Patent Law FAQ

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).”

According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:

1. A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
2. Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
3. A patent practitioner of record
4. A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted

The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”

According to 35 U.S.C. 118, the following parties can file a patent application:

• A person to whom the inventor has assigned the invention
• A person to whom the inventor is under an obligation to assign the invention
• A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor

The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

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.

The process for issuing a patent to a non-applicant assignee involves the following steps:

1. A request for issuance to the assignee must be submitted with the payment of the issue fee.
2. The assignment must have been previously recorded in the USPTO or filed for recordation.
3. If the request is submitted after the issue fee payment, additional requirements apply, including a request for a certificate of correction and associated fees.

According to 37 CFR 3.81(a): An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office.

The process for issuing a patent to a non-applicant assignee involves the following steps:

1. A request for issuance to the assignee must be submitted with the payment of the issue fee.
2. The assignment must have been previously recorded in the USPTO or filed for recordation.
3. If the request is submitted after the issue fee payment, additional requirements apply, including a request for a certificate of correction and associated fees.

According to 37 CFR 3.81(a): An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office.

According to 35 U.S.C. 118, the following parties can file a patent application:

• A person to whom the inventor has assigned the invention
• A person to whom the inventor is under an obligation to assign the invention
• A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor

The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

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.

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

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).”

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).”

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).”

According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:

1. A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
2. Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
3. A patent practitioner of record
4. A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted

The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”

According to 35 U.S.C. 118, the following parties can file a patent application:

• A person to whom the inventor has assigned the invention
• A person to whom the inventor is under an obligation to assign the invention
• A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor

The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

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).”

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.

The process for issuing a patent to a non-applicant assignee involves the following steps:

1. A request for issuance to the assignee must be submitted with the payment of the issue fee.
2. The assignment must have been previously recorded in the USPTO or filed for recordation.
3. If the request is submitted after the issue fee payment, additional requirements apply, including a request for a certificate of correction and associated fees.

According to 37 CFR 3.81(a): An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office.

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).”

According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by:

1. A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer)
2. Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee
3. A patent practitioner of record
4. A person empowered by an organizational resolution to sign on behalf of the assignee, if a copy of the resolution is submitted

The MPEP clarifies: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.”

According to 35 U.S.C. 118, the following parties can file a patent application:

• A person to whom the inventor has assigned the invention
• A person to whom the inventor is under an obligation to assign the invention
• A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor

The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:

• The inventor(s)
• An assignee to whom the inventor has assigned the invention
• An obligated assignee to whom the inventor is under an obligation to assign the invention
• A person who otherwise shows sufficient proprietary interest in the matter

As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

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).”

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.

The process for issuing a patent to a non-applicant assignee involves the following steps:

1. A request for issuance to the assignee must be submitted with the payment of the issue fee.
2. The assignment must have been previously recorded in the USPTO or filed for recordation.
3. If the request is submitted after the issue fee payment, additional requirements apply, including a request for a certificate of correction and associated fees.

According to 37 CFR 3.81(a): An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office.