Patent Law FAQ

Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:

• For name changes: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
• For mergers: Documents of merger are also proper links in the chain of title.

Recording these changes ensures:

1. The USPTO has up-to-date information on patent ownership
2. Third parties can accurately identify the current patent owner
3. The chain of title remains clear and unbroken, which can be important for future transactions or litigation
4. Compliance with legal requirements for maintaining patent rights

MPEP 303 highlights the importance of determining who should direct prosecution:

“When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

Determining who should direct prosecution is crucial because:

• It ensures that the rightful owner or assignee is making decisions about the application
• It prevents unauthorized individuals from influencing the prosecution process
• It helps resolve potential disputes over ownership or control of the application
• It maintains the integrity of the patent examination process

When there’s uncertainty about this, examiners must verify assignment information to ensure proper handling of the application.

The USPTO records documents other than assignments for several important reasons:

1. Public interest: To provide notification to third parties of equitable interests or other matters relevant to patent ownership.
2. Transparency: To maintain a clear record of various interests in patents and patent applications.
3. Legal compliance: To fulfill the requirements of 35 U.S.C. 261 and 37 CFR 3.11.

The MPEP states, “Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application.” (MPEP 313)

Assignment documents are not placed directly in patent application files to ensure proper recording and maintenance of ownership records. MPEP 318 states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This procedure serves several purposes:

• It centralizes the recording of ownership information
• It ensures that assignments are properly recorded and searchable
• It keeps the main application file focused on technical and procedural aspects of the patent application
• It allows the Assignment Division to maintain a separate database of patent ownership information

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”

For an assignee organization (e.g., corporation, partnership, university), the submission establishing ownership can be signed by:

1. A person with apparent authority to sign on behalf of the organization, such as an officer (e.g., CEO, president, vice-president, secretary, treasurer). The MPEP states: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization.”
2. Any person, if the submission states that the person is authorized to act on behalf of the assignee.
3. A person empowered by an organizational resolution, if a copy of the resolution is submitted.

If the signer does not fall into one of these categories, evidence of their authority to sign may be required. This is outlined in MPEP 324, section V.

Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states:

Title reports may not be ordered by applicants or attorneys.

These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.

MPEP 318 provides clear guidance on where assignment documents should be forwarded for recording. According to the manual:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This means that when submitting assignment documents, they should be sent to the USPTO’s Assignment Division, which is responsible for recording and maintaining records of patent ownership changes.

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.

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Consents to the correction of inventorship in a patent
• Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

Patent examiners typically do not require title reports for routine examination. The MPEP states:

Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report.

When ownership information is necessary, examiners can obtain a title report through the USPTO’s internal PALM Intranet system.

While it’s speculative to predict the exact content of MPEP 312 if it were to be filled, its placement within the ‘300 – Ownership and Assignment’ chapter suggests it could potentially cover topics related to patent ownership, assignment procedures, or updates to existing sections in this chapter. The content would likely align with the overall theme of ownership and assignment in patent law and procedures.

Patent ownership gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. This is stated in 35 U.S.C. 154(a)(1).

However, ownership does not necessarily give the owner the right to make, use, sell or import the invention, as there may be other legal considerations such as:

• Existence of another patent owner with a dominant patent
• Failure to obtain FDA approval
• An injunction by a court
• National security issues

Patent ownership grants the owner the right to exclude others from making, using, offering for sale, selling, or importing the patented invention into the United States. However, it’s important to note that ownership does not automatically grant the right to practice the invention. The MPEP states:

‘Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same…’

These other considerations may include existing patents, regulatory approvals, or legal injunctions.

Joint owners of a patent have specific rights as outlined in 35 U.S.C. 262, which states:

‘In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.’

This means that each joint owner can independently exercise the full rights of the patent without needing permission from or owing compensation to the other joint owners, unless they have a separate agreement stating otherwise.

Keeping assignment documents separate from patent application files is significant for several reasons. MPEP 318 mandates this separation:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The significance of this practice includes:

• Maintaining clear distinction between technical content and ownership information
• Ensuring proper recording and indexing of assignment documents
• Facilitating easier searches for patent ownership information
• Reducing the risk of confidential ownership information being inadvertently disclosed
• Allowing for more efficient management of ownership changes throughout a patent’s lifecycle
• Enabling the Assignment Division to specialize in handling ownership matters

This separation streamlines both the patent examination process and the management of patent ownership records.

The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents for patents and patent applications
• Recording these documents in the USPTO’s assignment database
• Maintaining accurate records of patent ownership and transfers
• Ensuring that assignment information is searchable and accessible
• Processing requests for copies of recorded documents

By centralizing these functions, the USPTO can maintain a comprehensive and up-to-date record of patent ownership separate from the technical aspects of patent prosecution.

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

• The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
• A statement affirming that the documentary evidence was or is being submitted for recordation.
• The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”

According to 35 U.S.C. 261, patents have the attributes of personal property and are assignable by an instrument in writing. Specifically, the statute states:

‘Subject to the provisions of this title, patents shall have the attributes of personal property. […] Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’

This means that patent owners can transfer their rights to others through written assignments, similar to other forms of property.

Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios:

• Multiple partial assignees of the patent property
• Multiple inventors who have not assigned their rights
• A combination of partial assignee(s) and inventor(s) who have not assigned their rights

In cases of joint ownership, all parties having any portion of the ownership must act together as a composite entity in patent matters before the USPTO. According to 35 U.S.C. 262, in the absence of any agreement to the contrary, each joint owner may make, use, offer to sell, or sell the patented invention within the United States without the consent of and without accounting to the other owners.

A title report in patent law is a form used by the Assignment Division of the USPTO to report the name of the owner of an application or patent as shown by their records on a specific date. According to the MPEP:

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made.

These reports are used internally within the USPTO and are not available for direct request by applicants or attorneys.

A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.

The chain of title includes:

• Original patent assignment
• Subsequent transfers of ownership
• Business name changes
• Mergers and acquisitions
• Any other events affecting patent ownership

Maintaining a clear and unbroken chain of title is crucial for establishing ownership rights, facilitating patent transactions, and providing clarity in potential patent litigation.

What information is available in the USPTO’s assignment database?

The USPTO’s assignment database contains a wealth of information related to patent ownership. According to MPEP 301.01:

‘The USPTO maintains a database containing the assignment records of patents and patent applications. The USPTO also maintains a cumulative index of number of assignments recorded on the day in which they are recorded.’

The database typically includes:

• Patent or application numbers
• Names of assignors and assignees
• Dates of assignment execution and recording
• Brief descriptions of the interests conveyed
• Reel and frame numbers for locating documents

This information is crucial for determining the current ownership status of patents and applications, which is essential for various legal and business purposes.

According to MPEP 314, the following documents are recordable for name changes or mergers in patent ownership:

• Certificates issued by appropriate authorities showing a change of name of a business
• Certificates showing a merger of businesses

The MPEP states: Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

When there are multiple assignees for a patent application, patent, or reexamination proceeding, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b) to take action before the USPTO. The process is as follows:

1. Each partial assignee must submit their own pre-AIA 37 CFR 3.73(b) statement.
2. In each submission, the extent of the assignee’s ownership interest must be clearly stated.
3. The USPTO needs to determine if it has obtained action by all of the right, title, and interest holders (owners).
4. If the extent of ownership is not clearly set forth, the USPTO may refuse to accept the submission.

This is outlined in MPEP 324, section VIII, which states:

“When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners).”

The MPEP further notes: “If the extent of the partial assignee’s ownership interest is not set forth in the submission under pre-AIA 37 CFR 3.73(b), the Office may refuse to accept the submission as an establishment of ownership interest.”

For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:

1. The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
2. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.

For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.

In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”

To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must:

1. File a request to change the applicant under 37 CFR 1.46(c)(2)
2. File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
3. Submit a statement under 37 CFR 3.73(c) establishing ownership

The 37 CFR 3.73(c) statement must contain either:

• Documentary evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence was submitted for recordation, or
• A statement specifying where such evidence is recorded in the Office (e.g., reel and frame number)

The MPEP states: “The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.”

USPTO examiners have a specific internal process for obtaining title reports when needed. The MPEP outlines this process:

Examiners may obtain a title report using the PALM Intranet (select “General Information,” insert the appropriate application number, select “Search,” select “Assignments”). The screen resulting from the search may be printed to yield the copy of the title report.

This internal system allows examiners to access ownership information efficiently when required for their examination duties.

While the public cannot request title reports directly, they can obtain patent ownership information through other means. The MPEP notes:

The public can request a certified abstract of title. The fee for this service is set forth at 37 CFR 1.19(b)(4).

Additionally, some assignment records are publicly available. For more information on accessible records, refer to MPEP § 301.01.

No, the USPTO does not determine the legal effect of recorded documents on patent ownership at the time of recordation. The MPEP clearly states:

“The recordation of a document is not a determination of the effect of the document on the chain of title. The determination of what, if any, effect a document has on title will be made by the Office at such times as ownership must be established to permit action to be taken by the purported assignee in connection with a patent or an application.” (MPEP 313)

This means:

• Recordation is primarily for public notice
• The USPTO will evaluate ownership when necessary for specific actions
• Parties should not assume recordation equates to USPTO approval of ownership claims

No, a mere change of business name does not constitute a change in legal entity for patent purposes. However, it is still an important part of the ownership record. As stated in MPEP 314:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.

This means that while the legal entity remains the same, the name change should be recorded to maintain an accurate chain of title for the patent.

Yes, there are two exceptions to the patent ownership restrictions for USPTO employees:

1. Inheritance
2. Bequest

According to 35 U.S.C. 4:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of… acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office.’

This means that USPTO employees can acquire patents or interests in patents through inheritance or bequest, even during their employment or the one-year period after.

Patent ownership gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. This is stated in 35 U.S.C. 154(a)(1).

However, ownership does not necessarily give the owner the right to make, use, sell or import the invention, as there may be other legal considerations such as:

• Existence of another patent owner with a dominant patent
• Failure to obtain FDA approval
• An injunction by a court
• National security issues

Patent ownership grants the owner the right to exclude others from making, using, offering for sale, selling, or importing the patented invention into the United States. However, it’s important to note that ownership does not automatically grant the right to practice the invention. The MPEP states:

‘Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same…’

These other considerations may include existing patents, regulatory approvals, or legal injunctions.

Joint owners of a patent have specific rights as outlined in 35 U.S.C. 262, which states:

‘In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.’

This means that each joint owner can independently exercise the full rights of the patent without needing permission from or owing compensation to the other joint owners, unless they have a separate agreement stating otherwise.

According to 35 U.S.C. 261, patents have the attributes of personal property and are assignable by an instrument in writing. Specifically, the statute states:

‘Subject to the provisions of this title, patents shall have the attributes of personal property. […] Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’

This means that patent owners can transfer their rights to others through written assignments, similar to other forms of property.

Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios:

• Multiple partial assignees of the patent property
• Multiple inventors who have not assigned their rights
• A combination of partial assignee(s) and inventor(s) who have not assigned their rights

In cases of joint ownership, all parties having any portion of the ownership must act together as a composite entity in patent matters before the USPTO. According to 35 U.S.C. 262, in the absence of any agreement to the contrary, each joint owner may make, use, offer to sell, or sell the patented invention within the United States without the consent of and without accounting to the other owners.

What information is available in the USPTO’s assignment database?

The USPTO’s assignment database contains a wealth of information related to patent ownership. According to MPEP 301.01:

‘The USPTO maintains a database containing the assignment records of patents and patent applications. The USPTO also maintains a cumulative index of number of assignments recorded on the day in which they are recorded.’

The database typically includes:

• Patent or application numbers
• Names of assignors and assignees
• Dates of assignment execution and recording
• Brief descriptions of the interests conveyed
• Reel and frame numbers for locating documents

This information is crucial for determining the current ownership status of patents and applications, which is essential for various legal and business purposes.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

MPEP 303 highlights the importance of determining who should direct prosecution:

“When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

Determining who should direct prosecution is crucial because:

• It ensures that the rightful owner or assignee is making decisions about the application
• It prevents unauthorized individuals from influencing the prosecution process
• It helps resolve potential disputes over ownership or control of the application
• It maintains the integrity of the patent examination process

When there’s uncertainty about this, examiners must verify assignment information to ensure proper handling of the application.

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.

Yes, there are two exceptions to the patent ownership restrictions for USPTO employees:

1. Inheritance
2. Bequest

According to 35 U.S.C. 4:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of… acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office.’

This means that USPTO employees can acquire patents or interests in patents through inheritance or bequest, even during their employment or the one-year period after.

While it’s speculative to predict the exact content of MPEP 312 if it were to be filled, its placement within the ‘300 – Ownership and Assignment’ chapter suggests it could potentially cover topics related to patent ownership, assignment procedures, or updates to existing sections in this chapter. The content would likely align with the overall theme of ownership and assignment in patent law and procedures.

Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:

• For name changes: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
• For mergers: Documents of merger are also proper links in the chain of title.

Recording these changes ensures:

1. The USPTO has up-to-date information on patent ownership
2. Third parties can accurately identify the current patent owner
3. The chain of title remains clear and unbroken, which can be important for future transactions or litigation
4. Compliance with legal requirements for maintaining patent rights

A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.

The chain of title includes:

• Original patent assignment
• Subsequent transfers of ownership
• Business name changes
• Mergers and acquisitions
• Any other events affecting patent ownership

Maintaining a clear and unbroken chain of title is crucial for establishing ownership rights, facilitating patent transactions, and providing clarity in potential patent litigation.

According to MPEP 314, the following documents are recordable for name changes or mergers in patent ownership:

• Certificates issued by appropriate authorities showing a change of name of a business
• Certificates showing a merger of businesses

The MPEP states: Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.

No, a mere change of business name does not constitute a change in legal entity for patent purposes. However, it is still an important part of the ownership record. As stated in MPEP 314:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.

This means that while the legal entity remains the same, the name change should be recorded to maintain an accurate chain of title for the patent.

Assignment documents are not placed directly in patent application files to ensure proper recording and maintenance of ownership records. MPEP 318 states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This procedure serves several purposes:

• It centralizes the recording of ownership information
• It ensures that assignments are properly recorded and searchable
• It keeps the main application file focused on technical and procedural aspects of the patent application
• It allows the Assignment Division to maintain a separate database of patent ownership information

MPEP 318 provides clear guidance on where assignment documents should be forwarded for recording. According to the manual:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This means that when submitting assignment documents, they should be sent to the USPTO’s Assignment Division, which is responsible for recording and maintaining records of patent ownership changes.

Keeping assignment documents separate from patent application files is significant for several reasons. MPEP 318 mandates this separation:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The significance of this practice includes:

• Maintaining clear distinction between technical content and ownership information
• Ensuring proper recording and indexing of assignment documents
• Facilitating easier searches for patent ownership information
• Reducing the risk of confidential ownership information being inadvertently disclosed
• Allowing for more efficient management of ownership changes throughout a patent’s lifecycle
• Enabling the Assignment Division to specialize in handling ownership matters

This separation streamlines both the patent examination process and the management of patent ownership records.

The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents for patents and patent applications
• Recording these documents in the USPTO’s assignment database
• Maintaining accurate records of patent ownership and transfers
• Ensuring that assignment information is searchable and accessible
• Processing requests for copies of recorded documents

By centralizing these functions, the USPTO can maintain a comprehensive and up-to-date record of patent ownership separate from the technical aspects of patent prosecution.

Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states:

Title reports may not be ordered by applicants or attorneys.

These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.

Patent examiners typically do not require title reports for routine examination. The MPEP states:

Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report.

When ownership information is necessary, examiners can obtain a title report through the USPTO’s internal PALM Intranet system.

A title report in patent law is a form used by the Assignment Division of the USPTO to report the name of the owner of an application or patent as shown by their records on a specific date. According to the MPEP:

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made.

These reports are used internally within the USPTO and are not available for direct request by applicants or attorneys.

USPTO examiners have a specific internal process for obtaining title reports when needed. The MPEP outlines this process:

Examiners may obtain a title report using the PALM Intranet (select “General Information,” insert the appropriate application number, select “Search,” select “Assignments”). The screen resulting from the search may be printed to yield the copy of the title report.

This internal system allows examiners to access ownership information efficiently when required for their examination duties.

While the public cannot request title reports directly, they can obtain patent ownership information through other means. The MPEP notes:

The public can request a certified abstract of title. The fee for this service is set forth at 37 CFR 1.19(b)(4).

Additionally, some assignment records are publicly available. For more information on accessible records, refer to MPEP § 301.01.

For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.

As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”

Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:

1. For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
2. For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.

MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”

For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.

As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”

Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:

1. For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
2. For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.

MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”

Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:

• For name changes: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
• For mergers: Documents of merger are also proper links in the chain of title.

Recording these changes ensures:

1. The USPTO has up-to-date information on patent ownership
2. Third parties can accurately identify the current patent owner
3. The chain of title remains clear and unbroken, which can be important for future transactions or litigation
4. Compliance with legal requirements for maintaining patent rights

MPEP 303 highlights the importance of determining who should direct prosecution:

“When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

Determining who should direct prosecution is crucial because:

• It ensures that the rightful owner or assignee is making decisions about the application
• It prevents unauthorized individuals from influencing the prosecution process
• It helps resolve potential disputes over ownership or control of the application
• It maintains the integrity of the patent examination process

When there’s uncertainty about this, examiners must verify assignment information to ensure proper handling of the application.

The USPTO records documents other than assignments for several important reasons:

1. Public interest: To provide notification to third parties of equitable interests or other matters relevant to patent ownership.
2. Transparency: To maintain a clear record of various interests in patents and patent applications.
3. Legal compliance: To fulfill the requirements of 35 U.S.C. 261 and 37 CFR 3.11.

The MPEP states, “Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application.” (MPEP 313)

Assignment documents are not placed directly in patent application files to ensure proper recording and maintenance of ownership records. MPEP 318 states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This procedure serves several purposes:

• It centralizes the recording of ownership information
• It ensures that assignments are properly recorded and searchable
• It keeps the main application file focused on technical and procedural aspects of the patent application
• It allows the Assignment Division to maintain a separate database of patent ownership information

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”

For an assignee organization (e.g., corporation, partnership, university), the submission establishing ownership can be signed by:

1. A person with apparent authority to sign on behalf of the organization, such as an officer (e.g., CEO, president, vice-president, secretary, treasurer). The MPEP states: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization.”
2. Any person, if the submission states that the person is authorized to act on behalf of the assignee.
3. A person empowered by an organizational resolution, if a copy of the resolution is submitted.

If the signer does not fall into one of these categories, evidence of their authority to sign may be required. This is outlined in MPEP 324, section V.

Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states:

Title reports may not be ordered by applicants or attorneys.

These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.

For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.

As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”

MPEP 318 provides clear guidance on where assignment documents should be forwarded for recording. According to the manual:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This means that when submitting assignment documents, they should be sent to the USPTO’s Assignment Division, which is responsible for recording and maintaining records of patent ownership changes.

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.

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Consents to the correction of inventorship in a patent
• Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

Patent examiners typically do not require title reports for routine examination. The MPEP states:

Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report.

When ownership information is necessary, examiners can obtain a title report through the USPTO’s internal PALM Intranet system.

While it’s speculative to predict the exact content of MPEP 312 if it were to be filled, its placement within the ‘300 – Ownership and Assignment’ chapter suggests it could potentially cover topics related to patent ownership, assignment procedures, or updates to existing sections in this chapter. The content would likely align with the overall theme of ownership and assignment in patent law and procedures.

Patent ownership gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. This is stated in 35 U.S.C. 154(a)(1).

However, ownership does not necessarily give the owner the right to make, use, sell or import the invention, as there may be other legal considerations such as:

• Existence of another patent owner with a dominant patent
• Failure to obtain FDA approval
• An injunction by a court
• National security issues

Patent ownership grants the owner the right to exclude others from making, using, offering for sale, selling, or importing the patented invention into the United States. However, it’s important to note that ownership does not automatically grant the right to practice the invention. The MPEP states:

‘Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same…’

These other considerations may include existing patents, regulatory approvals, or legal injunctions.

Joint owners of a patent have specific rights as outlined in 35 U.S.C. 262, which states:

‘In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.’

This means that each joint owner can independently exercise the full rights of the patent without needing permission from or owing compensation to the other joint owners, unless they have a separate agreement stating otherwise.

Keeping assignment documents separate from patent application files is significant for several reasons. MPEP 318 mandates this separation:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The significance of this practice includes:

• Maintaining clear distinction between technical content and ownership information
• Ensuring proper recording and indexing of assignment documents
• Facilitating easier searches for patent ownership information
• Reducing the risk of confidential ownership information being inadvertently disclosed
• Allowing for more efficient management of ownership changes throughout a patent’s lifecycle
• Enabling the Assignment Division to specialize in handling ownership matters

This separation streamlines both the patent examination process and the management of patent ownership records.

The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents for patents and patent applications
• Recording these documents in the USPTO’s assignment database
• Maintaining accurate records of patent ownership and transfers
• Ensuring that assignment information is searchable and accessible
• Processing requests for copies of recorded documents

By centralizing these functions, the USPTO can maintain a comprehensive and up-to-date record of patent ownership separate from the technical aspects of patent prosecution.

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

• The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
• A statement affirming that the documentary evidence was or is being submitted for recordation.
• The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”

According to 35 U.S.C. 261, patents have the attributes of personal property and are assignable by an instrument in writing. Specifically, the statute states:

‘Subject to the provisions of this title, patents shall have the attributes of personal property. […] Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’

This means that patent owners can transfer their rights to others through written assignments, similar to other forms of property.

Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios:

• Multiple partial assignees of the patent property
• Multiple inventors who have not assigned their rights
• A combination of partial assignee(s) and inventor(s) who have not assigned their rights

In cases of joint ownership, all parties having any portion of the ownership must act together as a composite entity in patent matters before the USPTO. According to 35 U.S.C. 262, in the absence of any agreement to the contrary, each joint owner may make, use, offer to sell, or sell the patented invention within the United States without the consent of and without accounting to the other owners.

A title report in patent law is a form used by the Assignment Division of the USPTO to report the name of the owner of an application or patent as shown by their records on a specific date. According to the MPEP:

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made.

These reports are used internally within the USPTO and are not available for direct request by applicants or attorneys.

A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.

The chain of title includes:

• Original patent assignment
• Subsequent transfers of ownership
• Business name changes
• Mergers and acquisitions
• Any other events affecting patent ownership

Maintaining a clear and unbroken chain of title is crucial for establishing ownership rights, facilitating patent transactions, and providing clarity in potential patent litigation.

What information is available in the USPTO’s assignment database?

The USPTO’s assignment database contains a wealth of information related to patent ownership. According to MPEP 301.01:

‘The USPTO maintains a database containing the assignment records of patents and patent applications. The USPTO also maintains a cumulative index of number of assignments recorded on the day in which they are recorded.’

The database typically includes:

• Patent or application numbers
• Names of assignors and assignees
• Dates of assignment execution and recording
• Brief descriptions of the interests conveyed
• Reel and frame numbers for locating documents

This information is crucial for determining the current ownership status of patents and applications, which is essential for various legal and business purposes.

According to MPEP 314, the following documents are recordable for name changes or mergers in patent ownership:

• Certificates issued by appropriate authorities showing a change of name of a business
• Certificates showing a merger of businesses

The MPEP states: Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

When there are multiple assignees for a patent application, patent, or reexamination proceeding, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b) to take action before the USPTO. The process is as follows:

1. Each partial assignee must submit their own pre-AIA 37 CFR 3.73(b) statement.
2. In each submission, the extent of the assignee’s ownership interest must be clearly stated.
3. The USPTO needs to determine if it has obtained action by all of the right, title, and interest holders (owners).
4. If the extent of ownership is not clearly set forth, the USPTO may refuse to accept the submission.

This is outlined in MPEP 324, section VIII, which states:

“When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners).”

The MPEP further notes: “If the extent of the partial assignee’s ownership interest is not set forth in the submission under pre-AIA 37 CFR 3.73(b), the Office may refuse to accept the submission as an establishment of ownership interest.”

For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:

1. The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
2. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.

For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.

In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”

To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must:

1. File a request to change the applicant under 37 CFR 1.46(c)(2)
2. File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
3. Submit a statement under 37 CFR 3.73(c) establishing ownership

The 37 CFR 3.73(c) statement must contain either:

• Documentary evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence was submitted for recordation, or
• A statement specifying where such evidence is recorded in the Office (e.g., reel and frame number)

The MPEP states: “The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.”

USPTO examiners have a specific internal process for obtaining title reports when needed. The MPEP outlines this process:

Examiners may obtain a title report using the PALM Intranet (select “General Information,” insert the appropriate application number, select “Search,” select “Assignments”). The screen resulting from the search may be printed to yield the copy of the title report.

This internal system allows examiners to access ownership information efficiently when required for their examination duties.

While the public cannot request title reports directly, they can obtain patent ownership information through other means. The MPEP notes:

The public can request a certified abstract of title. The fee for this service is set forth at 37 CFR 1.19(b)(4).

Additionally, some assignment records are publicly available. For more information on accessible records, refer to MPEP § 301.01.

No, the USPTO does not determine the legal effect of recorded documents on patent ownership at the time of recordation. The MPEP clearly states:

“The recordation of a document is not a determination of the effect of the document on the chain of title. The determination of what, if any, effect a document has on title will be made by the Office at such times as ownership must be established to permit action to be taken by the purported assignee in connection with a patent or an application.” (MPEP 313)

This means:

• Recordation is primarily for public notice
• The USPTO will evaluate ownership when necessary for specific actions
• Parties should not assume recordation equates to USPTO approval of ownership claims

No, a mere change of business name does not constitute a change in legal entity for patent purposes. However, it is still an important part of the ownership record. As stated in MPEP 314:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.

This means that while the legal entity remains the same, the name change should be recorded to maintain an accurate chain of title for the patent.

Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:

1. For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
2. For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.

MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”

Yes, there are two exceptions to the patent ownership restrictions for USPTO employees:

1. Inheritance
2. Bequest

According to 35 U.S.C. 4:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of… acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office.’

This means that USPTO employees can acquire patents or interests in patents through inheritance or bequest, even during their employment or the one-year period after.

Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:

• For name changes: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
• For mergers: Documents of merger are also proper links in the chain of title.

Recording these changes ensures:

1. The USPTO has up-to-date information on patent ownership
2. Third parties can accurately identify the current patent owner
3. The chain of title remains clear and unbroken, which can be important for future transactions or litigation
4. Compliance with legal requirements for maintaining patent rights

MPEP 303 highlights the importance of determining who should direct prosecution:

“When the assignment condition of an application is significant, such as… when there is a question as to who should direct prosecution, it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

Determining who should direct prosecution is crucial because:

• It ensures that the rightful owner or assignee is making decisions about the application
• It prevents unauthorized individuals from influencing the prosecution process
• It helps resolve potential disputes over ownership or control of the application
• It maintains the integrity of the patent examination process

When there’s uncertainty about this, examiners must verify assignment information to ensure proper handling of the application.

The USPTO records documents other than assignments for several important reasons:

1. Public interest: To provide notification to third parties of equitable interests or other matters relevant to patent ownership.
2. Transparency: To maintain a clear record of various interests in patents and patent applications.
3. Legal compliance: To fulfill the requirements of 35 U.S.C. 261 and 37 CFR 3.11.

The MPEP states, “Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application.” (MPEP 313)

Assignment documents are not placed directly in patent application files to ensure proper recording and maintenance of ownership records. MPEP 318 states:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This procedure serves several purposes:

• It centralizes the recording of ownership information
• It ensures that assignments are properly recorded and searchable
• It keeps the main application file focused on technical and procedural aspects of the patent application
• It allows the Assignment Division to maintain a separate database of patent ownership information

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”

For an assignee organization (e.g., corporation, partnership, university), the submission establishing ownership can be signed by:

1. A person with apparent authority to sign on behalf of the organization, such as an officer (e.g., CEO, president, vice-president, secretary, treasurer). The MPEP states: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization.”
2. Any person, if the submission states that the person is authorized to act on behalf of the assignee.
3. A person empowered by an organizational resolution, if a copy of the resolution is submitted.

If the signer does not fall into one of these categories, evidence of their authority to sign may be required. This is outlined in MPEP 324, section V.

Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states:

Title reports may not be ordered by applicants or attorneys.

These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.

For applications filed on or after September 16, 2012, a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner. For applications filed before September 16, 2012, a power of attorney can be signed by the applicant or the assignee of the entire interest of the applicant.

As stated in MPEP 402.02(a): “For applications filed on or after September 16, 2012, 37 CFR 1.32(b)(4) sets forth that a power of attorney must be signed by the applicant for patent (i.e., all parties identified as the applicant as defined by 37 CFR 1.42(a)) or the patent owner (for reissue applications, reexamination proceedings and supplemental examination proceedings).”

MPEP 318 provides clear guidance on where assignment documents should be forwarded for recording. According to the manual:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

This means that when submitting assignment documents, they should be sent to the USPTO’s Assignment Division, which is responsible for recording and maintaining records of patent ownership changes.

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.

Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee:

• Signs a request for status of an application
• Gives a power to inspect an application
• Appoints its own registered attorney or agent to prosecute an application
• Signs a disclaimer under 37 CFR 1.321
• Consents to the filing of a reissue application
• Consents to the correction of inventorship in a patent
• Signs a Fee(s) Transmittal (PTOL-85B)

The MPEP states: “Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306).”

Note that effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

Patent examiners typically do not require title reports for routine examination. The MPEP states:

Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report.

When ownership information is necessary, examiners can obtain a title report through the USPTO’s internal PALM Intranet system.

While it’s speculative to predict the exact content of MPEP 312 if it were to be filled, its placement within the ‘300 – Ownership and Assignment’ chapter suggests it could potentially cover topics related to patent ownership, assignment procedures, or updates to existing sections in this chapter. The content would likely align with the overall theme of ownership and assignment in patent law and procedures.

Patent ownership gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. This is stated in 35 U.S.C. 154(a)(1).

However, ownership does not necessarily give the owner the right to make, use, sell or import the invention, as there may be other legal considerations such as:

• Existence of another patent owner with a dominant patent
• Failure to obtain FDA approval
• An injunction by a court
• National security issues

Patent ownership grants the owner the right to exclude others from making, using, offering for sale, selling, or importing the patented invention into the United States. However, it’s important to note that ownership does not automatically grant the right to practice the invention. The MPEP states:

‘Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same…’

These other considerations may include existing patents, regulatory approvals, or legal injunctions.

Joint owners of a patent have specific rights as outlined in 35 U.S.C. 262, which states:

‘In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.’

This means that each joint owner can independently exercise the full rights of the patent without needing permission from or owing compensation to the other joint owners, unless they have a separate agreement stating otherwise.

Keeping assignment documents separate from patent application files is significant for several reasons. MPEP 318 mandates this separation:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The significance of this practice includes:

• Maintaining clear distinction between technical content and ownership information
• Ensuring proper recording and indexing of assignment documents
• Facilitating easier searches for patent ownership information
• Reducing the risk of confidential ownership information being inadvertently disclosed
• Allowing for more efficient management of ownership changes throughout a patent’s lifecycle
• Enabling the Assignment Division to specialize in handling ownership matters

This separation streamlines both the patent examination process and the management of patent ownership records.

The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents for patents and patent applications
• Recording these documents in the USPTO’s assignment database
• Maintaining accurate records of patent ownership and transfers
• Ensuring that assignment information is searchable and accessible
• Processing requests for copies of recorded documents

By centralizing these functions, the USPTO can maintain a comprehensive and up-to-date record of patent ownership separate from the technical aspects of patent prosecution.

To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required:

• The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records.
• A statement affirming that the documentary evidence was or is being submitted for recordation.
• The submission must be signed by a person authorized to act on behalf of the assignee.

This is outlined in pre-AIA 37 CFR 3.73(b), which states:

“In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either: (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).”

According to 35 U.S.C. 261, patents have the attributes of personal property and are assignable by an instrument in writing. Specifically, the statute states:

‘Subject to the provisions of this title, patents shall have the attributes of personal property. […] Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’

This means that patent owners can transfer their rights to others through written assignments, similar to other forms of property.

Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios:

• Multiple partial assignees of the patent property
• Multiple inventors who have not assigned their rights
• A combination of partial assignee(s) and inventor(s) who have not assigned their rights

In cases of joint ownership, all parties having any portion of the ownership must act together as a composite entity in patent matters before the USPTO. According to 35 U.S.C. 262, in the absence of any agreement to the contrary, each joint owner may make, use, offer to sell, or sell the patented invention within the United States without the consent of and without accounting to the other owners.

A title report in patent law is a form used by the Assignment Division of the USPTO to report the name of the owner of an application or patent as shown by their records on a specific date. According to the MPEP:

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made.

These reports are used internally within the USPTO and are not available for direct request by applicants or attorneys.

A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title.

The chain of title includes:

• Original patent assignment
• Subsequent transfers of ownership
• Business name changes
• Mergers and acquisitions
• Any other events affecting patent ownership

Maintaining a clear and unbroken chain of title is crucial for establishing ownership rights, facilitating patent transactions, and providing clarity in potential patent litigation.

What information is available in the USPTO’s assignment database?

The USPTO’s assignment database contains a wealth of information related to patent ownership. According to MPEP 301.01:

‘The USPTO maintains a database containing the assignment records of patents and patent applications. The USPTO also maintains a cumulative index of number of assignments recorded on the day in which they are recorded.’

The database typically includes:

• Patent or application numbers
• Names of assignors and assignees
• Dates of assignment execution and recording
• Brief descriptions of the interests conveyed
• Reel and frame numbers for locating documents

This information is crucial for determining the current ownership status of patents and applications, which is essential for various legal and business purposes.

According to MPEP 314, the following documents are recordable for name changes or mergers in patent ownership:

• Certificates issued by appropriate authorities showing a change of name of a business
• Certificates showing a merger of businesses

The MPEP states: Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.

The initial ownership of a patent depends on the filing date of the application. For applications filed on or after September 16, 2012, the MPEP states:

‘For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a).’

For applications filed before September 16, 2012:

‘For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent.’

This distinction is important for determining the initial owner of a patent or patent application.

When there are multiple assignees for a patent application, patent, or reexamination proceeding, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b) to take action before the USPTO. The process is as follows:

1. Each partial assignee must submit their own pre-AIA 37 CFR 3.73(b) statement.
2. In each submission, the extent of the assignee’s ownership interest must be clearly stated.
3. The USPTO needs to determine if it has obtained action by all of the right, title, and interest holders (owners).
4. If the extent of ownership is not clearly set forth, the USPTO may refuse to accept the submission.

This is outlined in MPEP 324, section VIII, which states:

“When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners).”

The MPEP further notes: “If the extent of the partial assignee’s ownership interest is not set forth in the submission under pre-AIA 37 CFR 3.73(b), the Office may refuse to accept the submission as an establishment of ownership interest.”

For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:

1. The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
2. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.

For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.

In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”

To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must:

1. File a request to change the applicant under 37 CFR 1.46(c)(2)
2. File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant
3. Submit a statement under 37 CFR 3.73(c) establishing ownership

The 37 CFR 3.73(c) statement must contain either:

• Documentary evidence of a chain of title from the original owner to the assignee and a statement affirming that the documentary evidence was submitted for recordation, or
• A statement specifying where such evidence is recorded in the Office (e.g., reel and frame number)

The MPEP states: “The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.”

USPTO examiners have a specific internal process for obtaining title reports when needed. The MPEP outlines this process:

Examiners may obtain a title report using the PALM Intranet (select “General Information,” insert the appropriate application number, select “Search,” select “Assignments”). The screen resulting from the search may be printed to yield the copy of the title report.

This internal system allows examiners to access ownership information efficiently when required for their examination duties.

While the public cannot request title reports directly, they can obtain patent ownership information through other means. The MPEP notes:

The public can request a certified abstract of title. The fee for this service is set forth at 37 CFR 1.19(b)(4).

Additionally, some assignment records are publicly available. For more information on accessible records, refer to MPEP § 301.01.

No, the USPTO does not determine the legal effect of recorded documents on patent ownership at the time of recordation. The MPEP clearly states:

“The recordation of a document is not a determination of the effect of the document on the chain of title. The determination of what, if any, effect a document has on title will be made by the Office at such times as ownership must be established to permit action to be taken by the purported assignee in connection with a patent or an application.” (MPEP 313)

This means:

• Recordation is primarily for public notice
• The USPTO will evaluate ownership when necessary for specific actions
• Parties should not assume recordation equates to USPTO approval of ownership claims

No, a mere change of business name does not constitute a change in legal entity for patent purposes. However, it is still an important part of the ownership record. As stated in MPEP 314:

Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.

This means that while the legal entity remains the same, the name change should be recorded to maintain an accurate chain of title for the patent.

Generally, a power of attorney must be signed by all applicants or owners of a patent application. However, there are exceptions:

1. For revocation: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.36(a) and fee, with a showing of sufficient cause.
2. For appointment: A power of attorney signed by less than all applicants/owners may be accepted if accompanied by a petition under 37 CFR 1.183 and fee, demonstrating an extraordinary situation where justice requires waiver of the requirement.

MPEP 402.10 states: “The appointment and/or revocation are not accepted until the petition under 37 CFR 1.36(a) or 1.183 is granted. Therefore, the attorney or agent newly appointed by such papers is not permitted to submit any documents (such as an information disclosure statement (IDS)) into the application file until the petition under 37 CFR 1.36(a) or 1.183 is granted.”

Yes, there are two exceptions to the patent ownership restrictions for USPTO employees:

1. Inheritance
2. Bequest

According to 35 U.S.C. 4:

‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of… acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office.’

This means that USPTO employees can acquire patents or interests in patents through inheritance or bequest, even during their employment or the one-year period after.