Patent Law FAQ

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

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.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

Recording a patent assignment with the USPTO is crucial for several reasons:

1. Legal Notice: It provides public notice of the assignment, which is important for establishing priority against subsequent purchasers or mortgagees.
2. Prima Facie Evidence: As stated in MPEP 301.01, ‘The recording of an assignment with the USPTO is prima facie evidence of its execution.’
3. Chain of Title: It helps maintain a clear chain of title for the patent or application.
4. Enforcement Rights: Proper recording can affect the ability to enforce patent rights or collect damages in infringement cases.

The MPEP emphasizes the importance of recording by stating, ‘An assignment must be recorded in the USPTO within three months from its date or prior to the date of a subsequent purchase or mortgage to be valid against a subsequent purchaser or mortgagee.’ This underscores the time-sensitive nature of recording assignments to protect legal rights.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

USPTO patent assignment records contain valuable information about the ownership and transfer of patent rights. According to MPEP 301.01, these records include:

• Reel and frame number of the recordation
• Name of the conveying party (assignor)
• Name and address of the receiving party (assignee)
• Patent or application number
• Date of execution
• Date of recordation

The MPEP further states: The actual assignment document will not be viewable through Assignment Search. Only the bibliographic information contained in the recorded cover sheet will be viewable from the Assignment Search database.

This information helps track the chain of title for patents and applications, which is crucial for determining current ownership and potential licensing opportunities.

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 corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

If an assignment document submitted electronically through the Electronic Patent Assignment System (EPAS) is determined to be not recordable, the following process occurs:

1. The entire document, along with its associated cover sheet, will be returned to the sender.
2. An Office “Notice of Non-Recordation” will be transmitted back to the sender via fax, if possible.
3. The sender can make corrections to the document or cover sheet.
4. The corrected submission can then be resubmitted by mailing it to the address specified in 37 CFR 3.27.
5. If the resubmission is timely, the sender will receive the benefit of the initial receipt date as the recordation date, in accordance with 37 CFR 3.51.

As stated in MPEP 302.10: “Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.”

What are the consequences of submitting a poor-quality copy of an assignment document to the USPTO?

Submitting a poor-quality copy of an assignment document to the USPTO can lead to rejection of the recording request. The MPEP 302.01 clearly states that “Only copies of an original assignment document (with the exception of those submitted via EFS-Web) may be submitted for recording.” Furthermore, it emphasizes that “The copy must be legible, capable of reproduction and otherwise meet the usual requirements of documents for recording.” If a poor-quality copy is submitted:

• The recording request may be rejected
• The effective date of recordation could be delayed
• Additional fees may be incurred for resubmission
• There could be potential legal implications if the assignment is not properly recorded in a timely manner

To avoid these issues, always ensure that the copy submitted is of high quality and meets all USPTO requirements for legibility and reproducibility.

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

Documents that don’t meet other recording requirements, such as missing a completed cover sheet or required fee, are handled differently by the USPTO. According to the MPEP, “Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.” This means that unlike documents with identification issues, these documents are returned to the sender for correction, provided a correspondence address is available.

Yes, the original filing date can be preserved for corrected documents under certain conditions. The MPEP states: “The returned papers, stamped with the original date of receipt by the Office, 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 filing of the papers as the date of recording of the document.” This means that if you correct and resubmit the document within the specified timeframe, the USPTO will use the original filing date as the recording date.

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 submit a patent assignment electronically through the USPTO’s Electronic Patent Assignment System (EPAS). This is the recommended method for several reasons:

• It’s free – there is no recordation fee for electronic submissions
• It’s fast – documents are processed more quickly
• It’s convenient – you can submit 24/7 from anywhere with internet access

As stated in MPEP 302.10: “Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS).”

To use EPAS, you’ll need to complete an online cover sheet and upload a copy of the assignment document. The signature on the electronic cover sheet must comply with USPTO regulations for electronic signatures.

For more information and to access EPAS, visit the USPTO EPAS website.

For more information on electronic patent assignment, visit: electronic patent assignment.

For more information on EPAS, visit: EPAS.

Can I submit a handwritten assignment document for recording at the USPTO?

While handwritten assignment documents are not explicitly prohibited, they are generally discouraged and may face challenges in the recording process. The MPEP 302.01 states that “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” Handwritten documents may not meet this standard, especially if the handwriting is not clear and easily readable. To ensure smooth processing and avoid potential rejection, it’s recommended to submit typed or printed assignment documents that are clearly legible and meet all USPTO requirements.

Can a patent assignment be recorded electronically?

Yes, patent assignments can be recorded electronically. The USPTO provides an electronic system for recording assignment documents. According to MPEP 302:

‘Assignment documents can be submitted for recordation via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://www.uspto.gov/patents-application-process/documenting-patent-ownership/epas-electronic-patent-assignment-system for additional information regarding EPAS.’

Electronic submission through EPAS is often faster and more convenient than paper submissions. However, it’s important to ensure that all necessary information and signatures are included in the electronic submission.

For more information on electronic patent assignment, visit: electronic patent assignment.

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

Yes, all patent assignment records are publicly accessible. MPEP 301.01 clearly states:

‘The assignment records of patents and applications are open to public inspection.’

This means that anyone can access these records, which include:

• Assignment documents
• Digests of assignments
• Indexes of patent assignments

The public nature of these records ensures transparency in patent ownership and transfers. However, it’s important to note that while the records are public, obtaining copies may require payment of a fee as specified in 37 CFR 1.19(b)(3).

Recording a patent assignment with the USPTO is crucial for several reasons:

1. Legal Notice: It provides public notice of the assignment, which is important for establishing priority against subsequent purchasers or mortgagees.
2. Prima Facie Evidence: As stated in MPEP 301.01, ‘The recording of an assignment with the USPTO is prima facie evidence of its execution.’
3. Chain of Title: It helps maintain a clear chain of title for the patent or application.
4. Enforcement Rights: Proper recording can affect the ability to enforce patent rights or collect damages in infringement cases.

The MPEP emphasizes the importance of recording by stating, ‘An assignment must be recorded in the USPTO within three months from its date or prior to the date of a subsequent purchase or mortgage to be valid against a subsequent purchaser or mortgagee.’ This underscores the time-sensitive nature of recording assignments to protect legal rights.

USPTO patent assignment records contain valuable information about the ownership and transfer of patent rights. According to MPEP 301.01, these records include:

• Reel and frame number of the recordation
• Name of the conveying party (assignor)
• Name and address of the receiving party (assignee)
• Patent or application number
• Date of execution
• Date of recordation

The MPEP further states: The actual assignment document will not be viewable through Assignment Search. Only the bibliographic information contained in the recorded cover sheet will be viewable from the Assignment Search database.

This information helps track the chain of title for patents and applications, which is crucial for determining current ownership and potential licensing opportunities.

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

Yes, all patent assignment records are publicly accessible. MPEP 301.01 clearly states:

‘The assignment records of patents and applications are open to public inspection.’

This means that anyone can access these records, which include:

• Assignment documents
• Digests of assignments
• Indexes of patent assignments

The public nature of these records ensures transparency in patent ownership and transfers. However, it’s important to note that while the records are public, obtaining copies may require payment of a fee as specified in 37 CFR 1.19(b)(3).

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.

If an assignment document submitted electronically through the Electronic Patent Assignment System (EPAS) is determined to be not recordable, the following process occurs:

1. The entire document, along with its associated cover sheet, will be returned to the sender.
2. An Office “Notice of Non-Recordation” will be transmitted back to the sender via fax, if possible.
3. The sender can make corrections to the document or cover sheet.
4. The corrected submission can then be resubmitted by mailing it to the address specified in 37 CFR 3.27.
5. If the resubmission is timely, the sender will receive the benefit of the initial receipt date as the recordation date, in accordance with 37 CFR 3.51.

As stated in MPEP 302.10: “Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.”

What are the consequences of submitting a poor-quality copy of an assignment document to the USPTO?

Submitting a poor-quality copy of an assignment document to the USPTO can lead to rejection of the recording request. The MPEP 302.01 clearly states that “Only copies of an original assignment document (with the exception of those submitted via EFS-Web) may be submitted for recording.” Furthermore, it emphasizes that “The copy must be legible, capable of reproduction and otherwise meet the usual requirements of documents for recording.” If a poor-quality copy is submitted:

• The recording request may be rejected
• The effective date of recordation could be delayed
• Additional fees may be incurred for resubmission
• There could be potential legal implications if the assignment is not properly recorded in a timely manner

To avoid these issues, always ensure that the copy submitted is of high quality and meets all USPTO requirements for legibility and reproducibility.

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 submit a patent assignment electronically through the USPTO’s Electronic Patent Assignment System (EPAS). This is the recommended method for several reasons:

• It’s free – there is no recordation fee for electronic submissions
• It’s fast – documents are processed more quickly
• It’s convenient – you can submit 24/7 from anywhere with internet access

As stated in MPEP 302.10: “Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS).”

To use EPAS, you’ll need to complete an online cover sheet and upload a copy of the assignment document. The signature on the electronic cover sheet must comply with USPTO regulations for electronic signatures.

For more information and to access EPAS, visit the USPTO EPAS website.

For more information on electronic patent assignment, visit: electronic patent assignment.

For more information on EPAS, visit: EPAS.

Can I submit a handwritten assignment document for recording at the USPTO?

While handwritten assignment documents are not explicitly prohibited, they are generally discouraged and may face challenges in the recording process. The MPEP 302.01 states that “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” Handwritten documents may not meet this standard, especially if the handwriting is not clear and easily readable. To ensure smooth processing and avoid potential rejection, it’s recommended to submit typed or printed assignment documents that are clearly legible and meet all USPTO requirements.

Can a patent assignment be recorded electronically?

Yes, patent assignments can be recorded electronically. The USPTO provides an electronic system for recording assignment documents. According to MPEP 302:

‘Assignment documents can be submitted for recordation via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://www.uspto.gov/patents-application-process/documenting-patent-ownership/epas-electronic-patent-assignment-system for additional information regarding EPAS.’

Electronic submission through EPAS is often faster and more convenient than paper submissions. However, it’s important to ensure that all necessary information and signatures are included in the electronic submission.

For more information on electronic patent assignment, visit: electronic patent assignment.

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

If corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

Documents that don’t meet other recording requirements, such as missing a completed cover sheet or required fee, are handled differently by the USPTO. According to the MPEP, “Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.” This means that unlike documents with identification issues, these documents are returned to the sender for correction, provided a correspondence address is available.

Yes, the original filing date can be preserved for corrected documents under certain conditions. The MPEP states: “The returned papers, stamped with the original date of receipt by the Office, 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 filing of the papers as the date of recording of the document.” This means that if you correct and resubmit the document within the specified timeframe, the USPTO will use the original filing date as the recording date.

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.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

Recording a patent assignment with the USPTO is crucial for several reasons:

1. Legal Notice: It provides public notice of the assignment, which is important for establishing priority against subsequent purchasers or mortgagees.
2. Prima Facie Evidence: As stated in MPEP 301.01, ‘The recording of an assignment with the USPTO is prima facie evidence of its execution.’
3. Chain of Title: It helps maintain a clear chain of title for the patent or application.
4. Enforcement Rights: Proper recording can affect the ability to enforce patent rights or collect damages in infringement cases.

The MPEP emphasizes the importance of recording by stating, ‘An assignment must be recorded in the USPTO within three months from its date or prior to the date of a subsequent purchase or mortgage to be valid against a subsequent purchaser or mortgagee.’ This underscores the time-sensitive nature of recording assignments to protect legal rights.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

USPTO patent assignment records contain valuable information about the ownership and transfer of patent rights. According to MPEP 301.01, these records include:

• Reel and frame number of the recordation
• Name of the conveying party (assignor)
• Name and address of the receiving party (assignee)
• Patent or application number
• Date of execution
• Date of recordation

The MPEP further states: The actual assignment document will not be viewable through Assignment Search. Only the bibliographic information contained in the recorded cover sheet will be viewable from the Assignment Search database.

This information helps track the chain of title for patents and applications, which is crucial for determining current ownership and potential licensing opportunities.

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 corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

If an assignment document submitted electronically through the Electronic Patent Assignment System (EPAS) is determined to be not recordable, the following process occurs:

1. The entire document, along with its associated cover sheet, will be returned to the sender.
2. An Office “Notice of Non-Recordation” will be transmitted back to the sender via fax, if possible.
3. The sender can make corrections to the document or cover sheet.
4. The corrected submission can then be resubmitted by mailing it to the address specified in 37 CFR 3.27.
5. If the resubmission is timely, the sender will receive the benefit of the initial receipt date as the recordation date, in accordance with 37 CFR 3.51.

As stated in MPEP 302.10: “Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.”

What are the consequences of submitting a poor-quality copy of an assignment document to the USPTO?

Submitting a poor-quality copy of an assignment document to the USPTO can lead to rejection of the recording request. The MPEP 302.01 clearly states that “Only copies of an original assignment document (with the exception of those submitted via EFS-Web) may be submitted for recording.” Furthermore, it emphasizes that “The copy must be legible, capable of reproduction and otherwise meet the usual requirements of documents for recording.” If a poor-quality copy is submitted:

• The recording request may be rejected
• The effective date of recordation could be delayed
• Additional fees may be incurred for resubmission
• There could be potential legal implications if the assignment is not properly recorded in a timely manner

To avoid these issues, always ensure that the copy submitted is of high quality and meets all USPTO requirements for legibility and reproducibility.

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

Documents that don’t meet other recording requirements, such as missing a completed cover sheet or required fee, are handled differently by the USPTO. According to the MPEP, “Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.” This means that unlike documents with identification issues, these documents are returned to the sender for correction, provided a correspondence address is available.

Yes, the original filing date can be preserved for corrected documents under certain conditions. The MPEP states: “The returned papers, stamped with the original date of receipt by the Office, 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 filing of the papers as the date of recording of the document.” This means that if you correct and resubmit the document within the specified timeframe, the USPTO will use the original filing date as the recording date.

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 submit a patent assignment electronically through the USPTO’s Electronic Patent Assignment System (EPAS). This is the recommended method for several reasons:

• It’s free – there is no recordation fee for electronic submissions
• It’s fast – documents are processed more quickly
• It’s convenient – you can submit 24/7 from anywhere with internet access

As stated in MPEP 302.10: “Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS).”

To use EPAS, you’ll need to complete an online cover sheet and upload a copy of the assignment document. The signature on the electronic cover sheet must comply with USPTO regulations for electronic signatures.

For more information and to access EPAS, visit the USPTO EPAS website.

For more information on electronic patent assignment, visit: electronic patent assignment.

For more information on EPAS, visit: EPAS.

Can I submit a handwritten assignment document for recording at the USPTO?

While handwritten assignment documents are not explicitly prohibited, they are generally discouraged and may face challenges in the recording process. The MPEP 302.01 states that “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” Handwritten documents may not meet this standard, especially if the handwriting is not clear and easily readable. To ensure smooth processing and avoid potential rejection, it’s recommended to submit typed or printed assignment documents that are clearly legible and meet all USPTO requirements.

Can a patent assignment be recorded electronically?

Yes, patent assignments can be recorded electronically. The USPTO provides an electronic system for recording assignment documents. According to MPEP 302:

‘Assignment documents can be submitted for recordation via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://www.uspto.gov/patents-application-process/documenting-patent-ownership/epas-electronic-patent-assignment-system for additional information regarding EPAS.’

Electronic submission through EPAS is often faster and more convenient than paper submissions. However, it’s important to ensure that all necessary information and signatures are included in the electronic submission.

For more information on electronic patent assignment, visit: electronic patent assignment.

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

Yes, all patent assignment records are publicly accessible. MPEP 301.01 clearly states:

‘The assignment records of patents and applications are open to public inspection.’

This means that anyone can access these records, which include:

• Assignment documents
• Digests of assignments
• Indexes of patent assignments

The public nature of these records ensures transparency in patent ownership and transfers. However, it’s important to note that while the records are public, obtaining copies may require payment of a fee as specified in 37 CFR 1.19(b)(3).

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.

September 16, 2012, is a significant date in patent application assignments, particularly for applications claiming the benefit of a provisional application. The MPEP states:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.

This date marks a change in assignment requirements. For applications filed on or after September 16, 2012, if the assignee is the original applicant, new assignment papers may not be necessary even if the application includes subject matter not common with the provisional application. This change aligns with broader reforms introduced by the America Invents Act (AIA) that came into effect on that date.

Recording a patent assignment with the USPTO is crucial for several reasons:

1. Legal Notice: It provides public notice of the assignment, which is important for establishing priority against subsequent purchasers or mortgagees.
2. Prima Facie Evidence: As stated in MPEP 301.01, ‘The recording of an assignment with the USPTO is prima facie evidence of its execution.’
3. Chain of Title: It helps maintain a clear chain of title for the patent or application.
4. Enforcement Rights: Proper recording can affect the ability to enforce patent rights or collect damages in infringement cases.

The MPEP emphasizes the importance of recording by stating, ‘An assignment must be recorded in the USPTO within three months from its date or prior to the date of a subsequent purchase or mortgage to be valid against a subsequent purchaser or mortgagee.’ This underscores the time-sensitive nature of recording assignments to protect legal rights.

35 U.S.C. 119(e) is crucial in understanding the relationship between provisional applications and their non-provisional counterparts, particularly in terms of assignments. The MPEP § 306.01 states:

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120.

This means:

• 35 U.S.C. 119(e) allows non-provisional applications to claim the benefit of an earlier filing date from a provisional application.
• When a non-provisional application claims this benefit and contains only subject matter from the provisional, the assignment recorded for the provisional application remains effective for the non-provisional.
• This treatment aligns with how assignments are handled for continuations and divisions under 35 U.S.C. 120.

However, if new subject matter is introduced in the non-provisional application, different assignment rules may apply, as detailed in other parts of MPEP § 306.01.

USPTO patent assignment records contain valuable information about the ownership and transfer of patent rights. According to MPEP 301.01, these records include:

• Reel and frame number of the recordation
• Name of the conveying party (assignor)
• Name and address of the receiving party (assignee)
• Patent or application number
• Date of execution
• Date of recordation

The MPEP further states: The actual assignment document will not be viewable through Assignment Search. Only the bibliographic information contained in the recorded cover sheet will be viewable from the Assignment Search database.

This information helps track the chain of title for patents and applications, which is crucial for determining current ownership and potential licensing opportunities.

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 corrected documents are not resubmitted within the specified period, the original filing date will not be preserved. The MPEP clearly states: “If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document.” This means that failing to meet the deadline for resubmission will result in the loss of the original filing date, and the new submission date will be used as the recording date.

If an assignment document submitted electronically through the Electronic Patent Assignment System (EPAS) is determined to be not recordable, the following process occurs:

1. The entire document, along with its associated cover sheet, will be returned to the sender.
2. An Office “Notice of Non-Recordation” will be transmitted back to the sender via fax, if possible.
3. The sender can make corrections to the document or cover sheet.
4. The corrected submission can then be resubmitted by mailing it to the address specified in 37 CFR 3.27.
5. If the resubmission is timely, the sender will receive the benefit of the initial receipt date as the recordation date, in accordance with 37 CFR 3.51.

As stated in MPEP 302.10: “Once corrections are made, the initial submission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.”

What are the consequences of submitting a poor-quality copy of an assignment document to the USPTO?

Submitting a poor-quality copy of an assignment document to the USPTO can lead to rejection of the recording request. The MPEP 302.01 clearly states that “Only copies of an original assignment document (with the exception of those submitted via EFS-Web) may be submitted for recording.” Furthermore, it emphasizes that “The copy must be legible, capable of reproduction and otherwise meet the usual requirements of documents for recording.” If a poor-quality copy is submitted:

• The recording request may be rejected
• The effective date of recordation could be delayed
• Additional fees may be incurred for resubmission
• There could be potential legal implications if the assignment is not properly recorded in a timely manner

To avoid these issues, always ensure that the copy submitted is of high quality and meets all USPTO requirements for legibility and reproducibility.

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

Patent assignment records can be accessed online through the USPTO’s Assignment Search database. The MPEP states: Assignment records that affect the title of patents and patent applications are recorded in the USPTO’s Assignment Recordation Branch. To access these records:

• Visit the USPTO Assignment Search website
• Enter the relevant patent or application number, assignee name, or other search criteria
• Review the search results for assignment information

This online database provides public access to assignment records, allowing for easy verification of patent ownership.

Documents that don’t meet other recording requirements, such as missing a completed cover sheet or required fee, are handled differently by the USPTO. According to the MPEP, “Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.” This means that unlike documents with identification issues, these documents are returned to the sender for correction, provided a correspondence address is available.

Yes, the original filing date can be preserved for corrected documents under certain conditions. The MPEP states: “The returned papers, stamped with the original date of receipt by the Office, 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 filing of the papers as the date of recording of the document.” This means that if you correct and resubmit the document within the specified timeframe, the USPTO will use the original filing date as the recording date.

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 submit a patent assignment electronically through the USPTO’s Electronic Patent Assignment System (EPAS). This is the recommended method for several reasons:

• It’s free – there is no recordation fee for electronic submissions
• It’s fast – documents are processed more quickly
• It’s convenient – you can submit 24/7 from anywhere with internet access

As stated in MPEP 302.10: “Assignments and other documents affecting title may be submitted to the Office via the Office’s Electronic Patent Assignment System (EPAS).”

To use EPAS, you’ll need to complete an online cover sheet and upload a copy of the assignment document. The signature on the electronic cover sheet must comply with USPTO regulations for electronic signatures.

For more information and to access EPAS, visit the USPTO EPAS website.

For more information on electronic patent assignment, visit: electronic patent assignment.

For more information on EPAS, visit: EPAS.

Can I submit a handwritten assignment document for recording at the USPTO?

While handwritten assignment documents are not explicitly prohibited, they are generally discouraged and may face challenges in the recording process. The MPEP 302.01 states that “Documents submitted for recording must be legible and capable of being reproduced in legible copies by use of photocopy and standard office copying equipment.” Handwritten documents may not meet this standard, especially if the handwriting is not clear and easily readable. To ensure smooth processing and avoid potential rejection, it’s recommended to submit typed or printed assignment documents that are clearly legible and meet all USPTO requirements.

Can a patent assignment be recorded electronically?

Yes, patent assignments can be recorded electronically. The USPTO provides an electronic system for recording assignment documents. According to MPEP 302:

‘Assignment documents can be submitted for recordation via the Office’s Electronic Patent Assignment System (EPAS). See the USPTO website at http://www.uspto.gov/patents-application-process/documenting-patent-ownership/epas-electronic-patent-assignment-system for additional information regarding EPAS.’

Electronic submission through EPAS is often faster and more convenient than paper submissions. However, it’s important to ensure that all necessary information and signatures are included in the electronic submission.

For more information on electronic patent assignment, visit: electronic patent assignment.

For more information on EPAS, visit: EPAS.

For more information on USPTO, visit: USPTO.

Yes, all patent assignment records are publicly accessible. MPEP 301.01 clearly states:

‘The assignment records of patents and applications are open to public inspection.’

This means that anyone can access these records, which include:

• Assignment documents
• Digests of assignments
• Indexes of patent assignments

The public nature of these records ensures transparency in patent ownership and transfers. However, it’s important to note that while the records are public, obtaining copies may require payment of a fee as specified in 37 CFR 1.19(b)(3).