Patent Law FAQ

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, 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 difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, 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.

However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, 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 difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, 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.

However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

The recording date for a document at the USPTO Assignment Division is determined as follows:

• It is the date when a document meeting all requirements is filed with the Office.
• Documents not complying with identification requirements (37 CFR 3.21) will not be recorded.
• Documents with other deficiencies (e.g., missing cover sheet or fee) will be returned for correction.
• If corrected and resubmitted within the specified time, the original receipt date may be considered the recording date.

According to 37 CFR 3.51: “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.”

A cover sheet is a crucial component in patent assignment recordation. It provides essential information about the document being recorded and the parties involved. According to MPEP 315, a completed cover sheet is required when submitting a document for recordation, even if the document has been previously recorded.

The cover sheet requirements are specified in 37 CFR 3.31 and further explained in MPEP § 302.07. It typically includes details such as:

• Identification of the patents or applications the document relates to
• Names of the parties involved in the transaction
• Nature of the interest being conveyed
• Mailing address for correspondence

The cover sheet helps the USPTO efficiently process and index the recorded documents in the assignment database.

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

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

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

The fee for recording a patent assignment with the USPTO depends on the method of submission:

• For electronic submissions through the Electronic Patent Assignment System (EPAS), the fee is currently $0, as stated in 37 CFR 1.21(h)(1).
• For non-electronic submissions (e.g., mail or fax), the fee is set forth in 37 CFR 1.21(h)(2).

It’s important to note that fees may change over time. As stated in MPEP 302.06: “Customers should check the current fee schedule on the Office website before submitting documents for recordation.”

Additionally, no fee is required for recording certain government interest documents, as specified in 37 CFR 3.41(b).

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, 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 difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

Patent assignment and licensing are two different ways of transferring patent rights. The MPEP defines assignment as:

‘Assignment of patent rights is defined as ‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….”

In contrast, licensing is described as:

‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that assignment transfers ownership, while licensing grants permission to use the patent without transferring ownership.

The MPEP distinguishes between assignments and licenses in patent law:

1. Assignment: ‘An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application.’
2. License: ‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that an assignment transfers ownership, while a license grants permission to use the patent without transferring ownership. The MPEP further clarifies: ‘A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.’

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

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

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

Documents and cover sheets submitted for recording at the USPTO Assignment Division are examined for formal requirements. The process is as follows:

• Documents that meet the requirements are recorded.
• Documents that do not meet the requirements are returned to the sender with an explanation.
• If the sender disagrees with the rejection, they can petition the Director under 37 CFR 1.181.
• After successful recording, a notification is sent to the address on the cover sheet, showing the reel and frame number.

As stated in MPEP 317: “All documents and cover sheets submitted for recording are examined for formal requirements in the Assignment Division in order to separate documents which are recordable from those which are not recordable.”

Recording a patent assignment at the USPTO involves paying an appropriate recording fee. MPEP 315 references the fee requirements:

The appropriate recording fee (see 37 CFR 1.21(h) and 3.41).

The specific fee amount can be found in the USPTO’s current fee schedule. It’s important to note that:

• Fees may vary depending on whether the submission is electronic or paper-based
• There may be additional fees for expedited processing
• Fees are subject to change, so always check the current fee schedule before submitting

For the most up-to-date information on fees, visit the USPTO’s official fee schedule page.

The fees for recording a patent assignment depend on the submission method:

• Electronic submission via EPAS (Electronic Patent Assignment System): $0
• Paper or facsimile submission: See current fee schedule

As stated in MPEP 302.06: “If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2).”

It’s important to note that fees are subject to change. Always check the current USPTO fee schedule before submitting documents for recordation.

For more information on patent assignment fees, visit: patent assignment fees.

For more information on USPTO fees, visit: USPTO fees.

To correct an error in a recorded assignment document, you need to submit a ‘corrective document’ to the Assignment Division. This document should include:

1. A copy of the original assignment document with corrections made, initialed, and dated by the party conveying the interest.
2. A new Recordation Form Cover Sheet (form PTO-1595) identifying the submission as a ‘corrective document’ and indicating the reel and frame number of the incorrectly recorded assignment.

The corrective document will be given a new reel and frame number and recording date. A recording fee is required for each patent application and patent affected.

As stated in the MPEP: “The recording fee set forth in 37 CFR 1.21(h) is required for each patent application and patent against which the corrective document is being recorded.” (MPEP § 323)

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, 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.

However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

No, recorded assignment documents will not be expunged even if they are subsequently found to be invalid. The USPTO’s policy is to maintain a complete history of claimed interests in property.

As stated in the MPEP: “Office policy regarding recordation of assignment documents is directed toward maintaining a complete history of claimed interests in property and, therefore, recorded assignment documents will not be expunged even if subsequently found to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm’r Pat. 1992).” (MPEP § 323)

Once a document is recorded with the Assignment Services Division, it will not be removed from the record relating to that application or patent.

Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply:

1. The request must state that the assignment was submitted for recordation before patent issuance.
2. It must include a request for a certificate of correction under 37 CFR 1.323.
3. The appropriate fees must be paid, including the certificate of correction fee and a processing fee.

37 CFR 3.81(b) states: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.

Patent assignment and licensing are two different ways of transferring patent rights. The MPEP defines assignment as:

‘Assignment of patent rights is defined as ‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….”

In contrast, licensing is described as:

‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that assignment transfers ownership, while licensing grants permission to use the patent without transferring ownership.

The MPEP distinguishes between assignments and licenses in patent law:

1. Assignment: ‘An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application.’
2. License: ‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that an assignment transfers ownership, while a license grants permission to use the patent without transferring ownership. The MPEP further clarifies: ‘A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.’

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

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

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

The fee for recording a patent assignment with the USPTO depends on the method of submission:

• For electronic submissions through the Electronic Patent Assignment System (EPAS), the fee is currently $0, as stated in 37 CFR 1.21(h)(1).
• For non-electronic submissions (e.g., mail or fax), the fee is set forth in 37 CFR 1.21(h)(2).

It’s important to note that fees may change over time. As stated in MPEP 302.06: “Customers should check the current fee schedule on the Office website before submitting documents for recordation.”

Additionally, no fee is required for recording certain government interest documents, as specified in 37 CFR 3.41(b).

The fees for recording a patent assignment depend on the submission method:

• Electronic submission via EPAS (Electronic Patent Assignment System): $0
• Paper or facsimile submission: See current fee schedule

As stated in MPEP 302.06: “If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2).”

It’s important to note that fees are subject to change. Always check the current USPTO fee schedule before submitting documents for recordation.

For more information on patent assignment fees, visit: patent assignment fees.

For more information on USPTO fees, visit: USPTO fees.

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

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

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

Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply:

1. The request must state that the assignment was submitted for recordation before patent issuance.
2. It must include a request for a certificate of correction under 37 CFR 1.323.
3. The appropriate fees must be paid, including the certificate of correction fee and a processing fee.

37 CFR 3.81(b) states: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.

A cover sheet is a crucial component in patent assignment recordation. It provides essential information about the document being recorded and the parties involved. According to MPEP 315, a completed cover sheet is required when submitting a document for recordation, even if the document has been previously recorded.

The cover sheet requirements are specified in 37 CFR 3.31 and further explained in MPEP § 302.07. It typically includes details such as:

• Identification of the patents or applications the document relates to
• Names of the parties involved in the transaction
• Nature of the interest being conveyed
• Mailing address for correspondence

The cover sheet helps the USPTO efficiently process and index the recorded documents in the assignment database.

Recording a patent assignment at the USPTO involves paying an appropriate recording fee. MPEP 315 references the fee requirements:

The appropriate recording fee (see 37 CFR 1.21(h) and 3.41).

The specific fee amount can be found in the USPTO’s current fee schedule. It’s important to note that:

• Fees may vary depending on whether the submission is electronic or paper-based
• There may be additional fees for expedited processing
• Fees are subject to change, so always check the current fee schedule before submitting

For the most up-to-date information on fees, visit the USPTO’s official fee schedule page.

The recording date for a document at the USPTO Assignment Division is determined as follows:

• It is the date when a document meeting all requirements is filed with the Office.
• Documents not complying with identification requirements (37 CFR 3.21) will not be recorded.
• Documents with other deficiencies (e.g., missing cover sheet or fee) will be returned for correction.
• If corrected and resubmitted within the specified time, the original receipt date may be considered the recording date.

According to 37 CFR 3.51: “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.”

Documents and cover sheets submitted for recording at the USPTO Assignment Division are examined for formal requirements. The process is as follows:

• Documents that meet the requirements are recorded.
• Documents that do not meet the requirements are returned to the sender with an explanation.
• If the sender disagrees with the rejection, they can petition the Director under 37 CFR 1.181.
• After successful recording, a notification is sent to the address on the cover sheet, showing the reel and frame number.

As stated in MPEP 317: “All documents and cover sheets submitted for recording are examined for formal requirements in the Assignment Division in order to separate documents which are recordable from those which are not recordable.”

To correct an error in a recorded assignment document, you need to submit a ‘corrective document’ to the Assignment Division. This document should include:

1. A copy of the original assignment document with corrections made, initialed, and dated by the party conveying the interest.
2. A new Recordation Form Cover Sheet (form PTO-1595) identifying the submission as a ‘corrective document’ and indicating the reel and frame number of the incorrectly recorded assignment.

The corrective document will be given a new reel and frame number and recording date. A recording fee is required for each patent application and patent affected.

As stated in the MPEP: “The recording fee set forth in 37 CFR 1.21(h) is required for each patent application and patent against which the corrective document is being recorded.” (MPEP § 323)

No, recorded assignment documents will not be expunged even if they are subsequently found to be invalid. The USPTO’s policy is to maintain a complete history of claimed interests in property.

As stated in the MPEP: “Office policy regarding recordation of assignment documents is directed toward maintaining a complete history of claimed interests in property and, therefore, recorded assignment documents will not be expunged even if subsequently found to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm’r Pat. 1992).” (MPEP § 323)

Once a document is recorded with the Assignment Services Division, it will not be removed from the record relating to that application or patent.

The recording date for a document at the USPTO Assignment Division is determined as follows:

• It is the date when a document meeting all requirements is filed with the Office.
• Documents not complying with identification requirements (37 CFR 3.21) will not be recorded.
• Documents with other deficiencies (e.g., missing cover sheet or fee) will be returned for correction.
• If corrected and resubmitted within the specified time, the original receipt date may be considered the recording date.

According to 37 CFR 3.51: “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.”

A cover sheet is a crucial component in patent assignment recordation. It provides essential information about the document being recorded and the parties involved. According to MPEP 315, a completed cover sheet is required when submitting a document for recordation, even if the document has been previously recorded.

The cover sheet requirements are specified in 37 CFR 3.31 and further explained in MPEP § 302.07. It typically includes details such as:

• Identification of the patents or applications the document relates to
• Names of the parties involved in the transaction
• Nature of the interest being conveyed
• Mailing address for correspondence

The cover sheet helps the USPTO efficiently process and index the recorded documents in the assignment database.

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

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

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

The fee for recording a patent assignment with the USPTO depends on the method of submission:

• For electronic submissions through the Electronic Patent Assignment System (EPAS), the fee is currently $0, as stated in 37 CFR 1.21(h)(1).
• For non-electronic submissions (e.g., mail or fax), the fee is set forth in 37 CFR 1.21(h)(2).

It’s important to note that fees may change over time. As stated in MPEP 302.06: “Customers should check the current fee schedule on the Office website before submitting documents for recordation.”

Additionally, no fee is required for recording certain government interest documents, as specified in 37 CFR 3.41(b).

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, 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 difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

Patent assignment and licensing are two different ways of transferring patent rights. The MPEP defines assignment as:

‘Assignment of patent rights is defined as ‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….”

In contrast, licensing is described as:

‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that assignment transfers ownership, while licensing grants permission to use the patent without transferring ownership.

The MPEP distinguishes between assignments and licenses in patent law:

1. Assignment: ‘An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application.’
2. License: ‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that an assignment transfers ownership, while a license grants permission to use the patent without transferring ownership. The MPEP further clarifies: ‘A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.’

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

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

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

Documents and cover sheets submitted for recording at the USPTO Assignment Division are examined for formal requirements. The process is as follows:

• Documents that meet the requirements are recorded.
• Documents that do not meet the requirements are returned to the sender with an explanation.
• If the sender disagrees with the rejection, they can petition the Director under 37 CFR 1.181.
• After successful recording, a notification is sent to the address on the cover sheet, showing the reel and frame number.

As stated in MPEP 317: “All documents and cover sheets submitted for recording are examined for formal requirements in the Assignment Division in order to separate documents which are recordable from those which are not recordable.”

Recording a patent assignment at the USPTO involves paying an appropriate recording fee. MPEP 315 references the fee requirements:

The appropriate recording fee (see 37 CFR 1.21(h) and 3.41).

The specific fee amount can be found in the USPTO’s current fee schedule. It’s important to note that:

• Fees may vary depending on whether the submission is electronic or paper-based
• There may be additional fees for expedited processing
• Fees are subject to change, so always check the current fee schedule before submitting

For the most up-to-date information on fees, visit the USPTO’s official fee schedule page.

The fees for recording a patent assignment depend on the submission method:

• Electronic submission via EPAS (Electronic Patent Assignment System): $0
• Paper or facsimile submission: See current fee schedule

As stated in MPEP 302.06: “If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2).”

It’s important to note that fees are subject to change. Always check the current USPTO fee schedule before submitting documents for recordation.

For more information on patent assignment fees, visit: patent assignment fees.

For more information on USPTO fees, visit: USPTO fees.

To correct an error in a recorded assignment document, you need to submit a ‘corrective document’ to the Assignment Division. This document should include:

1. A copy of the original assignment document with corrections made, initialed, and dated by the party conveying the interest.
2. A new Recordation Form Cover Sheet (form PTO-1595) identifying the submission as a ‘corrective document’ and indicating the reel and frame number of the incorrectly recorded assignment.

The corrective document will be given a new reel and frame number and recording date. A recording fee is required for each patent application and patent affected.

As stated in the MPEP: “The recording fee set forth in 37 CFR 1.21(h) is required for each patent application and patent against which the corrective document is being recorded.” (MPEP § 323)

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, 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.

However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

No, recorded assignment documents will not be expunged even if they are subsequently found to be invalid. The USPTO’s policy is to maintain a complete history of claimed interests in property.

As stated in the MPEP: “Office policy regarding recordation of assignment documents is directed toward maintaining a complete history of claimed interests in property and, therefore, recorded assignment documents will not be expunged even if subsequently found to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm’r Pat. 1992).” (MPEP § 323)

Once a document is recorded with the Assignment Services Division, it will not be removed from the record relating to that application or patent.

Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply:

1. The request must state that the assignment was submitted for recordation before patent issuance.
2. It must include a request for a certificate of correction under 37 CFR 1.323.
3. The appropriate fees must be paid, including the certificate of correction fee and a processing fee.

37 CFR 3.81(b) states: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.

The recording date for a document at the USPTO Assignment Division is determined as follows:

• It is the date when a document meeting all requirements is filed with the Office.
• Documents not complying with identification requirements (37 CFR 3.21) will not be recorded.
• Documents with other deficiencies (e.g., missing cover sheet or fee) will be returned for correction.
• If corrected and resubmitted within the specified time, the original receipt date may be considered the recording date.

According to 37 CFR 3.51: “The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office.”

A cover sheet is a crucial component in patent assignment recordation. It provides essential information about the document being recorded and the parties involved. According to MPEP 315, a completed cover sheet is required when submitting a document for recordation, even if the document has been previously recorded.

The cover sheet requirements are specified in 37 CFR 3.31 and further explained in MPEP § 302.07. It typically includes details such as:

• Identification of the patents or applications the document relates to
• Names of the parties involved in the transaction
• Nature of the interest being conveyed
• Mailing address for correspondence

The cover sheet helps the USPTO efficiently process and index the recorded documents in the assignment database.

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

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

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

The fee for recording a patent assignment with the USPTO depends on the method of submission:

• For electronic submissions through the Electronic Patent Assignment System (EPAS), the fee is currently $0, as stated in 37 CFR 1.21(h)(1).
• For non-electronic submissions (e.g., mail or fax), the fee is set forth in 37 CFR 1.21(h)(2).

It’s important to note that fees may change over time. As stated in MPEP 302.06: “Customers should check the current fee schedule on the Office website before submitting documents for recordation.”

Additionally, no fee is required for recording certain government interest documents, as specified in 37 CFR 3.41(b).

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, 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 difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

Patent assignment and licensing are two different ways of transferring patent rights. The MPEP defines assignment as:

‘Assignment of patent rights is defined as ‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….”

In contrast, licensing is described as:

‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that assignment transfers ownership, while licensing grants permission to use the patent without transferring ownership.

The MPEP distinguishes between assignments and licenses in patent law:

1. Assignment: ‘An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application.’
2. License: ‘As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use.’

The key difference is that an assignment transfers ownership, while a license grants permission to use the patent without transferring ownership. The MPEP further clarifies: ‘A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.’

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

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

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

Documents and cover sheets submitted for recording at the USPTO Assignment Division are examined for formal requirements. The process is as follows:

• Documents that meet the requirements are recorded.
• Documents that do not meet the requirements are returned to the sender with an explanation.
• If the sender disagrees with the rejection, they can petition the Director under 37 CFR 1.181.
• After successful recording, a notification is sent to the address on the cover sheet, showing the reel and frame number.

As stated in MPEP 317: “All documents and cover sheets submitted for recording are examined for formal requirements in the Assignment Division in order to separate documents which are recordable from those which are not recordable.”

Recording a patent assignment at the USPTO involves paying an appropriate recording fee. MPEP 315 references the fee requirements:

The appropriate recording fee (see 37 CFR 1.21(h) and 3.41).

The specific fee amount can be found in the USPTO’s current fee schedule. It’s important to note that:

• Fees may vary depending on whether the submission is electronic or paper-based
• There may be additional fees for expedited processing
• Fees are subject to change, so always check the current fee schedule before submitting

For the most up-to-date information on fees, visit the USPTO’s official fee schedule page.

The fees for recording a patent assignment depend on the submission method:

• Electronic submission via EPAS (Electronic Patent Assignment System): $0
• Paper or facsimile submission: See current fee schedule

As stated in MPEP 302.06: “If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at $0. If the request to record a document is not submitted electronically (i.e., is submitted on paper or via facsimile), the applicable fee is set forth in 37 CFR 1.21(h)(2).”

It’s important to note that fees are subject to change. Always check the current USPTO fee schedule before submitting documents for recordation.

For more information on patent assignment fees, visit: patent assignment fees.

For more information on USPTO fees, visit: USPTO fees.

To correct an error in a recorded assignment document, you need to submit a ‘corrective document’ to the Assignment Division. This document should include:

1. A copy of the original assignment document with corrections made, initialed, and dated by the party conveying the interest.
2. A new Recordation Form Cover Sheet (form PTO-1595) identifying the submission as a ‘corrective document’ and indicating the reel and frame number of the incorrectly recorded assignment.

The corrective document will be given a new reel and frame number and recording date. A recording fee is required for each patent application and patent affected.

As stated in the MPEP: “The recording fee set forth in 37 CFR 1.21(h) is required for each patent application and patent against which the corrective document is being recorded.” (MPEP § 323)

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, 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.

However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

No, recorded assignment documents will not be expunged even if they are subsequently found to be invalid. The USPTO’s policy is to maintain a complete history of claimed interests in property.

As stated in the MPEP: “Office policy regarding recordation of assignment documents is directed toward maintaining a complete history of claimed interests in property and, therefore, recorded assignment documents will not be expunged even if subsequently found to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm’r Pat. 1992).” (MPEP § 323)

Once a document is recorded with the Assignment Services Division, it will not be removed from the record relating to that application or patent.

Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply:

1. The request must state that the assignment was submitted for recordation before patent issuance.
2. It must include a request for a certificate of correction under 37 CFR 1.323.
3. The appropriate fees must be paid, including the certificate of correction fee and a processing fee.

37 CFR 3.81(b) states: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17(i) of this chapter.