of carefully considering what information is included in assignment documents, particularly when dealing with a mix of public and non-public intellectual property rights.
For more information on assignment documents, visit: assignment documents.
For more information on public inspection, visit: public inspection.
For more information on USPTO policy, visit: USPTO policy.
No, you cannot use both sides of the paper when submitting assignment documents to the USPTO. For paper or facsimile submissions, only one side of each page may be used.
As stated in 37 CFR 3.24(b): Only one side of each page may be used.
This requirement ensures that all information is clearly visible and can be properly scanned and recorded by the USPTO. Using both sides of the paper could result in missed information or difficulties in processing your document.
To learn more:
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 still submit assignment documents by mail to the USPTO, although electronic submission is strongly encouraged. If you choose to submit by mail, send your documents to:
Mail Stop Assignment Recordation Services
Director of the USPTO
P.O. Box 1450
Alexandria, VA 22313-1450
However, as noted in MPEP 302.10: “The Office strongly encourages electronic filing of assignment documents using EPAS, because assignment documents filed electronically are recorded faster and are less likely to become lost or misplaced.” Therefore, while mail submission is an option, electronic submission through EPAS is preferable for faster and more secure processing.
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No, the USPTO does not allow partial access to patent assignment documents. According to MPEP 301.01:
“The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.”
This means:
- If a document covers both a trademark and a patent, it will be entirely available to the public from the beginning.
- If it covers multiple patent applications, it becomes publicly available as soon as any one of them is published or patented.
The policy ensures transparency and consistency in the handling of assignment documents.
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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.
MPEP 301-Ownership/Assignability of Patents and Applications (1)
The USPTO does not grant partial access to assignment documents. According to MPEP 301.01:
The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.
This policy ensures transparency and prevents selective disclosure of information. It’s important to note that this approach can have implications for documents that contain both public and potentially confidential information. For example:
- If a document covers both a trademark and a patent application, the entire document becomes public.
- If a document covers multiple patent applications, it becomes public as soon as any one of the applications is published or patented.
This policy underscores the importance of carefully considering what information is included in assignment documents, particularly when dealing with a mix of public and non-public intellectual property rights.
For more information on assignment documents, visit: assignment documents.
For more information on public inspection, visit: public inspection.
For more information on USPTO policy, visit: USPTO policy.
MPEP 302 - Recording of Assignment Documents (10)
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.
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 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.
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.”
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.'”
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.
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.
MPEP 303 - Assignment Documents Not Endorsed on Pending Applications (3)
MPEP 303 states that certified copies of patent applications as filed do not include an indication of assignment documents. The section specifically notes:
“Certified copies of patent applications as filed do not include an indication of assignment documents.” (MPEP 303)
This means that if an applicant wants to have proof of assignment documents, they need to request this separately.
According to MPEP 303, applicants who want information about assignment documents must take specific steps:
- Request separately certified copies of assignment documents
- Submit the fees required by 37 CFR 1.19
The MPEP states:
“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)
No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.
For more information on assignment documents, visit: assignment documents.
For more information on certified copies, visit: certified copies.
For more information on patent applications, visit: patent applications.
For more information on USPTO, visit: USPTO.
MPEP 317 - Handling of Documents in the Assignment Division (1)
The recording date for a document at the USPTO is the date when the document meeting all recording requirements is filed with the Office. As stated in 37 CFR 3.51, “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.” This means that all necessary criteria, including proper identification and fees, must be met for the document to be officially recorded on that date.
MPEP 318 - Documents Not to be Placed in Files (5)
Assignment documents are not placed directly in application or patent files to ensure proper recording and management. According to MPEP 318:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This practice serves several purposes:
- It ensures that assignments are properly recorded by the specialized Assignment Division.
- It maintains the integrity and organization of application and patent files.
- It allows for efficient tracking and retrieval of assignment information.
To learn more:
The correct procedure for submitting assignment documents to the USPTO involves sending them to the Assignment Division for recording, rather than placing them directly in application or patent files. MPEP 318 clearly states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This process ensures that assignment documents are properly recorded and maintained by the appropriate division within the USPTO.
To learn more:
According to MPEP 318, assignment documents submitted for recording should not be placed directly in application or patent files. The section states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This means that when assignment documents are submitted, they should be sent to the Assignment Division for proper recording rather than being inserted into the application or patent files themselves.
To learn more:
The USPTO maintains a clear separation between assignment documents and patent files to ensure proper organization and management of records. MPEP 318 specifies:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This separation is maintained by:
- Directing assignment documents to the Assignment Division instead of application or patent files
- Keeping a separate database for assignment records
- Ensuring that patent examiners and other USPTO personnel refer to the Assignment Division for ownership information
- Maintaining distinct processes for handling assignments and patent prosecution
This approach helps in preserving the integrity of both assignment records and patent files while facilitating efficient access to ownership information when needed.
To learn more:
MPEP 318 provides clear guidance to patent examiners on how to handle assignment documents. The section states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This instruction serves to:
- Remind examiners not to include assignment documents in the main application file
- Direct examiners to forward any received assignment documents to the Assignment Division
- Ensure that the proper procedures for recording assignments are followed
- Maintain the separation between technical examination and ownership recording
By following this guidance, patent examiners help maintain the integrity of both the application files and the assignment records.
MPEP 323 - Procedures for Correcting Errors in Recorded Assignment Document (1)
If there’s an error in the recorded assignment document itself (not just the cover sheet), the process is different:
- The party responsible for the error (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it.
- If the assignor is unavailable, the assignee can submit an affidavit or declaration identifying the error and requesting correction.
As stated in MPEP 323.01(b), “The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).”
Patent Law (45)
Submitting legible copies of assignment documents to the USPTO is crucial because the quality of the recorded document depends on the quality of the submitted copy. The USPTO does not improve or enhance the quality of submitted documents.
According to MPEP 302.01: If the copy submitted for recordation is illegible, the recorded document will be illegible.
This means that if you submit an illegible copy, the officially recorded document will also be illegible, potentially causing issues with proving ownership or assignment in the future. To avoid such problems, always ensure that you submit clear, high-quality copies of your assignment documents for recordation.
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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.
Assignment documents are not placed directly in application or patent files to ensure proper recording and management. According to MPEP 318:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This practice serves several purposes:
- It ensures that assignments are properly recorded by the specialized Assignment Division.
- It maintains the integrity and organization of application and patent files.
- It allows for efficient tracking and retrieval of assignment information.
To learn more:
When submitting assignment documents along with new patent applications, the mailing address is different from the general assignment recordation address. According to MPEP 302.08:
Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
This ensures that your assignment documents are properly associated with the new patent application and processed accordingly by the USPTO.
To learn more:
The Electronic Patent Assignment System (EPAS) accepts various types of assignment-related documents. As stated in MPEP 302.10:
“The EPAS system allows customers to submit assignments and other documents related to title (e.g., lien agreements, probate documents, licenses, etc.) directly into the automated Patent and Trademark Assignment System.”
This system streamlines the submission process for a wide range of ownership and assignment documents.
To learn more:
The recording date for a document at the USPTO is the date when the document meeting all recording requirements is filed with the Office. As stated in 37 CFR 3.51, “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.” This means that all necessary criteria, including proper identification and fees, must be met for the document to be officially recorded on that date.
The mailing address for submitting assignment documents depends on whether they are being filed with new applications or not. According to MPEP 302.08:
- For documents not filed with new applications: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450
- For documents filed with new applications: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450
As stated in the MPEP, In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications.
To learn more:
The correct procedure for submitting assignment documents to the USPTO involves sending them to the Assignment Division for recording, rather than placing them directly in application or patent files. MPEP 318 clearly states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This process ensures that assignment documents are properly recorded and maintained by the appropriate division within the USPTO.
To learn more:
37 CFR 3.27 is a federal regulation that specifies the mailing address for submitting documents to be recorded at the USPTO. According to MPEP 302.08:
37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office.
This regulation ensures that assignment documents and other recordable documents are sent to the correct address for proper processing. It’s crucial for patent attorneys, inventors, and anyone submitting assignment documents to follow this regulation to avoid delays or misrouting of important legal documents.
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If there’s an error in the recorded assignment document itself (not just the cover sheet), the process is different:
- The party responsible for the error (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it.
- If the assignor is unavailable, the assignee can submit an affidavit or declaration identifying the error and requesting correction.
As stated in MPEP 323.01(b), “The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).”
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.
If you fail to correct and resubmit the returned assignment documents within the specified time period, the USPTO will consider the date of receipt of the corrected papers as the new recording date. The MPEP 317.02 clearly states:
“If the returned papers are not corrected and resubmitted within the specified period, the date of receipt of the corrected papers will be considered to be the date of recording of the document.”
It’s crucial to note that this may affect the priority date of your assignment, potentially impacting your rights. Additionally, the MPEP emphasizes that “The specified period to resubmit the returned papers will not be extended.” Therefore, it’s essential to act promptly when you receive returned documents to avoid losing the benefit of the original filing date.
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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.
The USPTO accepts the following file formats for electronic submission of assignment documents:
- PDF (Portable Document Format)
- TIFF (Tagged Image File Format)
As stated in MPEP 302.10: “The USPTO will accept electronic submissions of assignment documents in TIFF or PDF format.” It’s important to note that these formats are chosen for their ability to preserve document integrity and ensure long-term accessibility.
To learn more:
MPEP 303 states that certified copies of patent applications as filed do not include an indication of assignment documents. The section specifically notes:
“Certified copies of patent applications as filed do not include an indication of assignment documents.” (MPEP 303)
This means that if an applicant wants to have proof of assignment documents, they need to request this separately.
According to MPEP 318, assignment documents submitted for recording should not be placed directly in application or patent files. The section states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This means that when assignment documents are submitted, they should be sent to the Assignment Division for proper recording rather than being inserted into the application or patent files themselves.
To learn more:
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.
What are the requirements for faxed assignment documents to be recorded at the USPTO?
For faxed assignment documents to be recorded at the USPTO, they must meet the following requirements:
- The document must be legible and capable of being reproduced in legible form.
- The fax must include a cover sheet with the sender’s name, address, and telephone number.
- Payment of the recording fee must be included or authorized.
- The fax should be sent to the specific fax number designated for assignment submissions.
As stated in MPEP 302.09: “The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.” This means that the fax transmission must be complete and received by the USPTO to be considered officially submitted.
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What are the requirements for facsimile submission of assignment documents to the USPTO?
The USPTO has specific requirements for facsimile submission of assignment documents:
- The facsimile must be legible and complete.
- The document should be submitted to the Assignment Recordation Branch at the designated fax number.
- A cover sheet must accompany the submission, stating the total number of pages, including the cover sheet.
- The original document is not required unless specifically requested by the Office.
As stated in MPEP 302.09: “The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.”
To learn more:
For paper or facsimile submissions of patent assignment documents to the USPTO, the following requirements apply:
- Either a copy of the original document or an extract of the original document must be submitted
- Only one side of each page may be used
- Paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4)
- A 2.5 cm (one-inch) margin must be present on all sides
- The paper should be flexible, strong white, non-shiny, and durable
As stated in 37 CFR 3.24(b): For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used.
To learn more:
For electronic submissions of assignment documents, the USPTO requires:
- Either a copy of the original document or an extract of the original document
- Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format
- When printed to paper size of 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible
- A 2.5 cm (one-inch) margin must be present 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.
To learn more:
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.”
What are the benefits of using EPAS for assignment submissions?
The Electronic Patent Assignment System (EPAS) offers several advantages for submitting assignment documents:
- 24/7 availability for submissions
- Immediate confirmation of receipt
- Faster processing times compared to paper submissions
- Reduced risk of errors through guided data entry
- Ability to save and resume incomplete submissions
The MPEP 302.10 states, ‘Assignment documents can be electronically submitted via the Electronic Patent Assignment System (EPAS) by registered ePAS users.’ This system streamlines the assignment process and improves efficiency for both applicants and the USPTO.
To learn more:
Electronically submitting assignment documents to the USPTO offers several benefits:
- Faster Processing: Electronic submissions are typically processed more quickly than paper submissions.
- Immediate Confirmation: You receive immediate confirmation of your submission.
- Cost-Effective: No mailing costs or delays associated with physical delivery.
- 24/7 Availability: You can submit documents at any time, not limited to office hours.
- Reduced Risk of Loss: Electronic submissions minimize the risk of documents being lost in transit.
- Environmentally Friendly: Reduces paper usage and associated environmental impacts.
The MPEP 302.10 states: “Assignment documents can be submitted to the Office electronically via the Office’s Electronic Patent Assignment System (EPAS).” This system is designed to streamline the submission process and provide these benefits to patent applicants and owners.
To learn more:
Assignment documents submitted by mail for recordation should be addressed according to MPEP 302.08 and 37 CFR 3.27. The MPEP states:
Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.
This ensures that your documents are properly routed and processed by the USPTO.
To learn more:
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.'”
How is the receipt date determined for faxed assignment documents at the USPTO?
The determination of the receipt date for faxed assignment documents at the USPTO is crucial for establishing priority and effective dates. According to MPEP 302.09:
“The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.”
This means that:
- The receipt date is when the entire document has been successfully transmitted and received by the USPTO.
- Partial transmissions or incomplete faxes will not establish a receipt date.
- The time zone of the USPTO (Eastern Time) is used for determining the date.
- If a transmission is completed after business hours, the next business day may be considered the receipt date.
It’s important to ensure that the fax transmission is complete and to keep confirmation records of the transmission for your files.
To learn more:
The USPTO maintains a clear separation between assignment documents and patent files to ensure proper organization and management of records. MPEP 318 specifies:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This separation is maintained by:
- Directing assignment documents to the Assignment Division instead of application or patent files
- Keeping a separate database for assignment records
- Ensuring that patent examiners and other USPTO personnel refer to the Assignment Division for ownership information
- Maintaining distinct processes for handling assignments and patent prosecution
This approach helps in preserving the integrity of both assignment records and patent files while facilitating efficient access to ownership information when needed.
To learn more:
The USPTO recognizes and accepts electronic signatures on assignment documents submitted electronically. According to MPEP 302.10:
“The USPTO will accept electronic signatures on documents submitted electronically.”
This means that assignors and assignees can use various forms of electronic signatures, such as:
- Typed names
- Digital signatures
- Scanned images of handwritten signatures
It’s important to ensure that the electronic signature complies with the USPTO’s requirements and is legally binding. The specific requirements for electronic signatures are outlined in MPEP 502.02.
To learn more:
MPEP 318 provides clear guidance to patent examiners on how to handle assignment documents. The section states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This instruction serves to:
- Remind examiners not to include assignment documents in the main application file
- Direct examiners to forward any received assignment documents to the Assignment Division
- Ensure that the proper procedures for recording assignments are followed
- Maintain the separation between technical examination and ownership recording
By following this guidance, patent examiners help maintain the integrity of both the application files and the assignment records.
How do I submit supporting documents for electronic assignment submissions?
When submitting assignment documents electronically, you can include supporting documents as follows:
- Upload supporting documents as separate PDF files along with the main assignment document.
- Ensure each supporting document is less than 25 MB in size.
- Include a brief description for each supporting document during the submission process.
According to MPEP 302.10, ‘Supporting documents can be submitted as PDF files via EFS-Web and EPAS.’ This allows for a comprehensive submission of all relevant materials related to the assignment.
To learn more:
The USPTO provides an electronic system for submitting assignment documents. According to MPEP 302.10:
“Assignment documents can be submitted electronically via the Office’s Electronic Patent Assignment System (EPAS).”
EPAS allows for convenient and efficient submission of assignment documents directly to the USPTO.
To learn more:
To ensure your corrected assignment documents are considered timely submitted, the USPTO provides two methods as outlined in MPEP 317.02:
- Use the certification procedure under 37 CFR 1.8 (see MPEP ยง 512)
- Use the “Priority Mail Expressยฎ” procedure under 37 CFR 1.10 (see MPEP ยง 513)
The MPEP states:
“The certification procedure under 37 CFR 1.8 (see MPEP ยง 512) or the “Priority Mail Expressยฎ” procedure under 37 CFR 1.10 (see MPEP ยง 513) may be used for resubmissions of returned papers to obtain the benefit of the date of deposit in the United States Postal Service to establish that the papers were returned within the time period specified.”
By using either of these methods, you can establish that your corrected documents were submitted within the specified time period, thus maintaining the original receipt date as the recording date of the document.
To learn more:
If your assignment documents or cover sheets are returned by the Assignment Division, you can correct and resubmit them within a specified time period to maintain the original receipt date. The USPTO states:
“Assignment documents and cover sheets, or copies of the same, which are returned by Assignment Division will be stamped with the original date of receipt by the Office and will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document.”
To ensure timely resubmission, you can use either:
- The certification procedure under 37 CFR 1.8 (see MPEP ยง 512)
- The “Priority Mail Expressยฎ” procedure under 37 CFR 1.10 (see MPEP ยง 513)
It’s important to note that the specified period for resubmission will not be extended, so prompt action is crucial.
To learn more:
According to MPEP 303, applicants who want information about assignment documents must take specific steps:
- Request separately certified copies of assignment documents
- Submit the fees required by 37 CFR 1.19
The MPEP states:
“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)
No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.
For more information on assignment documents, visit: assignment documents.
For more information on certified copies, visit: certified copies.
For more information on patent applications, visit: patent applications.
For more information on USPTO, visit: USPTO.
No, the period for resubmitting corrected assignment documents cannot be extended. The MPEP 317.02 is explicit on this point:
“The specified period to resubmit the returned papers will not be extended.”
This strict policy underscores the importance of promptly addressing any issues with returned assignment documents. Failing to meet the specified deadline will result in the loss of the original receipt date as the recording date for the document. Instead, the USPTO will use the date they receive the corrected papers as the new recording date. This change can potentially affect the priority of your assignment and impact your intellectual property rights. Therefore, it’s crucial to carefully review any returned documents and act quickly to make the necessary corrections and resubmit within the given timeframe.
To learn more:
The USPTO does not grant partial access to assignment documents. According to MPEP 301.01:
The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.
This policy ensures transparency and prevents selective disclosure of information. It’s important to note that this approach can have implications for documents that contain both public and potentially confidential information. For example:
- If a document covers both a trademark and a patent application, the entire document becomes public.
- If a document covers multiple patent applications, it becomes public as soon as any one of the applications is published or patented.
This policy underscores the importance of carefully considering what information is included in assignment documents, particularly when dealing with a mix of public and non-public intellectual property rights.
For more information on assignment documents, visit: assignment documents.
For more information on public inspection, visit: public inspection.
For more information on USPTO policy, visit: USPTO policy.
No, you cannot use both sides of the paper when submitting assignment documents to the USPTO. For paper or facsimile submissions, only one side of each page may be used.
As stated in 37 CFR 3.24(b): Only one side of each page may be used.
This requirement ensures that all information is clearly visible and can be properly scanned and recorded by the USPTO. Using both sides of the paper could result in missed information or difficulties in processing your document.
To learn more:
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 still submit assignment documents by mail to the USPTO, although electronic submission is strongly encouraged. If you choose to submit by mail, send your documents to:
Mail Stop Assignment Recordation Services
Director of the USPTO
P.O. Box 1450
Alexandria, VA 22313-1450
However, as noted in MPEP 302.10: “The Office strongly encourages electronic filing of assignment documents using EPAS, because assignment documents filed electronically are recorded faster and are less likely to become lost or misplaced.” Therefore, while mail submission is an option, electronic submission through EPAS is preferable for faster and more secure processing.
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No, the USPTO does not allow partial access to patent assignment documents. According to MPEP 301.01:
“The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.”
This means:
- If a document covers both a trademark and a patent, it will be entirely available to the public from the beginning.
- If it covers multiple patent applications, it becomes publicly available as soon as any one of them is published or patented.
The policy ensures transparency and consistency in the handling of assignment documents.
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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.
Patent Procedure (45)
Submitting legible copies of assignment documents to the USPTO is crucial because the quality of the recorded document depends on the quality of the submitted copy. The USPTO does not improve or enhance the quality of submitted documents.
According to MPEP 302.01: If the copy submitted for recordation is illegible, the recorded document will be illegible.
This means that if you submit an illegible copy, the officially recorded document will also be illegible, potentially causing issues with proving ownership or assignment in the future. To avoid such problems, always ensure that you submit clear, high-quality copies of your assignment documents for recordation.
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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.
Assignment documents are not placed directly in application or patent files to ensure proper recording and management. According to MPEP 318:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This practice serves several purposes:
- It ensures that assignments are properly recorded by the specialized Assignment Division.
- It maintains the integrity and organization of application and patent files.
- It allows for efficient tracking and retrieval of assignment information.
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When submitting assignment documents along with new patent applications, the mailing address is different from the general assignment recordation address. According to MPEP 302.08:
Requests for recording documents which accompany new applications should be addressed to the Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
This ensures that your assignment documents are properly associated with the new patent application and processed accordingly by the USPTO.
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The Electronic Patent Assignment System (EPAS) accepts various types of assignment-related documents. As stated in MPEP 302.10:
“The EPAS system allows customers to submit assignments and other documents related to title (e.g., lien agreements, probate documents, licenses, etc.) directly into the automated Patent and Trademark Assignment System.”
This system streamlines the submission process for a wide range of ownership and assignment documents.
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The recording date for a document at the USPTO is the date when the document meeting all recording requirements is filed with the Office. As stated in 37 CFR 3.51, “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.” This means that all necessary criteria, including proper identification and fees, must be met for the document to be officially recorded on that date.
The mailing address for submitting assignment documents depends on whether they are being filed with new applications or not. According to MPEP 302.08:
- For documents not filed with new applications: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450
- For documents filed with new applications: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450
As stated in the MPEP, In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the Mail Stop Assignment Recordation Services, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, unless they are filed together with new applications.
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The correct procedure for submitting assignment documents to the USPTO involves sending them to the Assignment Division for recording, rather than placing them directly in application or patent files. MPEP 318 clearly states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This process ensures that assignment documents are properly recorded and maintained by the appropriate division within the USPTO.
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37 CFR 3.27 is a federal regulation that specifies the mailing address for submitting documents to be recorded at the USPTO. According to MPEP 302.08:
37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office.
This regulation ensures that assignment documents and other recordable documents are sent to the correct address for proper processing. It’s crucial for patent attorneys, inventors, and anyone submitting assignment documents to follow this regulation to avoid delays or misrouting of important legal documents.
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If there’s an error in the recorded assignment document itself (not just the cover sheet), the process is different:
- The party responsible for the error (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it.
- If the assignor is unavailable, the assignee can submit an affidavit or declaration identifying the error and requesting correction.
As stated in MPEP 323.01(b), “The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41).”
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.
If you fail to correct and resubmit the returned assignment documents within the specified time period, the USPTO will consider the date of receipt of the corrected papers as the new recording date. The MPEP 317.02 clearly states:
“If the returned papers are not corrected and resubmitted within the specified period, the date of receipt of the corrected papers will be considered to be the date of recording of the document.”
It’s crucial to note that this may affect the priority date of your assignment, potentially impacting your rights. Additionally, the MPEP emphasizes that “The specified period to resubmit the returned papers will not be extended.” Therefore, it’s essential to act promptly when you receive returned documents to avoid losing the benefit of the original filing date.
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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.
The USPTO accepts the following file formats for electronic submission of assignment documents:
- PDF (Portable Document Format)
- TIFF (Tagged Image File Format)
As stated in MPEP 302.10: “The USPTO will accept electronic submissions of assignment documents in TIFF or PDF format.” It’s important to note that these formats are chosen for their ability to preserve document integrity and ensure long-term accessibility.
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MPEP 303 states that certified copies of patent applications as filed do not include an indication of assignment documents. The section specifically notes:
“Certified copies of patent applications as filed do not include an indication of assignment documents.” (MPEP 303)
This means that if an applicant wants to have proof of assignment documents, they need to request this separately.
According to MPEP 318, assignment documents submitted for recording should not be placed directly in application or patent files. The section states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This means that when assignment documents are submitted, they should be sent to the Assignment Division for proper recording rather than being inserted into the application or patent files themselves.
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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.
What are the requirements for faxed assignment documents to be recorded at the USPTO?
For faxed assignment documents to be recorded at the USPTO, they must meet the following requirements:
- The document must be legible and capable of being reproduced in legible form.
- The fax must include a cover sheet with the sender’s name, address, and telephone number.
- Payment of the recording fee must be included or authorized.
- The fax should be sent to the specific fax number designated for assignment submissions.
As stated in MPEP 302.09: “The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.” This means that the fax transmission must be complete and received by the USPTO to be considered officially submitted.
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What are the requirements for facsimile submission of assignment documents to the USPTO?
The USPTO has specific requirements for facsimile submission of assignment documents:
- The facsimile must be legible and complete.
- The document should be submitted to the Assignment Recordation Branch at the designated fax number.
- A cover sheet must accompany the submission, stating the total number of pages, including the cover sheet.
- The original document is not required unless specifically requested by the Office.
As stated in MPEP 302.09: “The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.”
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For paper or facsimile submissions of patent assignment documents to the USPTO, the following requirements apply:
- Either a copy of the original document or an extract of the original document must be submitted
- Only one side of each page may be used
- Paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4)
- A 2.5 cm (one-inch) margin must be present on all sides
- The paper should be flexible, strong white, non-shiny, and durable
As stated in 37 CFR 3.24(b): For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used.
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For electronic submissions of assignment documents, the USPTO requires:
- Either a copy of the original document or an extract of the original document
- Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format
- When printed to paper size of 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible
- A 2.5 cm (one-inch) margin must be present 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.
To learn more:
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.”
What are the benefits of using EPAS for assignment submissions?
The Electronic Patent Assignment System (EPAS) offers several advantages for submitting assignment documents:
- 24/7 availability for submissions
- Immediate confirmation of receipt
- Faster processing times compared to paper submissions
- Reduced risk of errors through guided data entry
- Ability to save and resume incomplete submissions
The MPEP 302.10 states, ‘Assignment documents can be electronically submitted via the Electronic Patent Assignment System (EPAS) by registered ePAS users.’ This system streamlines the assignment process and improves efficiency for both applicants and the USPTO.
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Electronically submitting assignment documents to the USPTO offers several benefits:
- Faster Processing: Electronic submissions are typically processed more quickly than paper submissions.
- Immediate Confirmation: You receive immediate confirmation of your submission.
- Cost-Effective: No mailing costs or delays associated with physical delivery.
- 24/7 Availability: You can submit documents at any time, not limited to office hours.
- Reduced Risk of Loss: Electronic submissions minimize the risk of documents being lost in transit.
- Environmentally Friendly: Reduces paper usage and associated environmental impacts.
The MPEP 302.10 states: “Assignment documents can be submitted to the Office electronically via the Office’s Electronic Patent Assignment System (EPAS).” This system is designed to streamline the submission process and provide these benefits to patent applicants and owners.
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Assignment documents submitted by mail for recordation should be addressed according to MPEP 302.08 and 37 CFR 3.27. The MPEP states:
Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.
This ensures that your documents are properly routed and processed by the USPTO.
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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.'”
How is the receipt date determined for faxed assignment documents at the USPTO?
The determination of the receipt date for faxed assignment documents at the USPTO is crucial for establishing priority and effective dates. According to MPEP 302.09:
“The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.”
This means that:
- The receipt date is when the entire document has been successfully transmitted and received by the USPTO.
- Partial transmissions or incomplete faxes will not establish a receipt date.
- The time zone of the USPTO (Eastern Time) is used for determining the date.
- If a transmission is completed after business hours, the next business day may be considered the receipt date.
It’s important to ensure that the fax transmission is complete and to keep confirmation records of the transmission for your files.
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The USPTO maintains a clear separation between assignment documents and patent files to ensure proper organization and management of records. MPEP 318 specifies:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This separation is maintained by:
- Directing assignment documents to the Assignment Division instead of application or patent files
- Keeping a separate database for assignment records
- Ensuring that patent examiners and other USPTO personnel refer to the Assignment Division for ownership information
- Maintaining distinct processes for handling assignments and patent prosecution
This approach helps in preserving the integrity of both assignment records and patent files while facilitating efficient access to ownership information when needed.
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The USPTO recognizes and accepts electronic signatures on assignment documents submitted electronically. According to MPEP 302.10:
“The USPTO will accept electronic signatures on documents submitted electronically.”
This means that assignors and assignees can use various forms of electronic signatures, such as:
- Typed names
- Digital signatures
- Scanned images of handwritten signatures
It’s important to ensure that the electronic signature complies with the USPTO’s requirements and is legally binding. The specific requirements for electronic signatures are outlined in MPEP 502.02.
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MPEP 318 provides clear guidance to patent examiners on how to handle assignment documents. The section states:
“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”
This instruction serves to:
- Remind examiners not to include assignment documents in the main application file
- Direct examiners to forward any received assignment documents to the Assignment Division
- Ensure that the proper procedures for recording assignments are followed
- Maintain the separation between technical examination and ownership recording
By following this guidance, patent examiners help maintain the integrity of both the application files and the assignment records.
How do I submit supporting documents for electronic assignment submissions?
When submitting assignment documents electronically, you can include supporting documents as follows:
- Upload supporting documents as separate PDF files along with the main assignment document.
- Ensure each supporting document is less than 25 MB in size.
- Include a brief description for each supporting document during the submission process.
According to MPEP 302.10, ‘Supporting documents can be submitted as PDF files via EFS-Web and EPAS.’ This allows for a comprehensive submission of all relevant materials related to the assignment.
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The USPTO provides an electronic system for submitting assignment documents. According to MPEP 302.10:
“Assignment documents can be submitted electronically via the Office’s Electronic Patent Assignment System (EPAS).”
EPAS allows for convenient and efficient submission of assignment documents directly to the USPTO.
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To ensure your corrected assignment documents are considered timely submitted, the USPTO provides two methods as outlined in MPEP 317.02:
- Use the certification procedure under 37 CFR 1.8 (see MPEP ยง 512)
- Use the “Priority Mail Expressยฎ” procedure under 37 CFR 1.10 (see MPEP ยง 513)
The MPEP states:
“The certification procedure under 37 CFR 1.8 (see MPEP ยง 512) or the “Priority Mail Expressยฎ” procedure under 37 CFR 1.10 (see MPEP ยง 513) may be used for resubmissions of returned papers to obtain the benefit of the date of deposit in the United States Postal Service to establish that the papers were returned within the time period specified.”
By using either of these methods, you can establish that your corrected documents were submitted within the specified time period, thus maintaining the original receipt date as the recording date of the document.
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If your assignment documents or cover sheets are returned by the Assignment Division, you can correct and resubmit them within a specified time period to maintain the original receipt date. The USPTO states:
“Assignment documents and cover sheets, or copies of the same, which are returned by Assignment Division will be stamped with the original date of receipt by the Office and will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document.”
To ensure timely resubmission, you can use either:
- The certification procedure under 37 CFR 1.8 (see MPEP ยง 512)
- The “Priority Mail Expressยฎ” procedure under 37 CFR 1.10 (see MPEP ยง 513)
It’s important to note that the specified period for resubmission will not be extended, so prompt action is crucial.
To learn more:
According to MPEP 303, applicants who want information about assignment documents must take specific steps:
- Request separately certified copies of assignment documents
- Submit the fees required by 37 CFR 1.19
The MPEP states:
“Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.” (MPEP 303)
No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.
For more information on assignment documents, visit: assignment documents.
For more information on certified copies, visit: certified copies.
For more information on patent applications, visit: patent applications.
For more information on USPTO, visit: USPTO.
No, the period for resubmitting corrected assignment documents cannot be extended. The MPEP 317.02 is explicit on this point:
“The specified period to resubmit the returned papers will not be extended.”
This strict policy underscores the importance of promptly addressing any issues with returned assignment documents. Failing to meet the specified deadline will result in the loss of the original receipt date as the recording date for the document. Instead, the USPTO will use the date they receive the corrected papers as the new recording date. This change can potentially affect the priority of your assignment and impact your intellectual property rights. Therefore, it’s crucial to carefully review any returned documents and act quickly to make the necessary corrections and resubmit within the given timeframe.
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The USPTO does not grant partial access to assignment documents. According to MPEP 301.01:
The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.
This policy ensures transparency and prevents selective disclosure of information. It’s important to note that this approach can have implications for documents that contain both public and potentially confidential information. For example:
- If a document covers both a trademark and a patent application, the entire document becomes public.
- If a document covers multiple patent applications, it becomes public as soon as any one of the applications is published or patented.
This policy underscores the importance of carefully considering what information is included in assignment documents, particularly when dealing with a mix of public and non-public intellectual property rights.
For more information on assignment documents, visit: assignment documents.
For more information on public inspection, visit: public inspection.
For more information on USPTO policy, visit: USPTO policy.
No, you cannot use both sides of the paper when submitting assignment documents to the USPTO. For paper or facsimile submissions, only one side of each page may be used.
As stated in 37 CFR 3.24(b): Only one side of each page may be used.
This requirement ensures that all information is clearly visible and can be properly scanned and recorded by the USPTO. Using both sides of the paper could result in missed information or difficulties in processing your document.
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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 still submit assignment documents by mail to the USPTO, although electronic submission is strongly encouraged. If you choose to submit by mail, send your documents to:
Mail Stop Assignment Recordation Services
Director of the USPTO
P.O. Box 1450
Alexandria, VA 22313-1450
However, as noted in MPEP 302.10: “The Office strongly encourages electronic filing of assignment documents using EPAS, because assignment documents filed electronically are recorded faster and are less likely to become lost or misplaced.” Therefore, while mail submission is an option, electronic submission through EPAS is preferable for faster and more secure processing.
To learn more:
No, the USPTO does not allow partial access to patent assignment documents. According to MPEP 301.01:
“The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.”
This means:
- If a document covers both a trademark and a patent, it will be entirely available to the public from the beginning.
- If it covers multiple patent applications, it becomes publicly available as soon as any one of them is published or patented.
The policy ensures transparency and consistency in the handling of assignment documents.
To learn more:
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.