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 306-Assignment of Division (2)
The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
For more detailed information, refer to MPEP § 307 and MPEP § 308.
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For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
and Continuation-in-Part in Relation to Parent Application' (2)
The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
For more detailed information, refer to MPEP § 307 and MPEP § 308.
For more information on continuation-in-part application, visit: continuation-in-part application.
For more information on patent assignment, visit: patent assignment.
For more information on substitute application, visit: substitute application.
For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
MPEP 300 - Ownership and Assignment (73)
The English translation of a non-English assignment document must be signed by the individual who performed the translation. As stated in MPEP 302.02:
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
This requirement ensures the accuracy and authenticity of the translation. It’s important to note that the translator’s signature is required, not necessarily the signature of the parties involved in the assignment.
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For more detailed information about the required cover sheet for patent assignments, you can refer to MPEP 302.07. This is explicitly mentioned in MPEP 302.05, which states:
See MPEP § 302.07.
MPEP 302.07 provides comprehensive guidance on the cover sheet requirements, including the necessary information to be included, such as the assignee’s address. Additionally, you can find forms and instructions for recording assignments on the USPTO’s Assignment Recordation Branch website.
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If there’s an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the procedure differs from correcting cover sheet errors. According to MPEP 323.01(b):
- The party responsible for the erroneous document (e.g., the assignor) must either:
- Create and record a new document, or
- Make corrections to the original document and re-record it
- If the assignor is unavailable, the assignee may:
- Submit an affidavit or declaration identifying the error and requesting correction
- Include a copy of the originally recorded papers
- Provide a new cover sheet
- Pay the required fee for each application or patent to be corrected (37 CFR 3.41)
This process ensures that errors in the actual assignment document are properly addressed and corrected in the USPTO records.
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If you discover that another party has improperly recorded an assignment against your patent or application, you should take the following steps:
- Contact the party who recorded the erroneous information and request that they file corrective papers.
- If the party cannot be located or is unwilling to cooperate, you must file corrective papers yourself with the Assignment Services Division.
According to MPEP 323.01(c), you should submit:
- A completed cover sheet identifying the affected application or patent
- An affidavit or declaration stating you are the correct owner, the previous recording was erroneous, and providing the reel and frame number of the incorrect document
- The required fee for each application or patent to be corrected
The MPEP states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.
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What is the timeframe for recording an assignment at the USPTO?
The USPTO recommends recording an assignment within three months of its execution date. According to MPEP 302:
“The Patent and Trademark Office does not require that a document be recorded. If a document is to be recorded, it should be submitted to the Assignment Division within three months from its date of execution; otherwise, it may not be accepted for recordation.”
While there’s no strict legal requirement to record within this timeframe, doing so ensures the assignment is properly documented and can help avoid potential legal issues in the future.
For more information on assignment recording, visit: assignment recording.
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What is the significance of the issue fee payment date for patent assignments?
The issue fee payment date is crucial for patent assignments and issuance to assignees for several reasons:
- It serves as the deadline for requesting issuance of the patent to the assignee under 37 CFR 3.81(b).
- Assignments recorded after this date but before patent issuance will be recorded but won’t affect who the patent is issued to.
- It impacts the USPTO’s ability to change the name on the patent.
MPEP 307 states: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.” This underscores the importance of timely assignment recording and requests for issuance to the assignee.
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The cover sheet serves as a crucial document in the patent assignment process. Its primary purpose is to provide essential information about the assignment in a standardized format. According to MPEP 302.05, one of the key pieces of information that must be included on this cover sheet is the assignee’s address:
The address of the assignee … must be given in the required cover sheet.
The cover sheet ensures that the USPTO has accurate and readily accessible information about the assignment, including details about the assignee, which is critical for maintaining proper records and facilitating communication regarding the patent.
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What is the purpose of recording patent assignment documents?
Recording patent assignment documents serves several important purposes:
- Providing notice to the public of the assignment
- Creating a public record of the assignment
- Protecting against subsequent purchasers without notice
- Establishing priority of ownership rights
According to MPEP 302, ‘The recording of an assignment document in the USPTO is not a determination of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.’ It merely serves as a public notice and record of the transaction.
For more information on patent assignment, visit: patent assignment.
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To correct typographical errors in a recorded cover sheet, follow these steps as outlined in MPEP 323.01(a):
- Submit a copy of the originally recorded assignment document.
- Provide a corrected cover sheet.
- Pay the required fee for each application or patent to be corrected.
- Include a copy of the original cover sheet to facilitate comparison.
When submitting the corrected cover sheet:
- Check the ‘Other’ box in the ‘Nature of Conveyance’ area.
- Indicate that the submission is to correct an error in a previously recorded cover sheet.
- Identify the reel and frame numbers (if known) and the nature of the correction.
The MPEP states: The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.
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Recording an assignment at the USPTO does not determine its validity or effect on title. As stated in 37 CFR 3.54:
“The recording of a document pursuant to § 3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.”
The USPTO may, when necessary, determine the effect of a document and whether a party has authority to take action in matters pending before the Office.
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Recording a document at the USPTO has the following effects:
- It does not determine the validity of the document or its effect on title.
- The Office may determine a document’s effect when necessary for Office proceedings.
- Conditional assignments are treated as absolute assignments until canceled.
- Recording provides protection against subsequent purchasers without notice.
37 CFR 3.54 states: The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.
Additionally, according to 35 U.S.C. 261, timely recording at the USPTO is crucial for maintaining superiority of rights against subsequent purchasers.
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What is the difference between recording and registering a patent assignment?
Recording and registering a patent assignment are two distinct processes:
- Recording refers to submitting the assignment document to the USPTO for public notice. As stated in MPEP 302, ‘The recording of the assignment document in the USPTO is merely a ministerial act and does not determine the validity of the document.’
- Registering is not a term used by the USPTO for assignments. The term ‘registration’ is typically used for trademarks, not patents.
Recording an assignment provides constructive notice of the transfer of ownership but does not guarantee the assignment’s validity or enforceability.
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The key differences between a patent assignment and a patent license are:
- Assignment: Transfers all or part of the ownership interest in a patent, including the entire bundle of rights associated with ownership.
- License: Transfers a bundle of rights that is less than the entire ownership interest. It may be limited in time, geographical area, or field of use.
A license is essentially a contractual agreement that the patent owner will not sue the licensee for patent infringement under certain conditions. Even an exclusive license is not considered an assignment of patent rights.
The date of receipt for assignment documents sent to the USPTO by fax is determined by when the complete transmission is received. According to MPEP 302.09:
The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.
It’s important to note that the benefits of a certificate of transmission under 37 CFR 1.8 are available for fax submissions. This can provide additional protection in case of transmission issues.
For more information on date of receipt for electronic submissions, you can refer to MPEP § 502.01.
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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.
When correcting an erroneous assignment, the affidavit or declaration submitted to the USPTO should contain specific information. According to MPEP 323.01(c), the affidavit should include:
- Identification of yourself as the correct owner
- A statement that the previously recorded document was submitted with erroneous information
- The reel and frame number of the previously recorded document
- A summary of the true chain of title
- A statement that the original applicant, patentee, or last correct assignee has been and continues to be the owner of the application or patent at issue
The MPEP specifically states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the application, or patent at issue.
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According to 37 CFR 3.61, the designation of a domestic representative should include:
- The name of the person residing within the United States
- The address of the designated person
- A statement that this person may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder
As stated in the regulation, The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.
This information ensures that the USPTO and other parties can effectively communicate with the foreign assignee through their designated representative.
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If the assignment has not been recorded before the issue fee payment, the following applies:
- The request for issuance to the assignee must state that the assignment document has been filed for recordation.
- This statement should be made in accordance with 37 CFR 3.11.
As stated in 37 CFR 3.81(a): If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.
What happens if I accidentally submit an original assignment document to the USPTO?
If you accidentally submit an original assignment document to the USPTO, you will not be able to retrieve it. The MPEP 302.01 clearly states: ‘The USPTO will not return documents filed for recording.’
To avoid this situation:
- Always submit copies of assignment documents
- Keep original documents in a secure location
- Double-check all submissions before sending them to the USPTO
If you have submitted an original document in error, you may need to create a new assignment document or seek legal advice on how to proceed with future patent transactions or litigation that may require the original document.
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If an English translation is not provided with a non-English assignment document, the USPTO will not record the assignment. According to MPEP 302.02:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
This means that the assignment will be rejected, and the ownership transfer will not be officially recognized by the USPTO. To proceed with the recordation, the applicant or assignee must submit a proper English translation along with the original non-English document.
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What happens if an assignee requests issuance of a patent to themselves?
When an assignee requests issuance of a patent to themselves, the following process occurs:
- The assignee must file a request for issuance of the patent to the assignee under 37 CFR 3.81(b).
- This request must be submitted no later than the date the issue fee is paid.
- If the request is not filed by this deadline, the patent will be issued to the applicant(s) named in the application file.
As stated in MPEP 307: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.”
For more information on issue fee, visit: issue fee.
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If a typographical error on the original cover sheet does not affect the title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will take the following actions:
- Correct the Assignment Historical Database
- Allow the recording party to keep the original date of recordation
As stated in MPEP 323.01(a): “If the original cover sheet contains a typographical error that does not affect title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will correct the Assignment Historical Database and permit the recording party to keep the original date of recordation.”
This approach ensures that minor errors that don’t impact the substance of the assignment are corrected without affecting the original recordation date, which can be important for legal and priority purposes.
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If the USPTO determines that a faxed assignment document is not recordable, there’s a specific process outlined in MPEP 302.09:
- The entire document, including the cover sheet, is returned to the sender via fax.
- A ‘Notice of Non-Recordation’ is included with the returned document.
- The sender can make corrections and resubmit the document.
- Resubmission must be done by mail to the address in 37 CFR 3.27.
- Timely resubmission preserves the initial receipt date as the recordation date.
The MPEP states: If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office ‘Notice of Non-Recordation’ will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.
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When correcting an erroneous assignment or name change, you must pay the required fee for each application or patent affected. According to MPEP 323.01(c):
The required fee ( 37 CFR 3.41 ) for each application or patent to be corrected.
The specific fee amount can be found in the current USPTO fee schedule. It’s important to note that a separate fee is required for each application or patent that needs correction, even if they are related to the same erroneous assignment.
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To correct a typographical error on a patent assignment cover sheet, you must pay the required fee for each application or patent that needs correction. According to MPEP 323.01(a):
“The party requesting correction should submit… (C) the required fee for each application or patent to be corrected (37 CFR 3.41).”
The specific fee amount is set by 37 CFR 3.41 and may change periodically. It’s important to check the current USPTO Fee Schedule for the most up-to-date fee information. The fee is required per application or patent, so if multiple documents need correction, multiple fees may apply.
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To support a petition to expunge an improperly recorded assignment, you should provide evidence that clearly demonstrates the assignment is incorrect. This may include:
- Affidavits or declarations from relevant parties
- Documentation showing true ownership
- Evidence of fraud or mistake in the recording
MPEP 323.01(c) states: ‘The petition should be accompanied by clear and convincing evidence of the error in recording.’ It’s crucial to present a compelling case to the USPTO to justify the expungement.
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According to 37 CFR 3.31, the cover sheet for patent assignments must contain:
- Name of the party conveying the interest
- Name and address of the party receiving the interest
- Description of the interest conveyed or transaction to be recorded
- Identification of the patent or application
- Name and address for correspondence
- Date of execution
- Signature of the party submitting the document
For joint research agreements, the cover sheet must also:
- Identify the document as a ‘joint research agreement’
- Indicate the name of the patent owner
- Indicate the names of other parties to the agreement
- Indicate the date the agreement was executed
The MPEP notes that Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.
For more information on Assignment cover sheet, visit: Assignment cover sheet.
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According to 37 CFR 3.26, assignment documents in languages other than English can be recorded with the USPTO, but specific requirements must be met. The MPEP states:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
Key points for submitting non-English assignment documents:
- The original non-English document must be submitted
- An English translation of the document must be provided
- The translation must be signed by the individual who performed the translation
- Both the original document and the translation will be recorded
It’s important to ensure that the translation accurately reflects the content of the original document to avoid any legal complications or misunderstandings regarding the assignment.
For more information on patent assignment, visit: patent assignment.
According to MPEP 302.09, there are specific requirements for submitting assignment-related documents by fax:
- An identified application or patent number
- One cover sheet to record a single transaction
- Payment of the recordation fee by credit card or USPTO Deposit Account
The MPEP states: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record a single transaction; and (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.
It’s important to note that certain documents cannot be submitted via fax, such as assignments submitted with new patent applications or documents with multiple cover sheets.
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According to MPEP 302.02, non-English assignment documents can only be accepted and recorded by the USPTO if they are accompanied by an English translation. The MPEP states:
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
This means that inventors, assignees, or their representatives must provide a certified English translation along with the original non-English document for it to be officially recorded.
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To record an assignment of a patent or patent application, the following requirements must be met:
- The assignment must be in writing.
- It must be signed by the assignor (the person or entity transferring ownership).
- The document must identify the patent or application by number.
- The assignment must be submitted to the USPTO along with the required fee.
According to MPEP 301: “An assignment relating to a patent must be submitted to the USPTO for recordation as an absolute requirement for enforcing the patent or application against third parties.” This recordation provides constructive notice to the public of the assignment.
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What are the requirements for recording a patent assignment document?
To record a patent assignment document, you must submit:
- A copy of the original assignment document
- A cover sheet identifying the document as an assignment
- The required fee
The MPEP states: ‘The document submitted for recordation must be accompanied by a cover sheet identifying the document as an assignment and must contain the fee required by 37 CFR 3.41.’ This ensures proper processing and indexing of the assignment.
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Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must:
- Identify the document as a ‘joint research agreement’ in the description of interest conveyed
- Indicate the name of the owner of the application or patent
- Indicate the name of each other party to the joint research agreement
- Indicate the date the joint research agreement was executed
The document submitted can be either the entire joint research agreement or an excerpt of it. As with other recorded documents, it must be accompanied by a completed cover sheet as specified in 37 CFR 3.28 and 3.31.
Remember that A patent cover sheet may not refer to trademark applications or registrations.
Separate cover sheets must be used for patents and trademarks.
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If a request for issuance to an assignee is submitted after the issue fee has been paid, the following requirements must be met:
- Submit a request under 37 CFR 3.81(b)
- Include a request for a certificate of correction under 37 CFR 1.323
- Pay the fee for the certificate of correction (set forth in 37 CFR 1.20(a))
- Pay the processing fee (set forth in 37 CFR 1.17(i))
- State that the assignment was submitted for recordation before the patent was issued
As stated in MPEP 307: “If a request for issuance to an assignee pursuant to 37 CFR 3.81(b) is submitted after the day on which the issue fee is paid, the request under 37 CFR 3.81(b) must include a request for a certificate of correction under 37 CFR 1.323 (accompanied by the fee set forth in 37 CFR 1.20(a)) and the processing fee set forth in 37 CFR 1.17(i).”
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What are the consequences of failing to record a patent assignment with the USPTO?
Failing to record a patent assignment with the USPTO can have several important consequences:
- Lack of legal notice: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as notice to the world of the ownership of the patent.’ Without recording, third parties may not have legal notice of the assignment.
- Potential validity issues: In some cases, failure to record an assignment could affect the validity of subsequent actions taken by the assignee.
- Difficulties in enforcement: Unrecorded assignments may complicate patent enforcement efforts, as the assignee’s standing to sue could be challenged.
- Problems in future transactions: Lack of a clear chain of title can cause issues in future sales, licenses, or other transactions involving the patent.
While recording is not mandatory, it is highly recommended to protect the assignee’s rights and ensure a clear chain of title for the patent.
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When a typographical error on the original cover sheet affects the title to the application or patent against which the assignment or name change is recorded, the consequences are more significant:
- The recording party will not be entitled to keep the original date of recordation
- The Assignment Services Division will correct its automated records
- The date of recordation will be changed to the date the corrected cover sheet was received in the Office
As stated in MPEP 323.01(a): “If the original cover sheet contains a typographical error that affects title to the application or patent against which the assignment or name change is recorded, the recording party will not be entitled to keep the original date of recordation. Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.”
This approach ensures that errors affecting the substance of the assignment or title are properly addressed, even if it means adjusting the recordation date. It’s crucial for patent owners and assignees to be aware of this policy to avoid potential issues with priority dates or legal standing.
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The Electronic Patent Assignment System (EPAS) offers several benefits for submitting assignment documents to the USPTO. While not explicitly stated in MPEP 302.10, the following advantages can be inferred:
- Convenience: Users can submit documents directly from their computer, eliminating the need for physical mailing.
- Efficiency: Electronic submission can be faster than traditional paper-based methods.
- Direct Integration: As stated in the MPEP, EPAS allows submission “directly into the automated Patent and Trademark Assignment System,” potentially reducing processing times.
- Flexibility: Various types of documents related to title can be submitted through the system.
- Multiple Payment Options: Users can pay fees using credit card, electronic fund transfer, or deposit account.
These benefits make EPAS an attractive option for those needing to submit assignment documents to the USPTO.
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The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
For more detailed information, refer to MPEP § 307 and MPEP § 308.
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While the address of the assignee may be included in the assignment document, it is not strictly required there. However, the address must be provided in the cover sheet accompanying the assignment. As stated in MPEP 302.05:
The address of the assignee may be recited in the assignment document and must be given in the required cover sheet.
This means that while including the address in the assignment document itself is optional, providing it on the cover sheet is mandatory for proper recordation of the assignment.
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According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it:
- Prepare a written document signed by the assignee.
- State the name and address of a person residing within the United States who may be served process or notice of proceedings affecting the patent or rights under it.
- Submit this document to the USPTO as a separate paper from any assignment document.
- Clearly label the document as “Designation of Domestic Representative.”
- Ensure the document is signed in accordance with 37 CFR 1.33(b).
As stated in MPEP 302.04: “The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.”
Patent ownership can be transferred through an assignment. According to 35 U.S.C. 261, assignments of patent applications, patents, or any interest therein must be in writing. The MPEP defines an assignment as:
‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….’
An assignment transfers the entire ownership interest or a percentage of that interest in the patent or application. It must include the entirety of the bundle of rights associated with the ownership interest.
The USPTO has an automated system for processing assignment documents submitted by fax. According to MPEP 302.09:
- Documents are submitted directly into the automated Patent and Trademark Assignment System.
- A recordation notice is automatically returned to the sending fax number.
- If the system can’t complete the transmission, the notice is printed and mailed via U.S. Postal Service first class mail.
- The Patent and Trademark Assignment System assigns reel and frame numbers and adds recordation stampings to the processed electronic images.
The MPEP states: The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.
This automated process ensures efficient handling and proper documentation of assignment records.
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When errors are made in the execution of an original assignment document, the USPTO allows for the submission of a ‘substitute statement’ to correct these errors. According to MPEP 323:
“Where errors were made in the execution of the original assignment document … a ‘substitute statement’ may be submitted for recordation.”
The process involves:
- Preparing a new, correctly executed assignment document.
- Submitting this as a ‘substitute statement’ along with a copy of the originally recorded papers.
- Clearly identifying the errors in the original document.
- Paying the required recording fee.
The USPTO will then record the substitute statement, which effectively replaces the erroneous original assignment document.
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The USPTO recognizes and accepts electronic signatures on assignment documents submitted electronically. According to MPEP 302.10:
“The USPTO will accept electronic signatures on documents submitted electronically.”
This means that assignors and assignees can use various forms of electronic signatures, such as:
- Typed names
- Digital signatures
- Scanned images of handwritten signatures
It’s important to ensure that the electronic signature complies with the USPTO’s requirements and is legally binding. The specific requirements for electronic signatures are outlined in MPEP 502.02.
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How does the USPTO handle assignment documents after recording?
After recording an assignment document, the USPTO follows a specific process. According to MPEP 302.01: ‘Assignment documents submitted for recording are scanned and stored in a public database.’
The handling process includes:
- Scanning the submitted copy of the assignment document
- Storing the scanned document in a publicly accessible database
- Retaining the physical copy submitted (not returning it to the sender)
- Making the recorded information available for public inspection
This process ensures that assignment records are preserved and accessible while maintaining the integrity of the original submissions.
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The USPTO follows a specific process to determine if an error on a cover sheet is typographical in nature. According to MPEP 323.01(a):
“The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.”
This process involves:
- Reviewing the corrected cover sheet submitted by the requesting party
- Comparing it to the original cover sheet
- Examining the originally recorded assignment document or other title-affecting document
- Assessing whether the error is purely typographical or if it substantively affects the title or assignment
If the error is determined to be typographical and does not affect the title, the Assignment Services Division will record the corrected cover sheet and update the Assignment Historical Database. However, if the error affects the title, different procedures apply, including potential changes to the recordation date.
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The effect on the date of recordation depends on whether the error affects title to the application or patent. According to MPEP 323.01(a):
- Errors that do not affect title: If the typographical error does not affect title, the Assignment Services Division will correct the Assignment Historical Database and allow the recording party to keep the original date of recordation.
- Errors that affect title: If the error affects title to the application or patent, the recording party will not keep the original date of recordation. The MPEP states:
Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.
It’s crucial to ensure accuracy in cover sheets to maintain the earliest possible recordation date, especially for errors that could affect title to the application or patent.
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For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
To designate a domestic representative, a foreign assignee must follow these steps:
- Prepare a written document signed by the assignee
- Clearly label the document as ‘Designation of Domestic Representative’
- Submit the designation as a separate paper from any assignment document
- Ensure the document is signed in accordance with 37 CFR 1.33(b)
As stated in MPEP 302.04, The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.
This ensures proper processing and entry into the record of the appropriate application or patent file.
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According to 37 CFR 3.21, a patent assignment must identify the patent by patent number. For patent applications:
- National applications: Identify by application number (series code and serial number)
- International applications designating the US: Identify by international application number
- International design applications designating the US: Identify by international registration number or US application number
If the assignment is executed before filing but after the application is executed, it must identify the application by inventor name(s) and invention title. For provisional applications not yet filed, identify by inventor name(s) and invention title.
The MPEP suggests including language like: I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.
For more information on application identification, visit: application identification.
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To properly identify a patent in an assignment, you must use the patent number. According to 37 CFR 3.21, “An assignment relating to a patent must identify the patent by the patent number.” This ensures that there is no ambiguity about which patent is being assigned.
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When submitting a corrected cover sheet to address an erroneous assignment or name change, follow these instructions from MPEP 323.01(c):
- Check the box titled ‘Other’ in the ‘Nature of Conveyance’ section.
- Indicate that the submission is to correct an error in a previously recorded document that erroneously affects the identified application(s) or patent(s).
- Write the name of the correct owner in both the ‘conveying party’ and ‘receiving party’ boxes.
The MPEP explains the reasoning behind this: The party should also write the name of the correct owner in both the box requesting the name of the conveying party and the box requesting the name and address of the receiving party; this is to make it clear that ownership never changed and that any assignment or name change recorded against the application(s) or patent(s) was erroneous.
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To correct a typographical error on a recorded cover sheet for a patent assignment, you need to submit the following to the Assignment Services Division:
- A copy of the originally recorded assignment document (or other document affecting title)
- A corrected cover sheet
- The required fee for each application or patent to be corrected
Additionally, it’s recommended to submit a copy of the original cover sheet to facilitate comparison. When filing the corrected cover sheet, you should:
- Check the box titled “Other” in the “Nature of Conveyance” area
- Indicate that the submission is to correct an error in a previously recorded cover sheet
- Identify the reel and frame numbers (if known)
- Specify the nature of the correction
As stated in MPEP 323.01(a): “The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.”
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Patents and patent applications can be assigned through a written instrument. The MPEP 301 states:
‘Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’
This means that patent rights can be transferred from one party to another through a written document. The assignment must be recorded with the USPTO to be effective against subsequent purchasers or mortgagees.
For more information on patent assignment, visit: patent assignment.
The USPTO allows electronic submission of assignment documents through the Electronic Patent Assignment System (EPAS). According to the MPEP:
- Visit http://epas.uspto.gov for the EPAS system
- Include an identified application or patent number
- Complete one online cover sheet for a single transaction
For electronic submissions, the signature must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2). This typically involves an S-signature between forward slashes (e.g., /John Smith/).
The MPEP notes: The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation.
The recordation date for electronic submissions is the date the complete transmission is received by the USPTO.
For more information on electronic submission, visit: electronic submission.
For more information on EPAS, visit: EPAS.
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There are three main ways to submit a patent assignment document to the USPTO:
- Mail: Documents can be mailed to the address specified in 37 CFR 3.27: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
- Fax: Documents can be submitted via facsimile, as outlined in MPEP 302.09. However, certain documents cannot be faxed, such as assignments submitted with new applications.
- Electronic Submission: Documents can be submitted electronically through the Electronic Patent Assignment System (EPAS) as described in MPEP 302.10.
Each method has specific requirements and limitations, so it’s important to review the relevant MPEP sections or consult the USPTO website for detailed instructions.
Patent assignments can be recorded with the USPTO in two ways:
- In the assignment records: This is done as provided in 37 CFR Part 3. Recording provides public notice of the assignment but does not determine its validity.
- In the file of a patent application or patent: This may be necessary for the assignee to take action in the application or patent proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
It’s important to note that recording an assignment in the USPTO’s assignment records does not automatically allow the assignee to take action in a patent proceeding. Additional steps may be required as outlined in MPEP § 325 for applications filed on or after September 16, 2012, or MPEP § 324 for earlier applications.
For more information on patent assignment, visit: patent assignment.
There are two ways to make a patent assignment of record with the USPTO:
- Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
- Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
To correct an improperly recorded assignment against your patent or application, follow these steps:
- File a petition under 37 CFR 1.182 to expunge the improper assignment
- Include evidence that the recorded assignment is improper
- Pay the required petition fee
As stated in MPEP 323.01(c): ‘The owner of the patent or application may petition to have such an assignment expunged from the assignment records of the Office.’
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To correct an error in a recorded cover sheet, you must follow the procedure outlined in 37 CFR 3.34. Specifically:
- The error must be apparent when comparing the cover sheet with the recorded document.
- You must file a corrected cover sheet for recordation.
- Include a copy of the original document submitted for recording.
- Pay the required recording fee as set forth in 37 CFR 3.41.
As stated in the MPEP, Any alleged error in a recorded cover sheet will only be corrected if the error is apparent from a comparison with the recorded assignment document.
It’s important to carefully review the notice of recordation issued by the Office after recording.
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A patent can be issued to an assignee in two main ways:
- Before paying the issue fee: The assignee can submit a request for issuance in their name along with the issue fee payment. The assignment must be previously recorded or stated to have been filed for recordation.
- After paying the issue fee: A request can be submitted after the issue fee payment, but it requires additional steps and fees.
According to MPEP 307, “Normally, for a patent to issue to an assignee (other than an assignee who is the applicant in an application filed on or after September 16, 2012), a request for issuance of the application in the name of the assignee must be filed in the United States Patent and Trademark Office (Office) at a date not later than the day on which the issue fee is paid.”
For more information on issue fee, visit: issue fee.
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No, the act of recording a document with the USPTO does not determine its legal effect on patent ownership. The MPEP clearly states:
The recordation of a document is not a determination of the effect of the document on the chain of title.
This means that while the USPTO will record various documents related to patent interests, it does not make any judgments about how these documents affect ownership at the time of recordation. Instead, as the MPEP explains:
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.
For more information on how the USPTO determines ownership when necessary, refer to MPEP § 324 and § 325.
For more information on chain of title, visit: chain of title.
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Yes, the USPTO can refuse to expunge an improperly recorded assignment. According to MPEP 323.01(c):
‘The Office, however, has consistently taken the position that such a petition will not be granted unless it is apparent that the recording is a ‘clerical error on the part of the Office.”
This means that the USPTO is generally reluctant to expunge recorded assignments unless there’s clear evidence of an error on their part. If the improper recording was due to actions of the parties involved rather than the USPTO, the petition may be denied.
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Yes, you can submit assignments and other documents affecting title to the USPTO via fax. The MPEP states: Assignments and other documents affecting title may be submitted to the Office via facsimile (fax).
This process allows for direct submission into the automated Patent and Trademark Assignment System.
However, there are specific requirements and limitations:
- Documents must include an identified application or patent number, one cover sheet for a single transaction, and payment of the recordation fee.
- Certain documents cannot be submitted via fax, such as assignments submitted with new patent applications or documents with multiple cover sheets.
For the most up-to-date fax number, refer to the USPTO website or MPEP § 1730.
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Can I submit an original assignment document for recording at the USPTO?
No, you should not submit the original assignment document for recording. The MPEP 302.01 clearly states: ‘The USPTO will not return documents filed for recording.’ Therefore, it’s crucial to submit a copy of the original document to ensure you retain the original for your records.
Always keep the original assignment document in a safe place and submit a legible copy for recording purposes. This practice protects your original document and complies with USPTO requirements.
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Yes, you can still correct an erroneous assignment even if you cannot contact or get cooperation from the party who filed it. The MPEP 323.01(c) provides guidance for this situation:
The owner should contact the party who recorded the papers with the erroneous information and request that such party record corrective papers. However, if the party cannot be located or is unwilling to file corrective papers, then the true owner must record the necessary papers with the Assignment Services Division to correct the error.
In such cases, you, as the true owner, must submit the required documentation to the USPTO’s Assignment Services Division, including the completed cover sheet, affidavit or declaration, and required fees. This ensures that you can correct the record even without the cooperation of the party who made the error.
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Can foreign language assignment documents be recorded at the USPTO?
Yes, foreign language assignment documents can be recorded at the USPTO, but they must be accompanied by an English translation. The MPEP 302 states:
“Unless an assignment is in a language other than English, the Office may rely on the assignment document (or a copy thereof) as filed.”
If the assignment is in a foreign language, you must provide:
- The original foreign language document
- An English language translation
- A statement verifying that the translation is accurate
This ensures that the USPTO can properly review and record the assignment, maintaining accurate ownership records for patents and patent applications.
For more information on patent assignment, visit: patent assignment.
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Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.
For more information on oath or declaration, visit: oath or declaration.
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Can an assignment be recorded electronically with the USPTO?
Yes, assignments can be recorded electronically with the USPTO. The MPEP 302 states:
“The USPTO provides for the electronic filing of patent assignment documents through the Electronic Patent Assignment System (EPAS).”
Electronic filing offers several advantages:
- Faster processing times
- Immediate confirmation of receipt
- Reduced risk of errors in data entry
- 24/7 accessibility
To use EPAS, users must have a USPTO.gov account and follow the specific guidelines for electronic submission. For detailed instructions, visit the Electronic Patent Assignment System (EPAS) on the USPTO website.
For more information on electronic filing, visit: electronic filing.
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Yes, a patent application can be assigned before it is filed. This is known as an assignment of future rights. MPEP 301 states:
“An assignment of an application can be made before the application is filed. See 37 CFR 3.21.”
However, it’s important to note that the assignment document should clearly identify the invention and the application to be filed. Once the application is filed, it’s advisable to record the assignment with the USPTO to ensure proper documentation of ownership.
For more information on patent assignment, visit: patent assignment.
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Yes, a domestic representative can be changed after the initial designation. While MPEP 302.04 doesn’t explicitly address changing a domestic representative, it states that the designation is made by a written document signed by such assignee.
This implies that a new written document can be submitted to change the designation. To change a domestic representative, follow the same process as the initial designation:
- Prepare a new written document clearly labeled ‘Change of Domestic Representative’
- Include the new representative’s name and address
- Submit the document separately from other filings
- Ensure it’s signed in accordance with 37 CFR 1.33(b)
It’s advisable to explicitly state that this new designation supersedes any previous designations to avoid confusion.
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Based on the information provided in MPEP 302.02, there are no exceptions to the USPTO’s English translation requirement for assignments. The MPEP states unequivocally:
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
This requirement applies to all non-English assignment documents without exception. The USPTO’s strict adherence to this policy ensures uniformity in the recording process and accessibility of patent ownership information.
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Are patent assignment records publicly accessible after recording at the USPTO?
Yes, patent assignment records become publicly accessible after they are recorded at the USPTO. The MPEP 302.01 states: ‘Assignment documents submitted for recording are scanned and stored in a public database.’
This means:
- Anyone can access recorded assignment information
- The public database allows searching for patent ownership details
- Transparency in patent ownership is maintained
Public accessibility of these records is crucial for maintaining transparency in patent ownership and facilitating due diligence in patent transactions. Interested parties can search and retrieve assignment information through the USPTO’s Assignment Search database.
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MPEP 301-Ownership/Assignability of Patents and Applications (8)
The key differences between a patent assignment and a patent license are:
- Assignment: Transfers all or part of the ownership interest in a patent, including the entire bundle of rights associated with ownership.
- License: Transfers a bundle of rights that is less than the entire ownership interest. It may be limited in time, geographical area, or field of use.
A license is essentially a contractual agreement that the patent owner will not sue the licensee for patent infringement under certain conditions. Even an exclusive license is not considered an assignment of patent rights.
To record an assignment of a patent or patent application, the following requirements must be met:
- The assignment must be in writing.
- It must be signed by the assignor (the person or entity transferring ownership).
- The document must identify the patent or application by number.
- The assignment must be submitted to the USPTO along with the required fee.
According to MPEP 301: “An assignment relating to a patent must be submitted to the USPTO for recordation as an absolute requirement for enforcing the patent or application against third parties.” This recordation provides constructive notice to the public of the assignment.
For more information on patent assignment, visit: patent assignment.
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Patent ownership can be transferred through an assignment. According to 35 U.S.C. 261, assignments of patent applications, patents, or any interest therein must be in writing. The MPEP defines an assignment as:
‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….’
An assignment transfers the entire ownership interest or a percentage of that interest in the patent or application. It must include the entirety of the bundle of rights associated with the ownership interest.
Patents and patent applications can be assigned through a written instrument. The MPEP 301 states:
‘Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’
This means that patent rights can be transferred from one party to another through a written document. The assignment must be recorded with the USPTO to be effective against subsequent purchasers or mortgagees.
For more information on patent assignment, visit: patent assignment.
Patent assignments can be recorded with the USPTO in two ways:
- In the assignment records: This is done as provided in 37 CFR Part 3. Recording provides public notice of the assignment but does not determine its validity.
- In the file of a patent application or patent: This may be necessary for the assignee to take action in the application or patent proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
It’s important to note that recording an assignment in the USPTO’s assignment records does not automatically allow the assignee to take action in a patent proceeding. Additional steps may be required as outlined in MPEP § 325 for applications filed on or after September 16, 2012, or MPEP § 324 for earlier applications.
For more information on patent assignment, visit: patent assignment.
There are two ways to make a patent assignment of record with the USPTO:
- Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
- Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.
For more information on oath or declaration, visit: oath or declaration.
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Yes, a patent application can be assigned before it is filed. This is known as an assignment of future rights. MPEP 301 states:
“An assignment of an application can be made before the application is filed. See 37 CFR 3.21.”
However, it’s important to note that the assignment document should clearly identify the invention and the application to be filed. Once the application is filed, it’s advisable to record the assignment with the USPTO to ensure proper documentation of ownership.
For more information on patent assignment, visit: patent assignment.
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MPEP 302 - Recording of Assignment Documents (13)
What is the timeframe for recording an assignment at the USPTO?
The USPTO recommends recording an assignment within three months of its execution date. According to MPEP 302:
“The Patent and Trademark Office does not require that a document be recorded. If a document is to be recorded, it should be submitted to the Assignment Division within three months from its date of execution; otherwise, it may not be accepted for recordation.”
While there’s no strict legal requirement to record within this timeframe, doing so ensures the assignment is properly documented and can help avoid potential legal issues in the future.
For more information on assignment recording, visit: assignment recording.
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What is the purpose of recording patent assignment documents?
Recording patent assignment documents serves several important purposes:
- Providing notice to the public of the assignment
- Creating a public record of the assignment
- Protecting against subsequent purchasers without notice
- Establishing priority of ownership rights
According to MPEP 302, ‘The recording of an assignment document in the USPTO is not a determination of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.’ It merely serves as a public notice and record of the transaction.
For more information on patent assignment, visit: patent assignment.
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What is the difference between recording and registering a patent assignment?
Recording and registering a patent assignment are two distinct processes:
- Recording refers to submitting the assignment document to the USPTO for public notice. As stated in MPEP 302, ‘The recording of the assignment document in the USPTO is merely a ministerial act and does not determine the validity of the document.’
- Registering is not a term used by the USPTO for assignments. The term ‘registration’ is typically used for trademarks, not patents.
Recording an assignment provides constructive notice of the transfer of ownership but does not guarantee the assignment’s validity or enforceability.
For more information on ownership transfer, visit: ownership transfer.
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According to 37 CFR 3.31, the cover sheet for patent assignments must contain:
- Name of the party conveying the interest
- Name and address of the party receiving the interest
- Description of the interest conveyed or transaction to be recorded
- Identification of the patent or application
- Name and address for correspondence
- Date of execution
- Signature of the party submitting the document
For joint research agreements, the cover sheet must also:
- Identify the document as a ‘joint research agreement’
- Indicate the name of the patent owner
- Indicate the names of other parties to the agreement
- Indicate the date the agreement was executed
The MPEP notes that Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.
For more information on Assignment cover sheet, visit: Assignment cover sheet.
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According to 37 CFR 3.26, assignment documents in languages other than English can be recorded with the USPTO, but specific requirements must be met. The MPEP states:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
Key points for submitting non-English assignment documents:
- The original non-English document must be submitted
- An English translation of the document must be provided
- The translation must be signed by the individual who performed the translation
- Both the original document and the translation will be recorded
It’s important to ensure that the translation accurately reflects the content of the original document to avoid any legal complications or misunderstandings regarding the assignment.
For more information on patent assignment, visit: patent assignment.
Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must:
- Identify the document as a ‘joint research agreement’ in the description of interest conveyed
- Indicate the name of the owner of the application or patent
- Indicate the name of each other party to the joint research agreement
- Indicate the date the joint research agreement was executed
The document submitted can be either the entire joint research agreement or an excerpt of it. As with other recorded documents, it must be accompanied by a completed cover sheet as specified in 37 CFR 3.28 and 3.31.
Remember that A patent cover sheet may not refer to trademark applications or registrations.
Separate cover sheets must be used for patents and trademarks.
For more information on joint research agreement, visit: joint research agreement.
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What are the consequences of failing to record a patent assignment with the USPTO?
Failing to record a patent assignment with the USPTO can have several important consequences:
- Lack of legal notice: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as notice to the world of the ownership of the patent.’ Without recording, third parties may not have legal notice of the assignment.
- Potential validity issues: In some cases, failure to record an assignment could affect the validity of subsequent actions taken by the assignee.
- Difficulties in enforcement: Unrecorded assignments may complicate patent enforcement efforts, as the assignee’s standing to sue could be challenged.
- Problems in future transactions: Lack of a clear chain of title can cause issues in future sales, licenses, or other transactions involving the patent.
While recording is not mandatory, it is highly recommended to protect the assignee’s rights and ensure a clear chain of title for the patent.
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According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it:
- Prepare a written document signed by the assignee.
- State the name and address of a person residing within the United States who may be served process or notice of proceedings affecting the patent or rights under it.
- Submit this document to the USPTO as a separate paper from any assignment document.
- Clearly label the document as “Designation of Domestic Representative.”
- Ensure the document is signed in accordance with 37 CFR 1.33(b).
As stated in MPEP 302.04: “The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.”
According to 37 CFR 3.21, a patent assignment must identify the patent by patent number. For patent applications:
- National applications: Identify by application number (series code and serial number)
- International applications designating the US: Identify by international application number
- International design applications designating the US: Identify by international registration number or US application number
If the assignment is executed before filing but after the application is executed, it must identify the application by inventor name(s) and invention title. For provisional applications not yet filed, identify by inventor name(s) and invention title.
The MPEP suggests including language like: I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.
For more information on application identification, visit: application identification.
For more information on patent assignment, visit: patent assignment.
For more information on patent identification, visit: patent identification.
The USPTO allows electronic submission of assignment documents through the Electronic Patent Assignment System (EPAS). According to the MPEP:
- Visit http://epas.uspto.gov for the EPAS system
- Include an identified application or patent number
- Complete one online cover sheet for a single transaction
For electronic submissions, the signature must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2). This typically involves an S-signature between forward slashes (e.g., /John Smith/).
The MPEP notes: The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation.
The recordation date for electronic submissions is the date the complete transmission is received by the USPTO.
For more information on electronic submission, visit: electronic submission.
For more information on EPAS, visit: EPAS.
For more information on patent assignment, visit: patent assignment.
There are three main ways to submit a patent assignment document to the USPTO:
- Mail: Documents can be mailed to the address specified in 37 CFR 3.27: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
- Fax: Documents can be submitted via facsimile, as outlined in MPEP 302.09. However, certain documents cannot be faxed, such as assignments submitted with new applications.
- Electronic Submission: Documents can be submitted electronically through the Electronic Patent Assignment System (EPAS) as described in MPEP 302.10.
Each method has specific requirements and limitations, so it’s important to review the relevant MPEP sections or consult the USPTO website for detailed instructions.
Can foreign language assignment documents be recorded at the USPTO?
Yes, foreign language assignment documents can be recorded at the USPTO, but they must be accompanied by an English translation. The MPEP 302 states:
“Unless an assignment is in a language other than English, the Office may rely on the assignment document (or a copy thereof) as filed.”
If the assignment is in a foreign language, you must provide:
- The original foreign language document
- An English language translation
- A statement verifying that the translation is accurate
This ensures that the USPTO can properly review and record the assignment, maintaining accurate ownership records for patents and patent applications.
For more information on patent assignment, visit: patent assignment.
For more information on translation requirements, visit: translation requirements.
For more information on USPTO, visit: USPTO.
Can an assignment be recorded electronically with the USPTO?
Yes, assignments can be recorded electronically with the USPTO. The MPEP 302 states:
“The USPTO provides for the electronic filing of patent assignment documents through the Electronic Patent Assignment System (EPAS).”
Electronic filing offers several advantages:
- Faster processing times
- Immediate confirmation of receipt
- Reduced risk of errors in data entry
- 24/7 accessibility
To use EPAS, users must have a USPTO.gov account and follow the specific guidelines for electronic submission. For detailed instructions, visit the Electronic Patent Assignment System (EPAS) on the USPTO website.
For more information on electronic filing, visit: electronic filing.
For more information on EPAS, visit: EPAS.
For more information on patent assignment, visit: patent assignment.
For more information on USPTO, visit: USPTO.
MPEP 307 - Issue to Non - Applicant Assignee (5)
What is the significance of the issue fee payment date for patent assignments?
The issue fee payment date is crucial for patent assignments and issuance to assignees for several reasons:
- It serves as the deadline for requesting issuance of the patent to the assignee under 37 CFR 3.81(b).
- Assignments recorded after this date but before patent issuance will be recorded but won’t affect who the patent is issued to.
- It impacts the USPTO’s ability to change the name on the patent.
MPEP 307 states: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.” This underscores the importance of timely assignment recording and requests for issuance to the assignee.
For more information on assignment recording, visit: assignment recording.
For more information on issue fee, visit: issue fee.
For more information on patent assignment, visit: patent assignment.
For more information on patent issuance, visit: patent issuance.
If the assignment has not been recorded before the issue fee payment, the following applies:
- The request for issuance to the assignee must state that the assignment document has been filed for recordation.
- This statement should be made in accordance with 37 CFR 3.11.
As stated in 37 CFR 3.81(a): If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.
What happens if an assignee requests issuance of a patent to themselves?
When an assignee requests issuance of a patent to themselves, the following process occurs:
- The assignee must file a request for issuance of the patent to the assignee under 37 CFR 3.81(b).
- This request must be submitted no later than the date the issue fee is paid.
- If the request is not filed by this deadline, the patent will be issued to the applicant(s) named in the application file.
As stated in MPEP 307: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.”
For more information on issue fee, visit: issue fee.
For more information on patent assignment, visit: patent assignment.
For more information on patent issuance, visit: patent issuance.
If a request for issuance to an assignee is submitted after the issue fee has been paid, the following requirements must be met:
- Submit a request under 37 CFR 3.81(b)
- Include a request for a certificate of correction under 37 CFR 1.323
- Pay the fee for the certificate of correction (set forth in 37 CFR 1.20(a))
- Pay the processing fee (set forth in 37 CFR 1.17(i))
- State that the assignment was submitted for recordation before the patent was issued
As stated in MPEP 307: “If a request for issuance to an assignee pursuant to 37 CFR 3.81(b) is submitted after the day on which the issue fee is paid, the request under 37 CFR 3.81(b) must include a request for a certificate of correction under 37 CFR 1.323 (accompanied by the fee set forth in 37 CFR 1.20(a)) and the processing fee set forth in 37 CFR 1.17(i).”
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on issue fee, visit: issue fee.
For more information on patent assignment, visit: patent assignment.
For more information on patent issuance, visit: patent issuance.
A patent can be issued to an assignee in two main ways:
- Before paying the issue fee: The assignee can submit a request for issuance in their name along with the issue fee payment. The assignment must be previously recorded or stated to have been filed for recordation.
- After paying the issue fee: A request can be submitted after the issue fee payment, but it requires additional steps and fees.
According to MPEP 307, “Normally, for a patent to issue to an assignee (other than an assignee who is the applicant in an application filed on or after September 16, 2012), a request for issuance of the application in the name of the assignee must be filed in the United States Patent and Trademark Office (Office) at a date not later than the day on which the issue fee is paid.”
For more information on issue fee, visit: issue fee.
For more information on patent assignment, visit: patent assignment.
For more information on patent issuance, visit: patent issuance.
MPEP 314 - Certificates of Change of Name or of Merger (1)
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.
MPEP 317 - Handling of Documents in the Assignment Division (1)
Recording a document at the USPTO has the following effects:
- It does not determine the validity of the document or its effect on title.
- The Office may determine a document’s effect when necessary for Office proceedings.
- Conditional assignments are treated as absolute assignments until canceled.
- Recording provides protection against subsequent purchasers without notice.
37 CFR 3.54 states: The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.
Additionally, according to 35 U.S.C. 261, timely recording at the USPTO is crucial for maintaining superiority of rights against subsequent purchasers.
For more information on document recording, visit: document recording.
For more information on patent assignment, visit: patent assignment.
For more information on USPTO procedures, visit: USPTO procedures.
MPEP 323 - Procedures for Correcting Errors in Recorded Assignment Document (1)
When errors are made in the execution of an original assignment document, the USPTO allows for the submission of a ‘substitute statement’ to correct these errors. According to MPEP 323:
“Where errors were made in the execution of the original assignment document … a ‘substitute statement’ may be submitted for recordation.”
The process involves:
- Preparing a new, correctly executed assignment document.
- Submitting this as a ‘substitute statement’ along with a copy of the originally recorded papers.
- Clearly identifying the errors in the original document.
- Paying the required recording fee.
The USPTO will then record the substitute statement, which effectively replaces the erroneous original assignment document.
For more information on patent assignment, visit: patent assignment.
For more information on substitute statement, visit: substitute statement.
For more information on USPTO, visit: USPTO.
MPEP 400 - Representative of Applicant or Owner (1)
When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:
- Show the invention has been assigned to the applicant
- Prove the inventor agreed in writing to assign the invention to the applicant
- Otherwise demonstrate sufficient proprietary interest
To prove assignment, submit:
- A copy of the assignment document
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.
The MPEP states: If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.
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MPEP 500 - Receipt and Handling of Mail and Papers (1)
Assigning ownership rights can significantly affect micro entity status. The MPEP provides the following guidance:
- An applicant is disqualified from micro entity status if they transfer, or are obligated to transfer, any ownership interest to an entity that exceeds the gross income limit.
- If an inventor assigns all rights to an employer that exceeds the gross income limit, micro entity status cannot be claimed.
- Even if rights are later transferred back to the inventor or to another person who doesn’t exceed the gross income limit, micro entity status cannot be regained.
The MPEP states: “Once an assignee or licensee exceeding the gross income limit receives the ownership interest, the 37 CFR 1.29(a)(4) certification requirement can no longer be met – even if the assignee or licensee retransfers rights and no longer holds any ownership interest in the application.“
It’s important to note that this applies to both actual transfers and obligations to transfer ownership rights.
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Patent Law (75)
The English translation of a non-English assignment document must be signed by the individual who performed the translation. As stated in MPEP 302.02:
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
This requirement ensures the accuracy and authenticity of the translation. It’s important to note that the translator’s signature is required, not necessarily the signature of the parties involved in the assignment.
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For more detailed information about the required cover sheet for patent assignments, you can refer to MPEP 302.07. This is explicitly mentioned in MPEP 302.05, which states:
See MPEP § 302.07.
MPEP 302.07 provides comprehensive guidance on the cover sheet requirements, including the necessary information to be included, such as the assignee’s address. Additionally, you can find forms and instructions for recording assignments on the USPTO’s Assignment Recordation Branch website.
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If there’s an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the procedure differs from correcting cover sheet errors. According to MPEP 323.01(b):
- The party responsible for the erroneous document (e.g., the assignor) must either:
- Create and record a new document, or
- Make corrections to the original document and re-record it
- If the assignor is unavailable, the assignee may:
- Submit an affidavit or declaration identifying the error and requesting correction
- Include a copy of the originally recorded papers
- Provide a new cover sheet
- Pay the required fee for each application or patent to be corrected (37 CFR 3.41)
This process ensures that errors in the actual assignment document are properly addressed and corrected in the USPTO records.
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If you discover that another party has improperly recorded an assignment against your patent or application, you should take the following steps:
- Contact the party who recorded the erroneous information and request that they file corrective papers.
- If the party cannot be located or is unwilling to cooperate, you must file corrective papers yourself with the Assignment Services Division.
According to MPEP 323.01(c), you should submit:
- A completed cover sheet identifying the affected application or patent
- An affidavit or declaration stating you are the correct owner, the previous recording was erroneous, and providing the reel and frame number of the incorrect document
- The required fee for each application or patent to be corrected
The MPEP states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.
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What is the timeframe for recording an assignment at the USPTO?
The USPTO recommends recording an assignment within three months of its execution date. According to MPEP 302:
“The Patent and Trademark Office does not require that a document be recorded. If a document is to be recorded, it should be submitted to the Assignment Division within three months from its date of execution; otherwise, it may not be accepted for recordation.”
While there’s no strict legal requirement to record within this timeframe, doing so ensures the assignment is properly documented and can help avoid potential legal issues in the future.
For more information on assignment recording, visit: assignment recording.
For more information on patent assignment, visit: patent assignment.
For more information on USPTO, visit: USPTO.
What is the significance of the issue fee payment date for patent assignments?
The issue fee payment date is crucial for patent assignments and issuance to assignees for several reasons:
- It serves as the deadline for requesting issuance of the patent to the assignee under 37 CFR 3.81(b).
- Assignments recorded after this date but before patent issuance will be recorded but won’t affect who the patent is issued to.
- It impacts the USPTO’s ability to change the name on the patent.
MPEP 307 states: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.” This underscores the importance of timely assignment recording and requests for issuance to the assignee.
For more information on assignment recording, visit: assignment recording.
For more information on issue fee, visit: issue fee.
For more information on patent assignment, visit: patent assignment.
For more information on patent issuance, visit: patent issuance.
The cover sheet serves as a crucial document in the patent assignment process. Its primary purpose is to provide essential information about the assignment in a standardized format. According to MPEP 302.05, one of the key pieces of information that must be included on this cover sheet is the assignee’s address:
The address of the assignee … must be given in the required cover sheet.
The cover sheet ensures that the USPTO has accurate and readily accessible information about the assignment, including details about the assignee, which is critical for maintaining proper records and facilitating communication regarding the patent.
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What is the purpose of recording patent assignment documents?
Recording patent assignment documents serves several important purposes:
- Providing notice to the public of the assignment
- Creating a public record of the assignment
- Protecting against subsequent purchasers without notice
- Establishing priority of ownership rights
According to MPEP 302, ‘The recording of an assignment document in the USPTO is not a determination of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.’ It merely serves as a public notice and record of the transaction.
For more information on patent assignment, visit: patent assignment.
For more information on recording documents, visit: recording documents.
To correct typographical errors in a recorded cover sheet, follow these steps as outlined in MPEP 323.01(a):
- Submit a copy of the originally recorded assignment document.
- Provide a corrected cover sheet.
- Pay the required fee for each application or patent to be corrected.
- Include a copy of the original cover sheet to facilitate comparison.
When submitting the corrected cover sheet:
- Check the ‘Other’ box in the ‘Nature of Conveyance’ area.
- Indicate that the submission is to correct an error in a previously recorded cover sheet.
- Identify the reel and frame numbers (if known) and the nature of the correction.
The MPEP states: The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.
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Recording an assignment at the USPTO does not determine its validity or effect on title. As stated in 37 CFR 3.54:
“The recording of a document pursuant to § 3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.”
The USPTO may, when necessary, determine the effect of a document and whether a party has authority to take action in matters pending before the Office.
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Recording a document at the USPTO has the following effects:
- It does not determine the validity of the document or its effect on title.
- The Office may determine a document’s effect when necessary for Office proceedings.
- Conditional assignments are treated as absolute assignments until canceled.
- Recording provides protection against subsequent purchasers without notice.
37 CFR 3.54 states: The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.
Additionally, according to 35 U.S.C. 261, timely recording at the USPTO is crucial for maintaining superiority of rights against subsequent purchasers.
For more information on document recording, visit: document recording.
For more information on patent assignment, visit: patent assignment.
For more information on USPTO procedures, visit: USPTO procedures.
What is the difference between recording and registering a patent assignment?
Recording and registering a patent assignment are two distinct processes:
- Recording refers to submitting the assignment document to the USPTO for public notice. As stated in MPEP 302, ‘The recording of the assignment document in the USPTO is merely a ministerial act and does not determine the validity of the document.’
- Registering is not a term used by the USPTO for assignments. The term ‘registration’ is typically used for trademarks, not patents.
Recording an assignment provides constructive notice of the transfer of ownership but does not guarantee the assignment’s validity or enforceability.
For more information on ownership transfer, visit: ownership transfer.
For more information on patent assignment, visit: patent assignment.
For more information on USPTO, visit: USPTO.
The key differences between a patent assignment and a patent license are:
- Assignment: Transfers all or part of the ownership interest in a patent, including the entire bundle of rights associated with ownership.
- License: Transfers a bundle of rights that is less than the entire ownership interest. It may be limited in time, geographical area, or field of use.
A license is essentially a contractual agreement that the patent owner will not sue the licensee for patent infringement under certain conditions. Even an exclusive license is not considered an assignment of patent rights.
The date of receipt for assignment documents sent to the USPTO by fax is determined by when the complete transmission is received. According to MPEP 302.09:
The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.
It’s important to note that the benefits of a certificate of transmission under 37 CFR 1.8 are available for fax submissions. This can provide additional protection in case of transmission issues.
For more information on date of receipt for electronic submissions, you can refer to MPEP § 502.01.
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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.
When correcting an erroneous assignment, the affidavit or declaration submitted to the USPTO should contain specific information. According to MPEP 323.01(c), the affidavit should include:
- Identification of yourself as the correct owner
- A statement that the previously recorded document was submitted with erroneous information
- The reel and frame number of the previously recorded document
- A summary of the true chain of title
- A statement that the original applicant, patentee, or last correct assignee has been and continues to be the owner of the application or patent at issue
The MPEP specifically states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the application, or patent at issue.
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According to 37 CFR 3.61, the designation of a domestic representative should include:
- The name of the person residing within the United States
- The address of the designated person
- A statement that this person may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder
As stated in the regulation, The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.
This information ensures that the USPTO and other parties can effectively communicate with the foreign assignee through their designated representative.
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If the assignment has not been recorded before the issue fee payment, the following applies:
- The request for issuance to the assignee must state that the assignment document has been filed for recordation.
- This statement should be made in accordance with 37 CFR 3.11.
As stated in 37 CFR 3.81(a): If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.
What happens if I accidentally submit an original assignment document to the USPTO?
If you accidentally submit an original assignment document to the USPTO, you will not be able to retrieve it. The MPEP 302.01 clearly states: ‘The USPTO will not return documents filed for recording.’
To avoid this situation:
- Always submit copies of assignment documents
- Keep original documents in a secure location
- Double-check all submissions before sending them to the USPTO
If you have submitted an original document in error, you may need to create a new assignment document or seek legal advice on how to proceed with future patent transactions or litigation that may require the original document.
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If an English translation is not provided with a non-English assignment document, the USPTO will not record the assignment. According to MPEP 302.02:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
This means that the assignment will be rejected, and the ownership transfer will not be officially recognized by the USPTO. To proceed with the recordation, the applicant or assignee must submit a proper English translation along with the original non-English document.
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What happens if an assignee requests issuance of a patent to themselves?
When an assignee requests issuance of a patent to themselves, the following process occurs:
- The assignee must file a request for issuance of the patent to the assignee under 37 CFR 3.81(b).
- This request must be submitted no later than the date the issue fee is paid.
- If the request is not filed by this deadline, the patent will be issued to the applicant(s) named in the application file.
As stated in MPEP 307: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.”
For more information on issue fee, visit: issue fee.
For more information on patent assignment, visit: patent assignment.
For more information on patent issuance, visit: patent issuance.
If a typographical error on the original cover sheet does not affect the title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will take the following actions:
- Correct the Assignment Historical Database
- Allow the recording party to keep the original date of recordation
As stated in MPEP 323.01(a): “If the original cover sheet contains a typographical error that does not affect title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will correct the Assignment Historical Database and permit the recording party to keep the original date of recordation.”
This approach ensures that minor errors that don’t impact the substance of the assignment are corrected without affecting the original recordation date, which can be important for legal and priority purposes.
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If the USPTO determines that a faxed assignment document is not recordable, there’s a specific process outlined in MPEP 302.09:
- The entire document, including the cover sheet, is returned to the sender via fax.
- A ‘Notice of Non-Recordation’ is included with the returned document.
- The sender can make corrections and resubmit the document.
- Resubmission must be done by mail to the address in 37 CFR 3.27.
- Timely resubmission preserves the initial receipt date as the recordation date.
The MPEP states: If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office ‘Notice of Non-Recordation’ will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.
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When correcting an erroneous assignment or name change, you must pay the required fee for each application or patent affected. According to MPEP 323.01(c):
The required fee ( 37 CFR 3.41 ) for each application or patent to be corrected.
The specific fee amount can be found in the current USPTO fee schedule. It’s important to note that a separate fee is required for each application or patent that needs correction, even if they are related to the same erroneous assignment.
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To correct a typographical error on a patent assignment cover sheet, you must pay the required fee for each application or patent that needs correction. According to MPEP 323.01(a):
“The party requesting correction should submit… (C) the required fee for each application or patent to be corrected (37 CFR 3.41).”
The specific fee amount is set by 37 CFR 3.41 and may change periodically. It’s important to check the current USPTO Fee Schedule for the most up-to-date fee information. The fee is required per application or patent, so if multiple documents need correction, multiple fees may apply.
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To support a petition to expunge an improperly recorded assignment, you should provide evidence that clearly demonstrates the assignment is incorrect. This may include:
- Affidavits or declarations from relevant parties
- Documentation showing true ownership
- Evidence of fraud or mistake in the recording
MPEP 323.01(c) states: ‘The petition should be accompanied by clear and convincing evidence of the error in recording.’ It’s crucial to present a compelling case to the USPTO to justify the expungement.
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According to 37 CFR 3.31, the cover sheet for patent assignments must contain:
- Name of the party conveying the interest
- Name and address of the party receiving the interest
- Description of the interest conveyed or transaction to be recorded
- Identification of the patent or application
- Name and address for correspondence
- Date of execution
- Signature of the party submitting the document
For joint research agreements, the cover sheet must also:
- Identify the document as a ‘joint research agreement’
- Indicate the name of the patent owner
- Indicate the names of other parties to the agreement
- Indicate the date the agreement was executed
The MPEP notes that Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.
For more information on Assignment cover sheet, visit: Assignment cover sheet.
For more information on patent assignment, visit: patent assignment.
According to 37 CFR 3.26, assignment documents in languages other than English can be recorded with the USPTO, but specific requirements must be met. The MPEP states:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
Key points for submitting non-English assignment documents:
- The original non-English document must be submitted
- An English translation of the document must be provided
- The translation must be signed by the individual who performed the translation
- Both the original document and the translation will be recorded
It’s important to ensure that the translation accurately reflects the content of the original document to avoid any legal complications or misunderstandings regarding the assignment.
For more information on patent assignment, visit: patent assignment.
According to MPEP 302.09, there are specific requirements for submitting assignment-related documents by fax:
- An identified application or patent number
- One cover sheet to record a single transaction
- Payment of the recordation fee by credit card or USPTO Deposit Account
The MPEP states: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record a single transaction; and (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.
It’s important to note that certain documents cannot be submitted via fax, such as assignments submitted with new patent applications or documents with multiple cover sheets.
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According to MPEP 302.02, non-English assignment documents can only be accepted and recorded by the USPTO if they are accompanied by an English translation. The MPEP states:
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
This means that inventors, assignees, or their representatives must provide a certified English translation along with the original non-English document for it to be officially recorded.
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To record an assignment of a patent or patent application, the following requirements must be met:
- The assignment must be in writing.
- It must be signed by the assignor (the person or entity transferring ownership).
- The document must identify the patent or application by number.
- The assignment must be submitted to the USPTO along with the required fee.
According to MPEP 301: “An assignment relating to a patent must be submitted to the USPTO for recordation as an absolute requirement for enforcing the patent or application against third parties.” This recordation provides constructive notice to the public of the assignment.
For more information on patent assignment, visit: patent assignment.
For more information on recordation, visit: recordation.
For more information on USPTO, visit: USPTO.
What are the requirements for recording a patent assignment document?
To record a patent assignment document, you must submit:
- A copy of the original assignment document
- A cover sheet identifying the document as an assignment
- The required fee
The MPEP states: ‘The document submitted for recordation must be accompanied by a cover sheet identifying the document as an assignment and must contain the fee required by 37 CFR 3.41.’ This ensures proper processing and indexing of the assignment.
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Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must:
- Identify the document as a ‘joint research agreement’ in the description of interest conveyed
- Indicate the name of the owner of the application or patent
- Indicate the name of each other party to the joint research agreement
- Indicate the date the joint research agreement was executed
The document submitted can be either the entire joint research agreement or an excerpt of it. As with other recorded documents, it must be accompanied by a completed cover sheet as specified in 37 CFR 3.28 and 3.31.
Remember that A patent cover sheet may not refer to trademark applications or registrations.
Separate cover sheets must be used for patents and trademarks.
For more information on joint research agreement, visit: joint research agreement.
For more information on patent assignment, visit: patent assignment.
For more information on recordation, visit: recordation.
If a request for issuance to an assignee is submitted after the issue fee has been paid, the following requirements must be met:
- Submit a request under 37 CFR 3.81(b)
- Include a request for a certificate of correction under 37 CFR 1.323
- Pay the fee for the certificate of correction (set forth in 37 CFR 1.20(a))
- Pay the processing fee (set forth in 37 CFR 1.17(i))
- State that the assignment was submitted for recordation before the patent was issued
As stated in MPEP 307: “If a request for issuance to an assignee pursuant to 37 CFR 3.81(b) is submitted after the day on which the issue fee is paid, the request under 37 CFR 3.81(b) must include a request for a certificate of correction under 37 CFR 1.323 (accompanied by the fee set forth in 37 CFR 1.20(a)) and the processing fee set forth in 37 CFR 1.17(i).”
For more information on Certificate of Correction, visit: Certificate of Correction.
For more information on issue fee, visit: issue fee.
For more information on patent assignment, visit: patent assignment.
For more information on patent issuance, visit: patent issuance.
What are the consequences of failing to record a patent assignment with the USPTO?
Failing to record a patent assignment with the USPTO can have several important consequences:
- Lack of legal notice: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as notice to the world of the ownership of the patent.’ Without recording, third parties may not have legal notice of the assignment.
- Potential validity issues: In some cases, failure to record an assignment could affect the validity of subsequent actions taken by the assignee.
- Difficulties in enforcement: Unrecorded assignments may complicate patent enforcement efforts, as the assignee’s standing to sue could be challenged.
- Problems in future transactions: Lack of a clear chain of title can cause issues in future sales, licenses, or other transactions involving the patent.
While recording is not mandatory, it is highly recommended to protect the assignee’s rights and ensure a clear chain of title for the patent.
For more information on legal notice, visit: legal notice.
For more information on patent assignment, visit: patent assignment.
When a typographical error on the original cover sheet affects the title to the application or patent against which the assignment or name change is recorded, the consequences are more significant:
- The recording party will not be entitled to keep the original date of recordation
- The Assignment Services Division will correct its automated records
- The date of recordation will be changed to the date the corrected cover sheet was received in the Office
As stated in MPEP 323.01(a): “If the original cover sheet contains a typographical error that affects title to the application or patent against which the assignment or name change is recorded, the recording party will not be entitled to keep the original date of recordation. Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.”
This approach ensures that errors affecting the substance of the assignment or title are properly addressed, even if it means adjusting the recordation date. It’s crucial for patent owners and assignees to be aware of this policy to avoid potential issues with priority dates or legal standing.
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The Electronic Patent Assignment System (EPAS) offers several benefits for submitting assignment documents to the USPTO. While not explicitly stated in MPEP 302.10, the following advantages can be inferred:
- Convenience: Users can submit documents directly from their computer, eliminating the need for physical mailing.
- Efficiency: Electronic submission can be faster than traditional paper-based methods.
- Direct Integration: As stated in the MPEP, EPAS allows submission “directly into the automated Patent and Trademark Assignment System,” potentially reducing processing times.
- Flexibility: Various types of documents related to title can be submitted through the system.
- Multiple Payment Options: Users can pay fees using credit card, electronic fund transfer, or deposit account.
These benefits make EPAS an attractive option for those needing to submit assignment documents to the USPTO.
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The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
For more detailed information, refer to MPEP § 307 and MPEP § 308.
For more information on continuation-in-part application, visit: continuation-in-part application.
For more information on patent assignment, visit: patent assignment.
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While the address of the assignee may be included in the assignment document, it is not strictly required there. However, the address must be provided in the cover sheet accompanying the assignment. As stated in MPEP 302.05:
The address of the assignee may be recited in the assignment document and must be given in the required cover sheet.
This means that while including the address in the assignment document itself is optional, providing it on the cover sheet is mandatory for proper recordation of the assignment.
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According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it:
- Prepare a written document signed by the assignee.
- State the name and address of a person residing within the United States who may be served process or notice of proceedings affecting the patent or rights under it.
- Submit this document to the USPTO as a separate paper from any assignment document.
- Clearly label the document as “Designation of Domestic Representative.”
- Ensure the document is signed in accordance with 37 CFR 1.33(b).
As stated in MPEP 302.04: “The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.”
Patent ownership can be transferred through an assignment. According to 35 U.S.C. 261, assignments of patent applications, patents, or any interest therein must be in writing. The MPEP defines an assignment as:
‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….’
An assignment transfers the entire ownership interest or a percentage of that interest in the patent or application. It must include the entirety of the bundle of rights associated with the ownership interest.
The USPTO has an automated system for processing assignment documents submitted by fax. According to MPEP 302.09:
- Documents are submitted directly into the automated Patent and Trademark Assignment System.
- A recordation notice is automatically returned to the sending fax number.
- If the system can’t complete the transmission, the notice is printed and mailed via U.S. Postal Service first class mail.
- The Patent and Trademark Assignment System assigns reel and frame numbers and adds recordation stampings to the processed electronic images.
The MPEP states: The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.
This automated process ensures efficient handling and proper documentation of assignment records.
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When errors are made in the execution of an original assignment document, the USPTO allows for the submission of a ‘substitute statement’ to correct these errors. According to MPEP 323:
“Where errors were made in the execution of the original assignment document … a ‘substitute statement’ may be submitted for recordation.”
The process involves:
- Preparing a new, correctly executed assignment document.
- Submitting this as a ‘substitute statement’ along with a copy of the originally recorded papers.
- Clearly identifying the errors in the original document.
- Paying the required recording fee.
The USPTO will then record the substitute statement, which effectively replaces the erroneous original assignment document.
For more information on patent assignment, visit: patent assignment.
For more information on substitute statement, visit: substitute statement.
For more information on USPTO, visit: USPTO.
The USPTO recognizes and accepts electronic signatures on assignment documents submitted electronically. According to MPEP 302.10:
“The USPTO will accept electronic signatures on documents submitted electronically.”
This means that assignors and assignees can use various forms of electronic signatures, such as:
- Typed names
- Digital signatures
- Scanned images of handwritten signatures
It’s important to ensure that the electronic signature complies with the USPTO’s requirements and is legally binding. The specific requirements for electronic signatures are outlined in MPEP 502.02.
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How does the USPTO handle assignment documents after recording?
After recording an assignment document, the USPTO follows a specific process. According to MPEP 302.01: ‘Assignment documents submitted for recording are scanned and stored in a public database.’
The handling process includes:
- Scanning the submitted copy of the assignment document
- Storing the scanned document in a publicly accessible database
- Retaining the physical copy submitted (not returning it to the sender)
- Making the recorded information available for public inspection
This process ensures that assignment records are preserved and accessible while maintaining the integrity of the original submissions.
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The USPTO follows a specific process to determine if an error on a cover sheet is typographical in nature. According to MPEP 323.01(a):
“The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.”
This process involves:
- Reviewing the corrected cover sheet submitted by the requesting party
- Comparing it to the original cover sheet
- Examining the originally recorded assignment document or other title-affecting document
- Assessing whether the error is purely typographical or if it substantively affects the title or assignment
If the error is determined to be typographical and does not affect the title, the Assignment Services Division will record the corrected cover sheet and update the Assignment Historical Database. However, if the error affects the title, different procedures apply, including potential changes to the recordation date.
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The effect on the date of recordation depends on whether the error affects title to the application or patent. According to MPEP 323.01(a):
- Errors that do not affect title: If the typographical error does not affect title, the Assignment Services Division will correct the Assignment Historical Database and allow the recording party to keep the original date of recordation.
- Errors that affect title: If the error affects title to the application or patent, the recording party will not keep the original date of recordation. The MPEP states:
Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.
It’s crucial to ensure accuracy in cover sheets to maintain the earliest possible recordation date, especially for errors that could affect title to the application or patent.
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For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
Assigning ownership rights can significantly affect micro entity status. The MPEP provides the following guidance:
- An applicant is disqualified from micro entity status if they transfer, or are obligated to transfer, any ownership interest to an entity that exceeds the gross income limit.
- If an inventor assigns all rights to an employer that exceeds the gross income limit, micro entity status cannot be claimed.
- Even if rights are later transferred back to the inventor or to another person who doesn’t exceed the gross income limit, micro entity status cannot be regained.
The MPEP states: “Once an assignee or licensee exceeding the gross income limit receives the ownership interest, the 37 CFR 1.29(a)(4) certification requirement can no longer be met – even if the assignee or licensee retransfers rights and no longer holds any ownership interest in the application.“
It’s important to note that this applies to both actual transfers and obligations to transfer ownership rights.
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To designate a domestic representative, a foreign assignee must follow these steps:
- Prepare a written document signed by the assignee
- Clearly label the document as ‘Designation of Domestic Representative’
- Submit the designation as a separate paper from any assignment document
- Ensure the document is signed in accordance with 37 CFR 1.33(b)
As stated in MPEP 302.04, The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.
This ensures proper processing and entry into the record of the appropriate application or patent file.
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According to 37 CFR 3.21, a patent assignment must identify the patent by patent number. For patent applications:
- National applications: Identify by application number (series code and serial number)
- International applications designating the US: Identify by international application number
- International design applications designating the US: Identify by international registration number or US application number
If the assignment is executed before filing but after the application is executed, it must identify the application by inventor name(s) and invention title. For provisional applications not yet filed, identify by inventor name(s) and invention title.
The MPEP suggests including language like: I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.
For more information on application identification, visit: application identification.
For more information on patent assignment, visit: patent assignment.
For more information on patent identification, visit: patent identification.
To properly identify a patent in an assignment, you must use the patent number. According to 37 CFR 3.21, “An assignment relating to a patent must identify the patent by the patent number.” This ensures that there is no ambiguity about which patent is being assigned.
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When submitting a corrected cover sheet to address an erroneous assignment or name change, follow these instructions from MPEP 323.01(c):
- Check the box titled ‘Other’ in the ‘Nature of Conveyance’ section.
- Indicate that the submission is to correct an error in a previously recorded document that erroneously affects the identified application(s) or patent(s).
- Write the name of the correct owner in both the ‘conveying party’ and ‘receiving party’ boxes.
The MPEP explains the reasoning behind this: The party should also write the name of the correct owner in both the box requesting the name of the conveying party and the box requesting the name and address of the receiving party; this is to make it clear that ownership never changed and that any assignment or name change recorded against the application(s) or patent(s) was erroneous.
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To correct a typographical error on a recorded cover sheet for a patent assignment, you need to submit the following to the Assignment Services Division:
- A copy of the originally recorded assignment document (or other document affecting title)
- A corrected cover sheet
- The required fee for each application or patent to be corrected
Additionally, it’s recommended to submit a copy of the original cover sheet to facilitate comparison. When filing the corrected cover sheet, you should:
- Check the box titled “Other” in the “Nature of Conveyance” area
- Indicate that the submission is to correct an error in a previously recorded cover sheet
- Identify the reel and frame numbers (if known)
- Specify the nature of the correction
As stated in MPEP 323.01(a): “The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.”
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Patents and patent applications can be assigned through a written instrument. The MPEP 301 states:
‘Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’
This means that patent rights can be transferred from one party to another through a written document. The assignment must be recorded with the USPTO to be effective against subsequent purchasers or mortgagees.
For more information on patent assignment, visit: patent assignment.
The USPTO allows electronic submission of assignment documents through the Electronic Patent Assignment System (EPAS). According to the MPEP:
- Visit http://epas.uspto.gov for the EPAS system
- Include an identified application or patent number
- Complete one online cover sheet for a single transaction
For electronic submissions, the signature must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2). This typically involves an S-signature between forward slashes (e.g., /John Smith/).
The MPEP notes: The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation.
The recordation date for electronic submissions is the date the complete transmission is received by the USPTO.
For more information on electronic submission, visit: electronic submission.
For more information on EPAS, visit: EPAS.
For more information on patent assignment, visit: patent assignment.
There are three main ways to submit a patent assignment document to the USPTO:
- Mail: Documents can be mailed to the address specified in 37 CFR 3.27: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
- Fax: Documents can be submitted via facsimile, as outlined in MPEP 302.09. However, certain documents cannot be faxed, such as assignments submitted with new applications.
- Electronic Submission: Documents can be submitted electronically through the Electronic Patent Assignment System (EPAS) as described in MPEP 302.10.
Each method has specific requirements and limitations, so it’s important to review the relevant MPEP sections or consult the USPTO website for detailed instructions.
Patent assignments can be recorded with the USPTO in two ways:
- In the assignment records: This is done as provided in 37 CFR Part 3. Recording provides public notice of the assignment but does not determine its validity.
- In the file of a patent application or patent: This may be necessary for the assignee to take action in the application or patent proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
It’s important to note that recording an assignment in the USPTO’s assignment records does not automatically allow the assignee to take action in a patent proceeding. Additional steps may be required as outlined in MPEP § 325 for applications filed on or after September 16, 2012, or MPEP § 324 for earlier applications.
For more information on patent assignment, visit: patent assignment.
There are two ways to make a patent assignment of record with the USPTO:
- Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
- Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
To correct an improperly recorded assignment against your patent or application, follow these steps:
- File a petition under 37 CFR 1.182 to expunge the improper assignment
- Include evidence that the recorded assignment is improper
- Pay the required petition fee
As stated in MPEP 323.01(c): ‘The owner of the patent or application may petition to have such an assignment expunged from the assignment records of the Office.’
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To correct an error in a recorded cover sheet, you must follow the procedure outlined in 37 CFR 3.34. Specifically:
- The error must be apparent when comparing the cover sheet with the recorded document.
- You must file a corrected cover sheet for recordation.
- Include a copy of the original document submitted for recording.
- Pay the required recording fee as set forth in 37 CFR 3.41.
As stated in the MPEP, Any alleged error in a recorded cover sheet will only be corrected if the error is apparent from a comparison with the recorded assignment document.
It’s important to carefully review the notice of recordation issued by the Office after recording.
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When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:
- Show the invention has been assigned to the applicant
- Prove the inventor agreed in writing to assign the invention to the applicant
- Otherwise demonstrate sufficient proprietary interest
To prove assignment, submit:
- A copy of the assignment document
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.
The MPEP states: If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.
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A patent can be issued to an assignee in two main ways:
- Before paying the issue fee: The assignee can submit a request for issuance in their name along with the issue fee payment. The assignment must be previously recorded or stated to have been filed for recordation.
- After paying the issue fee: A request can be submitted after the issue fee payment, but it requires additional steps and fees.
According to MPEP 307, “Normally, for a patent to issue to an assignee (other than an assignee who is the applicant in an application filed on or after September 16, 2012), a request for issuance of the application in the name of the assignee must be filed in the United States Patent and Trademark Office (Office) at a date not later than the day on which the issue fee is paid.”
For more information on issue fee, visit: issue fee.
For more information on patent assignment, visit: patent assignment.
For more information on patent issuance, visit: patent issuance.
No, the act of recording a document with the USPTO does not determine its legal effect on patent ownership. The MPEP clearly states:
The recordation of a document is not a determination of the effect of the document on the chain of title.
This means that while the USPTO will record various documents related to patent interests, it does not make any judgments about how these documents affect ownership at the time of recordation. Instead, as the MPEP explains:
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.
For more information on how the USPTO determines ownership when necessary, refer to MPEP § 324 and § 325.
For more information on chain of title, visit: chain of title.
For more information on patent assignment, visit: patent assignment.
Yes, the USPTO can refuse to expunge an improperly recorded assignment. According to MPEP 323.01(c):
‘The Office, however, has consistently taken the position that such a petition will not be granted unless it is apparent that the recording is a ‘clerical error on the part of the Office.”
This means that the USPTO is generally reluctant to expunge recorded assignments unless there’s clear evidence of an error on their part. If the improper recording was due to actions of the parties involved rather than the USPTO, the petition may be denied.
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Yes, you can submit assignments and other documents affecting title to the USPTO via fax. The MPEP states: Assignments and other documents affecting title may be submitted to the Office via facsimile (fax).
This process allows for direct submission into the automated Patent and Trademark Assignment System.
However, there are specific requirements and limitations:
- Documents must include an identified application or patent number, one cover sheet for a single transaction, and payment of the recordation fee.
- Certain documents cannot be submitted via fax, such as assignments submitted with new patent applications or documents with multiple cover sheets.
For the most up-to-date fax number, refer to the USPTO website or MPEP § 1730.
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Can I submit an original assignment document for recording at the USPTO?
No, you should not submit the original assignment document for recording. The MPEP 302.01 clearly states: ‘The USPTO will not return documents filed for recording.’ Therefore, it’s crucial to submit a copy of the original document to ensure you retain the original for your records.
Always keep the original assignment document in a safe place and submit a legible copy for recording purposes. This practice protects your original document and complies with USPTO requirements.
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Yes, you can still correct an erroneous assignment even if you cannot contact or get cooperation from the party who filed it. The MPEP 323.01(c) provides guidance for this situation:
The owner should contact the party who recorded the papers with the erroneous information and request that such party record corrective papers. However, if the party cannot be located or is unwilling to file corrective papers, then the true owner must record the necessary papers with the Assignment Services Division to correct the error.
In such cases, you, as the true owner, must submit the required documentation to the USPTO’s Assignment Services Division, including the completed cover sheet, affidavit or declaration, and required fees. This ensures that you can correct the record even without the cooperation of the party who made the error.
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Can foreign language assignment documents be recorded at the USPTO?
Yes, foreign language assignment documents can be recorded at the USPTO, but they must be accompanied by an English translation. The MPEP 302 states:
“Unless an assignment is in a language other than English, the Office may rely on the assignment document (or a copy thereof) as filed.”
If the assignment is in a foreign language, you must provide:
- The original foreign language document
- An English language translation
- A statement verifying that the translation is accurate
This ensures that the USPTO can properly review and record the assignment, maintaining accurate ownership records for patents and patent applications.
For more information on patent assignment, visit: patent assignment.
For more information on translation requirements, visit: translation requirements.
For more information on USPTO, visit: USPTO.
Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent assignment, visit: patent assignment.
Can an assignment be recorded electronically with the USPTO?
Yes, assignments can be recorded electronically with the USPTO. The MPEP 302 states:
“The USPTO provides for the electronic filing of patent assignment documents through the Electronic Patent Assignment System (EPAS).”
Electronic filing offers several advantages:
- Faster processing times
- Immediate confirmation of receipt
- Reduced risk of errors in data entry
- 24/7 accessibility
To use EPAS, users must have a USPTO.gov account and follow the specific guidelines for electronic submission. For detailed instructions, visit the Electronic Patent Assignment System (EPAS) on the USPTO website.
For more information on electronic filing, visit: electronic filing.
For more information on EPAS, visit: EPAS.
For more information on patent assignment, visit: patent assignment.
For more information on USPTO, visit: USPTO.
Yes, a patent application can be assigned before it is filed. This is known as an assignment of future rights. MPEP 301 states:
“An assignment of an application can be made before the application is filed. See 37 CFR 3.21.”
However, it’s important to note that the assignment document should clearly identify the invention and the application to be filed. Once the application is filed, it’s advisable to record the assignment with the USPTO to ensure proper documentation of ownership.
For more information on patent assignment, visit: patent assignment.
For more information on USPTO, visit: USPTO.
Yes, a domestic representative can be changed after the initial designation. While MPEP 302.04 doesn’t explicitly address changing a domestic representative, it states that the designation is made by a written document signed by such assignee.
This implies that a new written document can be submitted to change the designation. To change a domestic representative, follow the same process as the initial designation:
- Prepare a new written document clearly labeled ‘Change of Domestic Representative’
- Include the new representative’s name and address
- Submit the document separately from other filings
- Ensure it’s signed in accordance with 37 CFR 1.33(b)
It’s advisable to explicitly state that this new designation supersedes any previous designations to avoid confusion.
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Based on the information provided in MPEP 302.02, there are no exceptions to the USPTO’s English translation requirement for assignments. The MPEP states unequivocally:
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
This requirement applies to all non-English assignment documents without exception. The USPTO’s strict adherence to this policy ensures uniformity in the recording process and accessibility of patent ownership information.
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Are patent assignment records publicly accessible after recording at the USPTO?
Yes, patent assignment records become publicly accessible after they are recorded at the USPTO. The MPEP 302.01 states: ‘Assignment documents submitted for recording are scanned and stored in a public database.’
This means:
- Anyone can access recorded assignment information
- The public database allows searching for patent ownership details
- Transparency in patent ownership is maintained
Public accessibility of these records is crucial for maintaining transparency in patent ownership and facilitating due diligence in patent transactions. Interested parties can search and retrieve assignment information through the USPTO’s Assignment Search database.
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Patent Procedure (75)
The English translation of a non-English assignment document must be signed by the individual who performed the translation. As stated in MPEP 302.02:
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
This requirement ensures the accuracy and authenticity of the translation. It’s important to note that the translator’s signature is required, not necessarily the signature of the parties involved in the assignment.
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For more detailed information about the required cover sheet for patent assignments, you can refer to MPEP 302.07. This is explicitly mentioned in MPEP 302.05, which states:
See MPEP § 302.07.
MPEP 302.07 provides comprehensive guidance on the cover sheet requirements, including the necessary information to be included, such as the assignee’s address. Additionally, you can find forms and instructions for recording assignments on the USPTO’s Assignment Recordation Branch website.
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If there’s an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the procedure differs from correcting cover sheet errors. According to MPEP 323.01(b):
- The party responsible for the erroneous document (e.g., the assignor) must either:
- Create and record a new document, or
- Make corrections to the original document and re-record it
- If the assignor is unavailable, the assignee may:
- Submit an affidavit or declaration identifying the error and requesting correction
- Include a copy of the originally recorded papers
- Provide a new cover sheet
- Pay the required fee for each application or patent to be corrected (37 CFR 3.41)
This process ensures that errors in the actual assignment document are properly addressed and corrected in the USPTO records.
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If you discover that another party has improperly recorded an assignment against your patent or application, you should take the following steps:
- Contact the party who recorded the erroneous information and request that they file corrective papers.
- If the party cannot be located or is unwilling to cooperate, you must file corrective papers yourself with the Assignment Services Division.
According to MPEP 323.01(c), you should submit:
- A completed cover sheet identifying the affected application or patent
- An affidavit or declaration stating you are the correct owner, the previous recording was erroneous, and providing the reel and frame number of the incorrect document
- The required fee for each application or patent to be corrected
The MPEP states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.
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What is the timeframe for recording an assignment at the USPTO?
The USPTO recommends recording an assignment within three months of its execution date. According to MPEP 302:
“The Patent and Trademark Office does not require that a document be recorded. If a document is to be recorded, it should be submitted to the Assignment Division within three months from its date of execution; otherwise, it may not be accepted for recordation.”
While there’s no strict legal requirement to record within this timeframe, doing so ensures the assignment is properly documented and can help avoid potential legal issues in the future.
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What is the significance of the issue fee payment date for patent assignments?
The issue fee payment date is crucial for patent assignments and issuance to assignees for several reasons:
- It serves as the deadline for requesting issuance of the patent to the assignee under 37 CFR 3.81(b).
- Assignments recorded after this date but before patent issuance will be recorded but won’t affect who the patent is issued to.
- It impacts the USPTO’s ability to change the name on the patent.
MPEP 307 states: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.” This underscores the importance of timely assignment recording and requests for issuance to the assignee.
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The cover sheet serves as a crucial document in the patent assignment process. Its primary purpose is to provide essential information about the assignment in a standardized format. According to MPEP 302.05, one of the key pieces of information that must be included on this cover sheet is the assignee’s address:
The address of the assignee … must be given in the required cover sheet.
The cover sheet ensures that the USPTO has accurate and readily accessible information about the assignment, including details about the assignee, which is critical for maintaining proper records and facilitating communication regarding the patent.
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What is the purpose of recording patent assignment documents?
Recording patent assignment documents serves several important purposes:
- Providing notice to the public of the assignment
- Creating a public record of the assignment
- Protecting against subsequent purchasers without notice
- Establishing priority of ownership rights
According to MPEP 302, ‘The recording of an assignment document in the USPTO is not a determination of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.’ It merely serves as a public notice and record of the transaction.
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To correct typographical errors in a recorded cover sheet, follow these steps as outlined in MPEP 323.01(a):
- Submit a copy of the originally recorded assignment document.
- Provide a corrected cover sheet.
- Pay the required fee for each application or patent to be corrected.
- Include a copy of the original cover sheet to facilitate comparison.
When submitting the corrected cover sheet:
- Check the ‘Other’ box in the ‘Nature of Conveyance’ area.
- Indicate that the submission is to correct an error in a previously recorded cover sheet.
- Identify the reel and frame numbers (if known) and the nature of the correction.
The MPEP states: The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.
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Recording an assignment at the USPTO does not determine its validity or effect on title. As stated in 37 CFR 3.54:
“The recording of a document pursuant to § 3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.”
The USPTO may, when necessary, determine the effect of a document and whether a party has authority to take action in matters pending before the Office.
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Recording a document at the USPTO has the following effects:
- It does not determine the validity of the document or its effect on title.
- The Office may determine a document’s effect when necessary for Office proceedings.
- Conditional assignments are treated as absolute assignments until canceled.
- Recording provides protection against subsequent purchasers without notice.
37 CFR 3.54 states: The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.
Additionally, according to 35 U.S.C. 261, timely recording at the USPTO is crucial for maintaining superiority of rights against subsequent purchasers.
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What is the difference between recording and registering a patent assignment?
Recording and registering a patent assignment are two distinct processes:
- Recording refers to submitting the assignment document to the USPTO for public notice. As stated in MPEP 302, ‘The recording of the assignment document in the USPTO is merely a ministerial act and does not determine the validity of the document.’
- Registering is not a term used by the USPTO for assignments. The term ‘registration’ is typically used for trademarks, not patents.
Recording an assignment provides constructive notice of the transfer of ownership but does not guarantee the assignment’s validity or enforceability.
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The key differences between a patent assignment and a patent license are:
- Assignment: Transfers all or part of the ownership interest in a patent, including the entire bundle of rights associated with ownership.
- License: Transfers a bundle of rights that is less than the entire ownership interest. It may be limited in time, geographical area, or field of use.
A license is essentially a contractual agreement that the patent owner will not sue the licensee for patent infringement under certain conditions. Even an exclusive license is not considered an assignment of patent rights.
The date of receipt for assignment documents sent to the USPTO by fax is determined by when the complete transmission is received. According to MPEP 302.09:
The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.
It’s important to note that the benefits of a certificate of transmission under 37 CFR 1.8 are available for fax submissions. This can provide additional protection in case of transmission issues.
For more information on date of receipt for electronic submissions, you can refer to MPEP § 502.01.
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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.
When correcting an erroneous assignment, the affidavit or declaration submitted to the USPTO should contain specific information. According to MPEP 323.01(c), the affidavit should include:
- Identification of yourself as the correct owner
- A statement that the previously recorded document was submitted with erroneous information
- The reel and frame number of the previously recorded document
- A summary of the true chain of title
- A statement that the original applicant, patentee, or last correct assignee has been and continues to be the owner of the application or patent at issue
The MPEP specifically states: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the application, or patent at issue.
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According to 37 CFR 3.61, the designation of a domestic representative should include:
- The name of the person residing within the United States
- The address of the designated person
- A statement that this person may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder
As stated in the regulation, The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.
This information ensures that the USPTO and other parties can effectively communicate with the foreign assignee through their designated representative.
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If the assignment has not been recorded before the issue fee payment, the following applies:
- The request for issuance to the assignee must state that the assignment document has been filed for recordation.
- This statement should be made in accordance with 37 CFR 3.11.
As stated in 37 CFR 3.81(a): If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.
What happens if I accidentally submit an original assignment document to the USPTO?
If you accidentally submit an original assignment document to the USPTO, you will not be able to retrieve it. The MPEP 302.01 clearly states: ‘The USPTO will not return documents filed for recording.’
To avoid this situation:
- Always submit copies of assignment documents
- Keep original documents in a secure location
- Double-check all submissions before sending them to the USPTO
If you have submitted an original document in error, you may need to create a new assignment document or seek legal advice on how to proceed with future patent transactions or litigation that may require the original document.
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If an English translation is not provided with a non-English assignment document, the USPTO will not record the assignment. According to MPEP 302.02:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
This means that the assignment will be rejected, and the ownership transfer will not be officially recognized by the USPTO. To proceed with the recordation, the applicant or assignee must submit a proper English translation along with the original non-English document.
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What happens if an assignee requests issuance of a patent to themselves?
When an assignee requests issuance of a patent to themselves, the following process occurs:
- The assignee must file a request for issuance of the patent to the assignee under 37 CFR 3.81(b).
- This request must be submitted no later than the date the issue fee is paid.
- If the request is not filed by this deadline, the patent will be issued to the applicant(s) named in the application file.
As stated in MPEP 307: “If the assignment is submitted for recording after the date of payment of the issue fee, but prior to issuance of the patent, the assignment will be recorded but the patent will issue to the name of the inventor.”
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If a typographical error on the original cover sheet does not affect the title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will take the following actions:
- Correct the Assignment Historical Database
- Allow the recording party to keep the original date of recordation
As stated in MPEP 323.01(a): “If the original cover sheet contains a typographical error that does not affect title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will correct the Assignment Historical Database and permit the recording party to keep the original date of recordation.”
This approach ensures that minor errors that don’t impact the substance of the assignment are corrected without affecting the original recordation date, which can be important for legal and priority purposes.
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If the USPTO determines that a faxed assignment document is not recordable, there’s a specific process outlined in MPEP 302.09:
- The entire document, including the cover sheet, is returned to the sender via fax.
- A ‘Notice of Non-Recordation’ is included with the returned document.
- The sender can make corrections and resubmit the document.
- Resubmission must be done by mail to the address in 37 CFR 3.27.
- Timely resubmission preserves the initial receipt date as the recordation date.
The MPEP states: If a document submitted by fax is determined not to be recordable, the entire document, with its associated cover sheet, and the Office ‘Notice of Non-Recordation’ will be transmitted via fax back to the sender. Once corrections are made, the initial submission, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.
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When correcting an erroneous assignment or name change, you must pay the required fee for each application or patent affected. According to MPEP 323.01(c):
The required fee ( 37 CFR 3.41 ) for each application or patent to be corrected.
The specific fee amount can be found in the current USPTO fee schedule. It’s important to note that a separate fee is required for each application or patent that needs correction, even if they are related to the same erroneous assignment.
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To correct a typographical error on a patent assignment cover sheet, you must pay the required fee for each application or patent that needs correction. According to MPEP 323.01(a):
“The party requesting correction should submit… (C) the required fee for each application or patent to be corrected (37 CFR 3.41).”
The specific fee amount is set by 37 CFR 3.41 and may change periodically. It’s important to check the current USPTO Fee Schedule for the most up-to-date fee information. The fee is required per application or patent, so if multiple documents need correction, multiple fees may apply.
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To support a petition to expunge an improperly recorded assignment, you should provide evidence that clearly demonstrates the assignment is incorrect. This may include:
- Affidavits or declarations from relevant parties
- Documentation showing true ownership
- Evidence of fraud or mistake in the recording
MPEP 323.01(c) states: ‘The petition should be accompanied by clear and convincing evidence of the error in recording.’ It’s crucial to present a compelling case to the USPTO to justify the expungement.
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According to 37 CFR 3.31, the cover sheet for patent assignments must contain:
- Name of the party conveying the interest
- Name and address of the party receiving the interest
- Description of the interest conveyed or transaction to be recorded
- Identification of the patent or application
- Name and address for correspondence
- Date of execution
- Signature of the party submitting the document
For joint research agreements, the cover sheet must also:
- Identify the document as a ‘joint research agreement’
- Indicate the name of the patent owner
- Indicate the names of other parties to the agreement
- Indicate the date the agreement was executed
The MPEP notes that Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording documents relating to patent(s) and/or patent application(s) in the Office.
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According to 37 CFR 3.26, assignment documents in languages other than English can be recorded with the USPTO, but specific requirements must be met. The MPEP states:
The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.
Key points for submitting non-English assignment documents:
- The original non-English document must be submitted
- An English translation of the document must be provided
- The translation must be signed by the individual who performed the translation
- Both the original document and the translation will be recorded
It’s important to ensure that the translation accurately reflects the content of the original document to avoid any legal complications or misunderstandings regarding the assignment.
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According to MPEP 302.09, there are specific requirements for submitting assignment-related documents by fax:
- An identified application or patent number
- One cover sheet to record a single transaction
- Payment of the recordation fee by credit card or USPTO Deposit Account
The MPEP states: Any assignment-related document for patent matters submitted by facsimile must include: (A) an identified application or patent number; (B) one cover sheet to record a single transaction; and (C) payment of the recordation fee by a credit card (use of the Credit Card form, PTO-2038 (see MPEP § 509), is required for the credit card information to be kept separate from the assignment records) or a USPTO Deposit Account.
It’s important to note that certain documents cannot be submitted via fax, such as assignments submitted with new patent applications or documents with multiple cover sheets.
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According to MPEP 302.02, non-English assignment documents can only be accepted and recorded by the USPTO if they are accompanied by an English translation. The MPEP states:
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
This means that inventors, assignees, or their representatives must provide a certified English translation along with the original non-English document for it to be officially recorded.
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To record an assignment of a patent or patent application, the following requirements must be met:
- The assignment must be in writing.
- It must be signed by the assignor (the person or entity transferring ownership).
- The document must identify the patent or application by number.
- The assignment must be submitted to the USPTO along with the required fee.
According to MPEP 301: “An assignment relating to a patent must be submitted to the USPTO for recordation as an absolute requirement for enforcing the patent or application against third parties.” This recordation provides constructive notice to the public of the assignment.
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What are the requirements for recording a patent assignment document?
To record a patent assignment document, you must submit:
- A copy of the original assignment document
- A cover sheet identifying the document as an assignment
- The required fee
The MPEP states: ‘The document submitted for recordation must be accompanied by a cover sheet identifying the document as an assignment and must contain the fee required by 37 CFR 3.41.’ This ensures proper processing and indexing of the assignment.
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Joint research agreements can be recorded with the USPTO as per 37 CFR 3.11(c). The MPEP states that the cover sheet for a joint research agreement must:
- Identify the document as a ‘joint research agreement’ in the description of interest conveyed
- Indicate the name of the owner of the application or patent
- Indicate the name of each other party to the joint research agreement
- Indicate the date the joint research agreement was executed
The document submitted can be either the entire joint research agreement or an excerpt of it. As with other recorded documents, it must be accompanied by a completed cover sheet as specified in 37 CFR 3.28 and 3.31.
Remember that A patent cover sheet may not refer to trademark applications or registrations.
Separate cover sheets must be used for patents and trademarks.
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If a request for issuance to an assignee is submitted after the issue fee has been paid, the following requirements must be met:
- Submit a request under 37 CFR 3.81(b)
- Include a request for a certificate of correction under 37 CFR 1.323
- Pay the fee for the certificate of correction (set forth in 37 CFR 1.20(a))
- Pay the processing fee (set forth in 37 CFR 1.17(i))
- State that the assignment was submitted for recordation before the patent was issued
As stated in MPEP 307: “If a request for issuance to an assignee pursuant to 37 CFR 3.81(b) is submitted after the day on which the issue fee is paid, the request under 37 CFR 3.81(b) must include a request for a certificate of correction under 37 CFR 1.323 (accompanied by the fee set forth in 37 CFR 1.20(a)) and the processing fee set forth in 37 CFR 1.17(i).”
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What are the consequences of failing to record a patent assignment with the USPTO?
Failing to record a patent assignment with the USPTO can have several important consequences:
- Lack of legal notice: As stated in MPEP 302, ‘An assignment recorded in the Office is regarded as notice to the world of the ownership of the patent.’ Without recording, third parties may not have legal notice of the assignment.
- Potential validity issues: In some cases, failure to record an assignment could affect the validity of subsequent actions taken by the assignee.
- Difficulties in enforcement: Unrecorded assignments may complicate patent enforcement efforts, as the assignee’s standing to sue could be challenged.
- Problems in future transactions: Lack of a clear chain of title can cause issues in future sales, licenses, or other transactions involving the patent.
While recording is not mandatory, it is highly recommended to protect the assignee’s rights and ensure a clear chain of title for the patent.
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When a typographical error on the original cover sheet affects the title to the application or patent against which the assignment or name change is recorded, the consequences are more significant:
- The recording party will not be entitled to keep the original date of recordation
- The Assignment Services Division will correct its automated records
- The date of recordation will be changed to the date the corrected cover sheet was received in the Office
As stated in MPEP 323.01(a): “If the original cover sheet contains a typographical error that affects title to the application or patent against which the assignment or name change is recorded, the recording party will not be entitled to keep the original date of recordation. Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.”
This approach ensures that errors affecting the substance of the assignment or title are properly addressed, even if it means adjusting the recordation date. It’s crucial for patent owners and assignees to be aware of this policy to avoid potential issues with priority dates or legal standing.
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The Electronic Patent Assignment System (EPAS) offers several benefits for submitting assignment documents to the USPTO. While not explicitly stated in MPEP 302.10, the following advantages can be inferred:
- Convenience: Users can submit documents directly from their computer, eliminating the need for physical mailing.
- Efficiency: Electronic submission can be faster than traditional paper-based methods.
- Direct Integration: As stated in the MPEP, EPAS allows submission “directly into the automated Patent and Trademark Assignment System,” potentially reducing processing times.
- Flexibility: Various types of documents related to title can be submitted through the system.
- Multiple Payment Options: Users can pay fees using credit card, electronic fund transfer, or deposit account.
These benefits make EPAS an attractive option for those needing to submit assignment documents to the USPTO.
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The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
For more detailed information, refer to MPEP § 307 and MPEP § 308.
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While the address of the assignee may be included in the assignment document, it is not strictly required there. However, the address must be provided in the cover sheet accompanying the assignment. As stated in MPEP 302.05:
The address of the assignee may be recited in the assignment document and must be given in the required cover sheet.
This means that while including the address in the assignment document itself is optional, providing it on the cover sheet is mandatory for proper recordation of the assignment.
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According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it:
- Prepare a written document signed by the assignee.
- State the name and address of a person residing within the United States who may be served process or notice of proceedings affecting the patent or rights under it.
- Submit this document to the USPTO as a separate paper from any assignment document.
- Clearly label the document as “Designation of Domestic Representative.”
- Ensure the document is signed in accordance with 37 CFR 1.33(b).
As stated in MPEP 302.04: “The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.”
Patent ownership can be transferred through an assignment. According to 35 U.S.C. 261, assignments of patent applications, patents, or any interest therein must be in writing. The MPEP defines an assignment as:
‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….’
An assignment transfers the entire ownership interest or a percentage of that interest in the patent or application. It must include the entirety of the bundle of rights associated with the ownership interest.
The USPTO has an automated system for processing assignment documents submitted by fax. According to MPEP 302.09:
- Documents are submitted directly into the automated Patent and Trademark Assignment System.
- A recordation notice is automatically returned to the sending fax number.
- If the system can’t complete the transmission, the notice is printed and mailed via U.S. Postal Service first class mail.
- The Patent and Trademark Assignment System assigns reel and frame numbers and adds recordation stampings to the processed electronic images.
The MPEP states: The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.
This automated process ensures efficient handling and proper documentation of assignment records.
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When errors are made in the execution of an original assignment document, the USPTO allows for the submission of a ‘substitute statement’ to correct these errors. According to MPEP 323:
“Where errors were made in the execution of the original assignment document … a ‘substitute statement’ may be submitted for recordation.”
The process involves:
- Preparing a new, correctly executed assignment document.
- Submitting this as a ‘substitute statement’ along with a copy of the originally recorded papers.
- Clearly identifying the errors in the original document.
- Paying the required recording fee.
The USPTO will then record the substitute statement, which effectively replaces the erroneous original assignment document.
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The USPTO recognizes and accepts electronic signatures on assignment documents submitted electronically. According to MPEP 302.10:
“The USPTO will accept electronic signatures on documents submitted electronically.”
This means that assignors and assignees can use various forms of electronic signatures, such as:
- Typed names
- Digital signatures
- Scanned images of handwritten signatures
It’s important to ensure that the electronic signature complies with the USPTO’s requirements and is legally binding. The specific requirements for electronic signatures are outlined in MPEP 502.02.
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How does the USPTO handle assignment documents after recording?
After recording an assignment document, the USPTO follows a specific process. According to MPEP 302.01: ‘Assignment documents submitted for recording are scanned and stored in a public database.’
The handling process includes:
- Scanning the submitted copy of the assignment document
- Storing the scanned document in a publicly accessible database
- Retaining the physical copy submitted (not returning it to the sender)
- Making the recorded information available for public inspection
This process ensures that assignment records are preserved and accessible while maintaining the integrity of the original submissions.
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The USPTO follows a specific process to determine if an error on a cover sheet is typographical in nature. According to MPEP 323.01(a):
“The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.”
This process involves:
- Reviewing the corrected cover sheet submitted by the requesting party
- Comparing it to the original cover sheet
- Examining the originally recorded assignment document or other title-affecting document
- Assessing whether the error is purely typographical or if it substantively affects the title or assignment
If the error is determined to be typographical and does not affect the title, the Assignment Services Division will record the corrected cover sheet and update the Assignment Historical Database. However, if the error affects the title, different procedures apply, including potential changes to the recordation date.
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The effect on the date of recordation depends on whether the error affects title to the application or patent. According to MPEP 323.01(a):
- Errors that do not affect title: If the typographical error does not affect title, the Assignment Services Division will correct the Assignment Historical Database and allow the recording party to keep the original date of recordation.
- Errors that affect title: If the error affects title to the application or patent, the recording party will not keep the original date of recordation. The MPEP states:
Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.
It’s crucial to ensure accuracy in cover sheets to maintain the earliest possible recordation date, especially for errors that could affect title to the application or patent.
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For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
Assigning ownership rights can significantly affect micro entity status. The MPEP provides the following guidance:
- An applicant is disqualified from micro entity status if they transfer, or are obligated to transfer, any ownership interest to an entity that exceeds the gross income limit.
- If an inventor assigns all rights to an employer that exceeds the gross income limit, micro entity status cannot be claimed.
- Even if rights are later transferred back to the inventor or to another person who doesn’t exceed the gross income limit, micro entity status cannot be regained.
The MPEP states: “Once an assignee or licensee exceeding the gross income limit receives the ownership interest, the 37 CFR 1.29(a)(4) certification requirement can no longer be met – even if the assignee or licensee retransfers rights and no longer holds any ownership interest in the application.“
It’s important to note that this applies to both actual transfers and obligations to transfer ownership rights.
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To designate a domestic representative, a foreign assignee must follow these steps:
- Prepare a written document signed by the assignee
- Clearly label the document as ‘Designation of Domestic Representative’
- Submit the designation as a separate paper from any assignment document
- Ensure the document is signed in accordance with 37 CFR 1.33(b)
As stated in MPEP 302.04, The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document.
This ensures proper processing and entry into the record of the appropriate application or patent file.
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According to 37 CFR 3.21, a patent assignment must identify the patent by patent number. For patent applications:
- National applications: Identify by application number (series code and serial number)
- International applications designating the US: Identify by international application number
- International design applications designating the US: Identify by international registration number or US application number
If the assignment is executed before filing but after the application is executed, it must identify the application by inventor name(s) and invention title. For provisional applications not yet filed, identify by inventor name(s) and invention title.
The MPEP suggests including language like: I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number , filed ) the filing date and application number of said application when known.
For more information on application identification, visit: application identification.
For more information on patent assignment, visit: patent assignment.
For more information on patent identification, visit: patent identification.
To properly identify a patent in an assignment, you must use the patent number. According to 37 CFR 3.21, “An assignment relating to a patent must identify the patent by the patent number.” This ensures that there is no ambiguity about which patent is being assigned.
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When submitting a corrected cover sheet to address an erroneous assignment or name change, follow these instructions from MPEP 323.01(c):
- Check the box titled ‘Other’ in the ‘Nature of Conveyance’ section.
- Indicate that the submission is to correct an error in a previously recorded document that erroneously affects the identified application(s) or patent(s).
- Write the name of the correct owner in both the ‘conveying party’ and ‘receiving party’ boxes.
The MPEP explains the reasoning behind this: The party should also write the name of the correct owner in both the box requesting the name of the conveying party and the box requesting the name and address of the receiving party; this is to make it clear that ownership never changed and that any assignment or name change recorded against the application(s) or patent(s) was erroneous.
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To correct a typographical error on a recorded cover sheet for a patent assignment, you need to submit the following to the Assignment Services Division:
- A copy of the originally recorded assignment document (or other document affecting title)
- A corrected cover sheet
- The required fee for each application or patent to be corrected
Additionally, it’s recommended to submit a copy of the original cover sheet to facilitate comparison. When filing the corrected cover sheet, you should:
- Check the box titled “Other” in the “Nature of Conveyance” area
- Indicate that the submission is to correct an error in a previously recorded cover sheet
- Identify the reel and frame numbers (if known)
- Specify the nature of the correction
As stated in MPEP 323.01(a): “The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.”
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Patents and patent applications can be assigned through a written instrument. The MPEP 301 states:
‘Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing.’
This means that patent rights can be transferred from one party to another through a written document. The assignment must be recorded with the USPTO to be effective against subsequent purchasers or mortgagees.
For more information on patent assignment, visit: patent assignment.
The USPTO allows electronic submission of assignment documents through the Electronic Patent Assignment System (EPAS). According to the MPEP:
- Visit http://epas.uspto.gov for the EPAS system
- Include an identified application or patent number
- Complete one online cover sheet for a single transaction
For electronic submissions, the signature must comply with 37 CFR 3.31(a)(7) or 37 CFR 1.4(d)(2). This typically involves an S-signature between forward slashes (e.g., /John Smith/).
The MPEP notes: The fee set in 37 CFR 1.21(h)(1) for recording an electronically submitted document is currently $0. Customers should check the current fee schedule on the Office website before submitting documents for recordation.
The recordation date for electronic submissions is the date the complete transmission is received by the USPTO.
For more information on electronic submission, visit: electronic submission.
For more information on EPAS, visit: EPAS.
For more information on patent assignment, visit: patent assignment.
There are three main ways to submit a patent assignment document to the USPTO:
- Mail: Documents can be mailed to the address specified in 37 CFR 3.27: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
- Fax: Documents can be submitted via facsimile, as outlined in MPEP 302.09. However, certain documents cannot be faxed, such as assignments submitted with new applications.
- Electronic Submission: Documents can be submitted electronically through the Electronic Patent Assignment System (EPAS) as described in MPEP 302.10.
Each method has specific requirements and limitations, so it’s important to review the relevant MPEP sections or consult the USPTO website for detailed instructions.
Patent assignments can be recorded with the USPTO in two ways:
- In the assignment records: This is done as provided in 37 CFR Part 3. Recording provides public notice of the assignment but does not determine its validity.
- In the file of a patent application or patent: This may be necessary for the assignee to take action in the application or patent proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
It’s important to note that recording an assignment in the USPTO’s assignment records does not automatically allow the assignee to take action in a patent proceeding. Additional steps may be required as outlined in MPEP § 325 for applications filed on or after September 16, 2012, or MPEP § 324 for earlier applications.
For more information on patent assignment, visit: patent assignment.
There are two ways to make a patent assignment of record with the USPTO:
- Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
- Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
To correct an improperly recorded assignment against your patent or application, follow these steps:
- File a petition under 37 CFR 1.182 to expunge the improper assignment
- Include evidence that the recorded assignment is improper
- Pay the required petition fee
As stated in MPEP 323.01(c): ‘The owner of the patent or application may petition to have such an assignment expunged from the assignment records of the Office.’
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To correct an error in a recorded cover sheet, you must follow the procedure outlined in 37 CFR 3.34. Specifically:
- The error must be apparent when comparing the cover sheet with the recorded document.
- You must file a corrected cover sheet for recordation.
- Include a copy of the original document submitted for recording.
- Pay the required recording fee as set forth in 37 CFR 3.41.
As stated in the MPEP, Any alleged error in a recorded cover sheet will only be corrected if the error is apparent from a comparison with the recorded assignment document.
It’s important to carefully review the notice of recordation issued by the Office after recording.
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When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:
- Show the invention has been assigned to the applicant
- Prove the inventor agreed in writing to assign the invention to the applicant
- Otherwise demonstrate sufficient proprietary interest
To prove assignment, submit:
- A copy of the assignment document
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.
The MPEP states: If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.
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A patent can be issued to an assignee in two main ways:
- Before paying the issue fee: The assignee can submit a request for issuance in their name along with the issue fee payment. The assignment must be previously recorded or stated to have been filed for recordation.
- After paying the issue fee: A request can be submitted after the issue fee payment, but it requires additional steps and fees.
According to MPEP 307, “Normally, for a patent to issue to an assignee (other than an assignee who is the applicant in an application filed on or after September 16, 2012), a request for issuance of the application in the name of the assignee must be filed in the United States Patent and Trademark Office (Office) at a date not later than the day on which the issue fee is paid.”
For more information on issue fee, visit: issue fee.
For more information on patent assignment, visit: patent assignment.
For more information on patent issuance, visit: patent issuance.
No, the act of recording a document with the USPTO does not determine its legal effect on patent ownership. The MPEP clearly states:
The recordation of a document is not a determination of the effect of the document on the chain of title.
This means that while the USPTO will record various documents related to patent interests, it does not make any judgments about how these documents affect ownership at the time of recordation. Instead, as the MPEP explains:
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.
For more information on how the USPTO determines ownership when necessary, refer to MPEP § 324 and § 325.
For more information on chain of title, visit: chain of title.
For more information on patent assignment, visit: patent assignment.
Yes, the USPTO can refuse to expunge an improperly recorded assignment. According to MPEP 323.01(c):
‘The Office, however, has consistently taken the position that such a petition will not be granted unless it is apparent that the recording is a ‘clerical error on the part of the Office.”
This means that the USPTO is generally reluctant to expunge recorded assignments unless there’s clear evidence of an error on their part. If the improper recording was due to actions of the parties involved rather than the USPTO, the petition may be denied.
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Yes, you can submit assignments and other documents affecting title to the USPTO via fax. The MPEP states: Assignments and other documents affecting title may be submitted to the Office via facsimile (fax).
This process allows for direct submission into the automated Patent and Trademark Assignment System.
However, there are specific requirements and limitations:
- Documents must include an identified application or patent number, one cover sheet for a single transaction, and payment of the recordation fee.
- Certain documents cannot be submitted via fax, such as assignments submitted with new patent applications or documents with multiple cover sheets.
For the most up-to-date fax number, refer to the USPTO website or MPEP § 1730.
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Can I submit an original assignment document for recording at the USPTO?
No, you should not submit the original assignment document for recording. The MPEP 302.01 clearly states: ‘The USPTO will not return documents filed for recording.’ Therefore, it’s crucial to submit a copy of the original document to ensure you retain the original for your records.
Always keep the original assignment document in a safe place and submit a legible copy for recording purposes. This practice protects your original document and complies with USPTO requirements.
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Yes, you can still correct an erroneous assignment even if you cannot contact or get cooperation from the party who filed it. The MPEP 323.01(c) provides guidance for this situation:
The owner should contact the party who recorded the papers with the erroneous information and request that such party record corrective papers. However, if the party cannot be located or is unwilling to file corrective papers, then the true owner must record the necessary papers with the Assignment Services Division to correct the error.
In such cases, you, as the true owner, must submit the required documentation to the USPTO’s Assignment Services Division, including the completed cover sheet, affidavit or declaration, and required fees. This ensures that you can correct the record even without the cooperation of the party who made the error.
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Can foreign language assignment documents be recorded at the USPTO?
Yes, foreign language assignment documents can be recorded at the USPTO, but they must be accompanied by an English translation. The MPEP 302 states:
“Unless an assignment is in a language other than English, the Office may rely on the assignment document (or a copy thereof) as filed.”
If the assignment is in a foreign language, you must provide:
- The original foreign language document
- An English language translation
- A statement verifying that the translation is accurate
This ensures that the USPTO can properly review and record the assignment, maintaining accurate ownership records for patents and patent applications.
For more information on patent assignment, visit: patent assignment.
For more information on translation requirements, visit: translation requirements.
For more information on USPTO, visit: USPTO.
Yes, for certain patent applications, an assignment can contain statements required in an oath or declaration. The MPEP 301 states:
‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration.’
This provision allows for greater flexibility in meeting the oath or declaration requirements, particularly for assigned inventions. However, it’s important to ensure that the assignment contains all the necessary statements and is properly recorded with the USPTO.
For more information on oath or declaration, visit: oath or declaration.
For more information on patent assignment, visit: patent assignment.
Can an assignment be recorded electronically with the USPTO?
Yes, assignments can be recorded electronically with the USPTO. The MPEP 302 states:
“The USPTO provides for the electronic filing of patent assignment documents through the Electronic Patent Assignment System (EPAS).”
Electronic filing offers several advantages:
- Faster processing times
- Immediate confirmation of receipt
- Reduced risk of errors in data entry
- 24/7 accessibility
To use EPAS, users must have a USPTO.gov account and follow the specific guidelines for electronic submission. For detailed instructions, visit the Electronic Patent Assignment System (EPAS) on the USPTO website.
For more information on electronic filing, visit: electronic filing.
For more information on EPAS, visit: EPAS.
For more information on patent assignment, visit: patent assignment.
For more information on USPTO, visit: USPTO.
Yes, a patent application can be assigned before it is filed. This is known as an assignment of future rights. MPEP 301 states:
“An assignment of an application can be made before the application is filed. See 37 CFR 3.21.”
However, it’s important to note that the assignment document should clearly identify the invention and the application to be filed. Once the application is filed, it’s advisable to record the assignment with the USPTO to ensure proper documentation of ownership.
For more information on patent assignment, visit: patent assignment.
For more information on USPTO, visit: USPTO.
Yes, a domestic representative can be changed after the initial designation. While MPEP 302.04 doesn’t explicitly address changing a domestic representative, it states that the designation is made by a written document signed by such assignee.
This implies that a new written document can be submitted to change the designation. To change a domestic representative, follow the same process as the initial designation:
- Prepare a new written document clearly labeled ‘Change of Domestic Representative’
- Include the new representative’s name and address
- Submit the document separately from other filings
- Ensure it’s signed in accordance with 37 CFR 1.33(b)
It’s advisable to explicitly state that this new designation supersedes any previous designations to avoid confusion.
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Based on the information provided in MPEP 302.02, there are no exceptions to the USPTO’s English translation requirement for assignments. The MPEP states unequivocally:
The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.
This requirement applies to all non-English assignment documents without exception. The USPTO’s strict adherence to this policy ensures uniformity in the recording process and accessibility of patent ownership information.
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Are patent assignment records publicly accessible after recording at the USPTO?
Yes, patent assignment records become publicly accessible after they are recorded at the USPTO. The MPEP 302.01 states: ‘Assignment documents submitted for recording are scanned and stored in a public database.’
This means:
- Anyone can access recorded assignment information
- The public database allows searching for patent ownership details
- Transparency in patent ownership is maintained
Public accessibility of these records is crucial for maintaining transparency in patent ownership and facilitating due diligence in patent transactions. Interested parties can search and retrieve assignment information through the USPTO’s Assignment Search database.
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