Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 400 - Representative of Applicant or Owner (8)
- 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
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant:
- 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 otherwise shows sufficient proprietary interest in the matter
The regulation 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.
To learn more:
An ‘obligated assignee’ is a person or entity who has a contractual obligation to assign the rights to an invention but has not yet done so. According to MPEP 409.05, an obligated assignee can file a patent application on behalf of the inventor if they meet certain requirements:
- They must have a contractual obligation with the inventor to assign the entire right, title, and interest in the application.
- They must file an application data sheet under 37 CFR 1.76 naming the inventor and including a statement that the application is being filed by the obligated assignee.
The MPEP states: ‘An assignee who is not the original applicant may file a patent application as long as the application is accompanied by a statement that establishes the assignee’s ownership interest.’ This provision allows obligated assignees to initiate the patent process even before the formal assignment has taken place.
To learn more:
In patent applications, there is a distinction between an assignee and an obligated assignee. According to MPEP 409.05:
- Assignee: A person or entity to whom the inventor has already transferred ownership rights of the invention.
- Obligated Assignee: A person or entity to whom the inventor is under a contractual obligation to assign the invention in the future, but the transfer has not yet occurred.
The MPEP states:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
Both assignees and obligated assignees have the right to file patent applications under this provision. The key difference lies in the timing and completion of the assignment process. An assignee has already received the rights, while an obligated assignee has a binding agreement to receive the rights in the future.
To learn more:
An ‘obligated assignee’ in patent applications refers to a person or entity who is under an obligation to assign the invention but has not yet executed an assignment. This concept is important in the context of MPEP 409.05, which states:
An assignee or obligated assignee who is the applicant may execute a substitute statement under 37 CFR 1.64 in lieu of an inventor’s oath or declaration.
This provision allows an obligated assignee to file a patent application and execute certain documents on behalf of the inventor, even if the formal assignment has not yet been completed.
To learn more:
To learn more:
When filing a patent application as an assignee or obligated assignee, specific documentation is required to establish the right to apply for the patent. According to MPEP 409.05:
Quote: ‘The assignee or obligated assignee who files the application must comply with the oath or declaration requirements of 37 CFR 1.63, including meeting the citizenship requirement of 37 CFR 1.63(a)(3).’
The required documentation includes:
- A properly executed oath or declaration from the inventors
- An assignment document or proof of obligation to assign
- Application Data Sheet (ADS) identifying the assignee as the applicant
Additionally, if filing as an obligated assignee, you may need to provide evidence of the obligation to assign, such as an employment agreement or contract. It’s important to ensure all documentation is complete and accurate to avoid potential issues with the patent application process.
To learn more:
What documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that the assignee or obligated assignee should record their ownership documents (such as an assignment or employment agreement) with the USPTO as specified in 37 CFR Part 3, and this should be done before paying the issue fee.
To learn more:
How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
To learn more:
Patent Law (8)
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.”
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant:
- 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 otherwise shows sufficient proprietary interest in the matter
The regulation 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.
To learn more:
An ‘obligated assignee’ is a person or entity who has a contractual obligation to assign the rights to an invention but has not yet done so. According to MPEP 409.05, an obligated assignee can file a patent application on behalf of the inventor if they meet certain requirements:
- They must have a contractual obligation with the inventor to assign the entire right, title, and interest in the application.
- They must file an application data sheet under 37 CFR 1.76 naming the inventor and including a statement that the application is being filed by the obligated assignee.
The MPEP states: ‘An assignee who is not the original applicant may file a patent application as long as the application is accompanied by a statement that establishes the assignee’s ownership interest.’ This provision allows obligated assignees to initiate the patent process even before the formal assignment has taken place.
To learn more:
In patent applications, there is a distinction between an assignee and an obligated assignee. According to MPEP 409.05:
- Assignee: A person or entity to whom the inventor has already transferred ownership rights of the invention.
- Obligated Assignee: A person or entity to whom the inventor is under a contractual obligation to assign the invention in the future, but the transfer has not yet occurred.
The MPEP states:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
Both assignees and obligated assignees have the right to file patent applications under this provision. The key difference lies in the timing and completion of the assignment process. An assignee has already received the rights, while an obligated assignee has a binding agreement to receive the rights in the future.
To learn more:
An ‘obligated assignee’ in patent applications refers to a person or entity who is under an obligation to assign the invention but has not yet executed an assignment. This concept is important in the context of MPEP 409.05, which states:
An assignee or obligated assignee who is the applicant may execute a substitute statement under 37 CFR 1.64 in lieu of an inventor’s oath or declaration.
This provision allows an obligated assignee to file a patent application and execute certain documents on behalf of the inventor, even if the formal assignment has not yet been completed.
To learn more:
To learn more:
When filing a patent application as an assignee or obligated assignee, specific documentation is required to establish the right to apply for the patent. According to MPEP 409.05:
Quote: ‘The assignee or obligated assignee who files the application must comply with the oath or declaration requirements of 37 CFR 1.63, including meeting the citizenship requirement of 37 CFR 1.63(a)(3).’
The required documentation includes:
- A properly executed oath or declaration from the inventors
- An assignment document or proof of obligation to assign
- Application Data Sheet (ADS) identifying the assignee as the applicant
Additionally, if filing as an obligated assignee, you may need to provide evidence of the obligation to assign, such as an employment agreement or contract. It’s important to ensure all documentation is complete and accurate to avoid potential issues with the patent application process.
To learn more:
What documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that the assignee or obligated assignee should record their ownership documents (such as an assignment or employment agreement) with the USPTO as specified in 37 CFR Part 3, and this should be done before paying the issue fee.
To learn more:
How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
To learn more:
Patent Procedure (8)
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.”
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant:
- 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 otherwise shows sufficient proprietary interest in the matter
The regulation 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.
To learn more:
An ‘obligated assignee’ is a person or entity who has a contractual obligation to assign the rights to an invention but has not yet done so. According to MPEP 409.05, an obligated assignee can file a patent application on behalf of the inventor if they meet certain requirements:
- They must have a contractual obligation with the inventor to assign the entire right, title, and interest in the application.
- They must file an application data sheet under 37 CFR 1.76 naming the inventor and including a statement that the application is being filed by the obligated assignee.
The MPEP states: ‘An assignee who is not the original applicant may file a patent application as long as the application is accompanied by a statement that establishes the assignee’s ownership interest.’ This provision allows obligated assignees to initiate the patent process even before the formal assignment has taken place.
To learn more:
In patent applications, there is a distinction between an assignee and an obligated assignee. According to MPEP 409.05:
- Assignee: A person or entity to whom the inventor has already transferred ownership rights of the invention.
- Obligated Assignee: A person or entity to whom the inventor is under a contractual obligation to assign the invention in the future, but the transfer has not yet occurred.
The MPEP states:
Quote: ‘A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.’
Both assignees and obligated assignees have the right to file patent applications under this provision. The key difference lies in the timing and completion of the assignment process. An assignee has already received the rights, while an obligated assignee has a binding agreement to receive the rights in the future.
To learn more:
An ‘obligated assignee’ in patent applications refers to a person or entity who is under an obligation to assign the invention but has not yet executed an assignment. This concept is important in the context of MPEP 409.05, which states:
An assignee or obligated assignee who is the applicant may execute a substitute statement under 37 CFR 1.64 in lieu of an inventor’s oath or declaration.
This provision allows an obligated assignee to file a patent application and execute certain documents on behalf of the inventor, even if the formal assignment has not yet been completed.
To learn more:
To learn more:
When filing a patent application as an assignee or obligated assignee, specific documentation is required to establish the right to apply for the patent. According to MPEP 409.05:
Quote: ‘The assignee or obligated assignee who files the application must comply with the oath or declaration requirements of 37 CFR 1.63, including meeting the citizenship requirement of 37 CFR 1.63(a)(3).’
The required documentation includes:
- A properly executed oath or declaration from the inventors
- An assignment document or proof of obligation to assign
- Application Data Sheet (ADS) identifying the assignee as the applicant
Additionally, if filing as an obligated assignee, you may need to provide evidence of the obligation to assign, such as an employment agreement or contract. It’s important to ensure all documentation is complete and accurate to avoid potential issues with the patent application process.
To learn more:
What documentation is required for an assignee or obligated assignee to file a patent application?
When an assignee or obligated assignee files a patent application as the applicant, they should provide documentary evidence of ownership. According to 37 CFR 1.46(b)(1):
If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
This means that the assignee or obligated assignee should record their ownership documents (such as an assignment or employment agreement) with the USPTO as specified in 37 CFR Part 3, and this should be done before paying the issue fee.
To learn more:
How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
To learn more: