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 (4)
- 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
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
Yes, for applications filed on or after September 16, 2012, an assignee can file a patent application as the applicant. According to MPEP § 409.05:
“An assignee or obligated assignee may file a patent application as the applicant. An assignee or obligated assignee doing so should record documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) as provided for in 37 CFR part 3 no later than the date the issue fee is paid in the application.”
However, to be the sole applicant, the assignee must have been assigned the entire interest in the application.
For more information on patent applicant, visit: patent applicant.
Can a patent applicant attend an interview with the USPTO without their practitioner?
While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:
‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.
For more information on patent applicant, visit: patent applicant.
For more information on patent examination, visit: patent examination.
MPEP 403 - Correspondence — With Whom Held; Customer Number Practice (1)
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
MPEP 408 - Interviews With Patent Practitioner of Record (1)
Can a patent applicant attend an interview with the USPTO without their practitioner?
While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:
‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.
For more information on patent applicant, visit: patent applicant.
For more information on patent examination, visit: patent examination.
MPEP 500 - Receipt and Handling of Mail and Papers (2)
Inventors or applicants can qualify for micro entity status through an institution of higher education in two ways:
- If the inventor is an employee of an institution of higher education and obtains the majority of their income from that institution.
- If the applicant has assigned, granted, conveyed, or is obligated to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.
MPEP 509.04(b) states: “Under 37 CFR 1.29(d)(2)(i) the applicant must certify that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education. … Under 37 CFR 1.29(d)(2)(ii) the applicant must certify that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.”
In both cases, the applicant must also meet the small entity requirement.
To learn more:
No, an institution of higher education cannot itself claim micro entity status. The micro entity status based on an institution of higher education is intended for inventors who are employees of such institutions or who have assigned rights to them, not for the institutions themselves.
MPEP 509.04(b) clarifies: “Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the ‘institution of higher education’ basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)).”
The institution itself cannot logically make the certifications required under the regulations, such as certifying that its employer is an institution of higher education or that it has assigned rights to itself.
To learn more:
Patent Law (12)
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 1.42, the term ‘applicant’ can refer to:
- The inventor or all joint inventors
- A legal representative of a deceased or legally incapacitated inventor
- The assignee
- 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 MPEP states: If a person is applying for a patent as provided in 37 CFR 1.46, the word ‘applicant’ refers to the assignee, the person to whom the inventor is under an obligation to assign, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for the patent under 37 CFR 1.46 and not the inventor.
To learn more:
As of September 16, 2012, the rules for who can be an applicant for a patent application were revised. According to MPEP § 605, the following individuals or entities can file and prosecute a patent application as the applicant:
- The inventor
- 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
The MPEP states: “Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
This change allows for greater flexibility in who can be considered the applicant, potentially streamlining the patent application process for businesses and organizations.
To learn more:
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
The term ‘sufficient proprietary interest’ is introduced in the MPEP § 605 for patent applications filed on or after September 16, 2012. The MPEP states:
“Effective September 16, 2012, the Office revised the rules of practice to permit […] a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
‘Sufficient proprietary interest’ typically means that the person or entity has a significant commercial or financial stake in the invention, even if they are not the inventor or assignee. This could include:
- Licensees with exclusive rights to the invention
- Investors who have funded the development of the invention
- Joint venture partners involved in the invention’s creation
To be considered as having ‘sufficient proprietary interest’, the person or entity must typically provide evidence of their interest and may need to submit a petition to the USPTO. The inventor(s) must also provide authorization for this person or entity to act as the applicant.
This provision allows for greater flexibility in who can file and prosecute patent applications, particularly benefiting startups, research institutions, and collaborative innovation projects.
To learn more:
The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP § 605 outlines these changes:
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
Key changes include:
- Assignees can now be listed as the applicant
- Persons with sufficient proprietary interest can file on behalf of the inventor
- The inventor is no longer required to be listed as the applicant
These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.
To learn more:
Inventors or applicants can qualify for micro entity status through an institution of higher education in two ways:
- If the inventor is an employee of an institution of higher education and obtains the majority of their income from that institution.
- If the applicant has assigned, granted, conveyed, or is obligated to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.
MPEP 509.04(b) states: “Under 37 CFR 1.29(d)(2)(i) the applicant must certify that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education. … Under 37 CFR 1.29(d)(2)(ii) the applicant must certify that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.”
In both cases, the applicant must also meet the small entity requirement.
To learn more:
An assignee can become the applicant for a patent application by following these steps:
- File the application under 37 CFR 1.46
- Include an application data sheet (ADS) under 37 CFR 1.76 specifying the assignee as the applicant in the applicant information section
- Record documentary evidence of ownership (e.g., assignment) as provided in 37 CFR part 3 no later than the date the issue fee is paid
The MPEP states: If the applicant is the assignee or person to whom the inventor is under an obligation to assign the invention, the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as provided for in 37 CFR part 3 no later than the date the issue fee is paid.
To learn more:
No, an institution of higher education cannot itself claim micro entity status. The micro entity status based on an institution of higher education is intended for inventors who are employees of such institutions or who have assigned rights to them, not for the institutions themselves.
MPEP 509.04(b) clarifies: “Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the ‘institution of higher education’ basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)).”
The institution itself cannot logically make the certifications required under the regulations, such as certifying that its employer is an institution of higher education or that it has assigned rights to itself.
To learn more:
Yes, for applications filed on or after September 16, 2012, an assignee can file a patent application as the applicant. According to MPEP § 409.05:
“An assignee or obligated assignee may file a patent application as the applicant. An assignee or obligated assignee doing so should record documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) as provided for in 37 CFR part 3 no later than the date the issue fee is paid in the application.”
However, to be the sole applicant, the assignee must have been assigned the entire interest in the application.
For more information on patent applicant, visit: patent applicant.
Can a patent applicant attend an interview with the USPTO without their practitioner?
While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:
‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.
For more information on patent applicant, visit: patent applicant.
For more information on patent examination, visit: patent examination.
Can a juristic entity be an applicant for a patent application?
No, a juristic entity cannot be an applicant for a patent application filed on or after September 16, 2012. The MPEP 605 clearly states: ‘A juristic entity (e.g., organizational assignee) cannot be named as the applicant for a patent application.’ This means that only natural persons, specifically the inventor(s), can be named as applicants. However, a juristic entity can be named as the assignee or applicant for other purposes, such as in an application for a reissue patent to replace an original patent granted on an application filed before September 16, 2012.
To learn more:
Patent Procedure (12)
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 1.42, the term ‘applicant’ can refer to:
- The inventor or all joint inventors
- A legal representative of a deceased or legally incapacitated inventor
- The assignee
- 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 MPEP states: If a person is applying for a patent as provided in 37 CFR 1.46, the word ‘applicant’ refers to the assignee, the person to whom the inventor is under an obligation to assign, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for the patent under 37 CFR 1.46 and not the inventor.
To learn more:
As of September 16, 2012, the rules for who can be an applicant for a patent application were revised. According to MPEP § 605, the following individuals or entities can file and prosecute a patent application as the applicant:
- The inventor
- 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
The MPEP states: “Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
This change allows for greater flexibility in who can be considered the applicant, potentially streamlining the patent application process for businesses and organizations.
To learn more:
The USPTO provides several forms for Customer Number practice:
- PTO/SB/125 – Request for Customer Number
- PTO/SB/124 – Request for Customer Number Data Change
- PTO/AIA/122 or PTO/SB/122 – Change of Correspondence Address, Application
- PTO/AIA/123 or PTO/SB/123 – Change of Correspondence Address, Patent
According to MPEP 403: “The following forms are suggested for use with the Customer Number practice: (A) the ‘Request for Customer Number’ (PTO/SB/125) to request a Customer Number; (B) the ‘Request for Customer Number Data Change’ (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number; (C) the ‘Change of Correspondence Address, Application’ (PTO/AIA/122 for applications filed on or after September 16, 2012, or PTO/SB/122 for applications filed before September 16, 2012) to change the correspondence address of an individual application to the address associated with a Customer Number; and (D) the ‘Change of Correspondence Address, Patent’ (PTO/AIA/123 for applications filed on or after September 16, 2012, or PTO//SB/123 for applications filed before September 16, 2012) to change the correspondence address of an individual patent to the address associated with a Customer Number.”
The term ‘sufficient proprietary interest’ is introduced in the MPEP § 605 for patent applications filed on or after September 16, 2012. The MPEP states:
“Effective September 16, 2012, the Office revised the rules of practice to permit […] a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
‘Sufficient proprietary interest’ typically means that the person or entity has a significant commercial or financial stake in the invention, even if they are not the inventor or assignee. This could include:
- Licensees with exclusive rights to the invention
- Investors who have funded the development of the invention
- Joint venture partners involved in the invention’s creation
To be considered as having ‘sufficient proprietary interest’, the person or entity must typically provide evidence of their interest and may need to submit a petition to the USPTO. The inventor(s) must also provide authorization for this person or entity to act as the applicant.
This provision allows for greater flexibility in who can file and prosecute patent applications, particularly benefiting startups, research institutions, and collaborative innovation projects.
To learn more:
The America Invents Act (AIA) significantly changed who can be considered a patent applicant for applications filed on or after September 16, 2012. MPEP § 605 outlines these changes:
“Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor.”
Key changes include:
- Assignees can now be listed as the applicant
- Persons with sufficient proprietary interest can file on behalf of the inventor
- The inventor is no longer required to be listed as the applicant
These changes allow for more flexibility in patent application filing and prosecution, particularly benefiting companies and organizations that routinely file patent applications.
To learn more:
Inventors or applicants can qualify for micro entity status through an institution of higher education in two ways:
- If the inventor is an employee of an institution of higher education and obtains the majority of their income from that institution.
- If the applicant has assigned, granted, conveyed, or is obligated to assign, grant, or convey a license or other ownership interest in the application to an institution of higher education.
MPEP 509.04(b) states: “Under 37 CFR 1.29(d)(2)(i) the applicant must certify that the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education. … Under 37 CFR 1.29(d)(2)(ii) the applicant must certify that the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.”
In both cases, the applicant must also meet the small entity requirement.
To learn more:
An assignee can become the applicant for a patent application by following these steps:
- File the application under 37 CFR 1.46
- Include an application data sheet (ADS) under 37 CFR 1.76 specifying the assignee as the applicant in the applicant information section
- Record documentary evidence of ownership (e.g., assignment) as provided in 37 CFR part 3 no later than the date the issue fee is paid
The MPEP states: If the applicant is the assignee or person to whom the inventor is under an obligation to assign the invention, the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as provided for in 37 CFR part 3 no later than the date the issue fee is paid.
To learn more:
No, an institution of higher education cannot itself claim micro entity status. The micro entity status based on an institution of higher education is intended for inventors who are employees of such institutions or who have assigned rights to them, not for the institutions themselves.
MPEP 509.04(b) clarifies: “Although the 37 CFR 1.29(d) basis for qualifying for micro entity status is referred to as the ‘institution of higher education’ basis, it is not the institution of higher education that can qualify for micro entity status, but rather inventors who are employees of an institution of higher education (see 37 CFR 1.29(d)(2)(i)) or inventors or applicants who have conveyed ownership rights to an institution of higher education (see 37 CFR 1.29(d)(2)(ii)).”
The institution itself cannot logically make the certifications required under the regulations, such as certifying that its employer is an institution of higher education or that it has assigned rights to itself.
To learn more:
Yes, for applications filed on or after September 16, 2012, an assignee can file a patent application as the applicant. According to MPEP § 409.05:
“An assignee or obligated assignee may file a patent application as the applicant. An assignee or obligated assignee doing so should record documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) as provided for in 37 CFR part 3 no later than the date the issue fee is paid in the application.”
However, to be the sole applicant, the assignee must have been assigned the entire interest in the application.
For more information on patent applicant, visit: patent applicant.
Can a patent applicant attend an interview with the USPTO without their practitioner?
While it is generally recommended that a patent practitioner represents the applicant during USPTO interviews, there are circumstances where an applicant may attend without their practitioner. MPEP 408 states:
‘A registered practitioner, not of record, may accompany a registered practitioner of record to attend an interview of an application in which the registered practitioner is not of record. The registered practitioner not of record may not participate in the interview of the application except as authorized by the patent applicant.’
This implies that while the primary responsibility lies with the practitioner of record, applicants have some flexibility in who attends the interview. However, it’s important to note that without proper representation, applicants may miss out on valuable legal insights and negotiation opportunities during the interview process.
For more information on patent applicant, visit: patent applicant.
For more information on patent examination, visit: patent examination.
Can a juristic entity be an applicant for a patent application?
No, a juristic entity cannot be an applicant for a patent application filed on or after September 16, 2012. The MPEP 605 clearly states: ‘A juristic entity (e.g., organizational assignee) cannot be named as the applicant for a patent application.’ This means that only natural persons, specifically the inventor(s), can be named as applicants. However, a juristic entity can be named as the assignee or applicant for other purposes, such as in an application for a reissue patent to replace an original patent granted on an application filed before September 16, 2012.
To learn more: