Patent Law FAQ

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.