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 (4)
For assignee applicants or persons to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership should be recorded as follows:
- As provided for in part 3 of Chapter 37 CFR
- No later than the date the issue fee is paid in the application
According to 37 CFR 1.46(b)(1): If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
According to 37 CFR 1.46(b)(1), documentary evidence of ownership should be recorded as follows:
“If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.”
In other words, if you’re filing as an assignee or obligated assignee, you should record your documentary evidence of ownership (such as an assignment or employment agreement) with the USPTO no later than when you pay the issue fee for your patent application.
For more information on documentary evidence, visit: documentary evidence.
For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:
- An assignment document recorded in the USPTO
- A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee
According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on pre-AIA applications, visit: pre-AIA applications.
To establish the right to take action in a patent application filed before September 16, 2012, an assignee must meet the following requirements:
- The assignee must be of the entire right, title, and interest in the application.
- A proper documentary evidence of chain of title from the original owner to the assignee must be submitted.
- The evidence must be recorded in the United States Patent and Trademark Office (USPTO) no later than the date of payment of the issue fee.
As stated in MPEP 324: The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
It’s important to note that these requirements are specific to applications filed before September 16, 2012. Different rules may apply for applications filed on or after this date.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on USPTO, visit: USPTO.
MPEP 308 - Issue to Applicant (2)
For assignee applicants or persons to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership should be recorded as follows:
- As provided for in part 3 of Chapter 37 CFR
- No later than the date the issue fee is paid in the application
According to 37 CFR 1.46(b)(1): If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
According to 37 CFR 1.46(b)(1), documentary evidence of ownership should be recorded as follows:
“If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.”
In other words, if you’re filing as an assignee or obligated assignee, you should record your documentary evidence of ownership (such as an assignment or employment agreement) with the USPTO no later than when you pay the issue fee for your patent application.
For more information on documentary evidence, visit: documentary evidence.
MPEP 400 - Representative of Applicant or Owner (3)
For assignee applicants, there is a specific deadline for recording documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that assignees or obligated assignees should ensure that their documentary evidence of ownership is recorded with the USPTO, as specified in 37 CFR Part 3, by the time they pay the issue fee for the patent application. Failing to record this evidence by the deadline could potentially cause complications in establishing ownership of the patent.
To learn more:
To support a petition under pre-AIA 37 CFR 1.47, the following evidence is typically required:
- A statement of facts signed by someone with firsthand knowledge
- Documentary evidence such as Internet searches, certified mail return receipts, cover letters of instructions, or telegrams
- Details of steps taken to locate the nonsigning inventor
The MPEP emphasizes:
‘The statement of facts must be signed, where at all possible, by a person having firsthand knowledge of the facts recited therein. Statements based on hearsay will not normally be accepted.’
It’s crucial to provide facts rather than conclusions in the statement.
To learn more:
To learn more:
What documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that the assignee or obligated assignee should record their ownership documents (such as an assignment or employment agreement) with the USPTO as specified in 37 CFR Part 3, and this should be done before paying the issue fee.
To learn more:
Patent Law (8)
For assignee applicants or persons to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership should be recorded as follows:
- As provided for in part 3 of Chapter 37 CFR
- No later than the date the issue fee is paid in the application
According to 37 CFR 1.46(b)(1): If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
According to 37 CFR 1.46(b)(1), documentary evidence of ownership should be recorded as follows:
“If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.”
In other words, if you’re filing as an assignee or obligated assignee, you should record your documentary evidence of ownership (such as an assignment or employment agreement) with the USPTO no later than when you pay the issue fee for your patent application.
For more information on documentary evidence, visit: documentary evidence.
For assignee applicants, there is a specific deadline for recording documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that assignees or obligated assignees should ensure that their documentary evidence of ownership is recorded with the USPTO, as specified in 37 CFR Part 3, by the time they pay the issue fee for the patent application. Failing to record this evidence by the deadline could potentially cause complications in establishing ownership of the patent.
To learn more:
For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:
- An assignment document recorded in the USPTO
- A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee
According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on pre-AIA applications, visit: pre-AIA applications.
To support a petition under pre-AIA 37 CFR 1.47, the following evidence is typically required:
- A statement of facts signed by someone with firsthand knowledge
- Documentary evidence such as Internet searches, certified mail return receipts, cover letters of instructions, or telegrams
- Details of steps taken to locate the nonsigning inventor
The MPEP emphasizes:
‘The statement of facts must be signed, where at all possible, by a person having firsthand knowledge of the facts recited therein. Statements based on hearsay will not normally be accepted.’
It’s crucial to provide facts rather than conclusions in the statement.
To learn more:
To learn more:
What documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that the assignee or obligated assignee should record their ownership documents (such as an assignment or employment agreement) with the USPTO as specified in 37 CFR Part 3, and this should be done before paying the issue fee.
To learn more:
To establish the right to take action in a patent application filed before September 16, 2012, an assignee must meet the following requirements:
- The assignee must be of the entire right, title, and interest in the application.
- A proper documentary evidence of chain of title from the original owner to the assignee must be submitted.
- The evidence must be recorded in the United States Patent and Trademark Office (USPTO) no later than the date of payment of the issue fee.
As stated in MPEP 324: The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
It’s important to note that these requirements are specific to applications filed before September 16, 2012. Different rules may apply for applications filed on or after this date.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on USPTO, visit: USPTO.
An assignee can become the applicant for a patent application by following these steps:
- File the application under 37 CFR 1.46
- Include an application data sheet (ADS) under 37 CFR 1.76 specifying the assignee as the applicant in the applicant information section
- Record documentary evidence of ownership (e.g., assignment) as provided in 37 CFR part 3 no later than the date the issue fee is paid
The MPEP states: If the applicant is the assignee or person to whom the inventor is under an obligation to assign the invention, the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as provided for in 37 CFR part 3 no later than the date the issue fee is paid.
To learn more:
Patent Procedure (8)
For assignee applicants or persons to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership should be recorded as follows:
- As provided for in part 3 of Chapter 37 CFR
- No later than the date the issue fee is paid in the application
According to 37 CFR 1.46(b)(1): If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
According to 37 CFR 1.46(b)(1), documentary evidence of ownership should be recorded as follows:
“If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.”
In other words, if you’re filing as an assignee or obligated assignee, you should record your documentary evidence of ownership (such as an assignment or employment agreement) with the USPTO no later than when you pay the issue fee for your patent application.
For more information on documentary evidence, visit: documentary evidence.
For assignee applicants, there is a specific deadline for recording documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that assignees or obligated assignees should ensure that their documentary evidence of ownership is recorded with the USPTO, as specified in 37 CFR Part 3, by the time they pay the issue fee for the patent application. Failing to record this evidence by the deadline could potentially cause complications in establishing ownership of the patent.
To learn more:
For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes:
- An assignment document recorded in the USPTO
- A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee
According to MPEP 324: The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(A) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(B) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
It’s crucial that the documentary evidence clearly shows the chain of title from the original owner to the current assignee. This ensures that the USPTO can verify the assignee’s right to take action in the application.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on pre-AIA applications, visit: pre-AIA applications.
To support a petition under pre-AIA 37 CFR 1.47, the following evidence is typically required:
- A statement of facts signed by someone with firsthand knowledge
- Documentary evidence such as Internet searches, certified mail return receipts, cover letters of instructions, or telegrams
- Details of steps taken to locate the nonsigning inventor
The MPEP emphasizes:
‘The statement of facts must be signed, where at all possible, by a person having firsthand knowledge of the facts recited therein. Statements based on hearsay will not normally be accepted.’
It’s crucial to provide facts rather than conclusions in the statement.
To learn more:
To learn more:
What documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that the assignee or obligated assignee should record their ownership documents (such as an assignment or employment agreement) with the USPTO as specified in 37 CFR Part 3, and this should be done before paying the issue fee.
To learn more:
To establish the right to take action in a patent application filed before September 16, 2012, an assignee must meet the following requirements:
- The assignee must be of the entire right, title, and interest in the application.
- A proper documentary evidence of chain of title from the original owner to the assignee must be submitted.
- The evidence must be recorded in the United States Patent and Trademark Office (USPTO) no later than the date of payment of the issue fee.
As stated in MPEP 324: The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
It’s important to note that these requirements are specific to applications filed before September 16, 2012. Different rules may apply for applications filed on or after this date.
For more information on assignee rights, visit: assignee rights.
For more information on chain of title, visit: chain of title.
For more information on documentary evidence, visit: documentary evidence.
For more information on USPTO, visit: USPTO.
An assignee can become the applicant for a patent application by following these steps:
- File the application under 37 CFR 1.46
- Include an application data sheet (ADS) under 37 CFR 1.76 specifying the assignee as the applicant in the applicant information section
- Record documentary evidence of ownership (e.g., assignment) as provided in 37 CFR part 3 no later than the date the issue fee is paid
The MPEP states: If the applicant is the assignee or person to whom the inventor is under an obligation to assign the invention, the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as provided for in 37 CFR part 3 no later than the date the issue fee is paid.
To learn more: