Patent Law FAQ

The USPTO has a specific process to ensure that all applications are cleared from secrecy review before they are issued as patents. According to the MPEP:

All applications are required to be cleared from secrecy review before forwarding to issue. If the L&R code on the general information display does not equal 1, then in an IFW application, a message should be sent to LREVINCOMINGDOCS.

The USPTO uses a system called the Patent Data Portal (PDP) to track the status of applications:

The Patent Data Portal (PDP) System’s general information display discloses the current Licensing and Review status. The indicator “L&R code” displays the current status of the application while the indicators “Third Level Review” and “Secrecy Order” display the historical status of the application.

Specific codes are used to indicate the status of an application:

• An L&R code of “3” or a “Third Level Review” of “Yes” indicates that the application is/has been considered for security screening.
• A Secrecy Code of “4” indicates that the application is currently under Secrecy Order.

If an application is under Secrecy Order, special handling is required:

In this case, the application has been converted to a paper application file and there should be no images maintained in the Image File Wrapper system (IFW).

This process ensures that no application is issued as a patent until it has been fully cleared from secrecy review, protecting sensitive information and national security interests.

For more information on patent issuance, visit: patent issuance.

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

Allowed secrecy order applications require special handling to maintain security while progressing through the patent process. The MPEP 130 provides guidance on this:

When a secrecy order case is allowed, the Office of Patent Application Processing (OPAP) is notified. The notice of allowance and issue fee letters are drafted and reviewed in the Technology Center and may be hand carried to OPAP for mailing.

Key points about handling allowed secrecy order applications:

• The Office of Patent Application Processing (OPAP) is notified of the allowance.
• Notice of allowance and issue fee letters are carefully drafted and reviewed.
• These documents may be hand-carried to OPAP for mailing to ensure security.
• The application remains under secrecy order even after allowance.
• Special care is taken to prevent unauthorized disclosure throughout the process.

This careful handling ensures that the application’s classified status is maintained even as it progresses towards issuance.

For more information on classified information, visit: classified information.

For more information on patent issuance, visit: patent issuance.

No, patent applications under Secrecy Orders are not issued and cannot be involved in interferences or derivation proceedings. The MPEP states: Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted where one or more of the conflicting cases is classified or under Secrecy Order. This is further supported by 37 CFR 5.3 and MPEP § 2306.

For more information on patent issuance, visit: patent issuance.

The status of an application as ‘allowed’ has a specific timeframe. According to the MPEP:

“Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue ( 37 CFR 1.313 ), or becomes abandoned for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 ).”

In other words, the ‘allowed’ status begins when the notice of allowance is sent and typically ends when the patent is issued. However, this status can be terminated if the application is withdrawn from issue or becomes abandoned due to non-payment of required fees.

To learn more:

• allowed application status
• notice of allowance
• patent issuance
• application withdrawal
• application abandonment

When applicants receive a Notice of Allowance, they should take specific actions regarding PDX as outlined in MPEP 215.01:

Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed.

Important steps for applicants:

• Verify that the USPTO has received the foreign priority document.
• If the document hasn’t been received, consider filing a paper certified copy.
• Ensure the priority document is received before the patent is granted.
• Be aware that if a certified copy is filed after the issue fee is paid, the patent won’t include the priority claim unless corrected by a certificate of correction.

It’s crucial to confirm receipt of the priority document to maintain the priority claim in the issued patent.

To learn more:

• Notice of Allowance
• PDX
• Priority Documents
• Patent Issuance

An ‘allowed’ patent application is one that has been examined and determined to meet all statutory requirements. According to MPEP 203.04:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.

The status of ‘allowed’ continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue or becomes abandoned for failure to pay the issue fee and any required publication fee.

For more information on allowed application, visit: allowed application.

For more information on notice of allowance, visit: notice of allowance.

For more information on patent issuance, visit: patent issuance.

If a delayed benefit claim is filed after the patent issues, it cannot be accepted. The MPEP 211.04 states:

‘A delayed benefit claim filed after issuance of a patent cannot be accepted.’

This means that once a patent has been granted, it is no longer possible to add or modify benefit claims. Any attempts to file a delayed benefit claim after patent issuance will be denied.

To learn more:

• delayed benefit claim
• patent issuance
• benefit claim limitations

To maintain an allowed application’s status and proceed to patent issuance, certain fees must be paid. The MPEP mentions two specific fees:

1. Issue fee: This is the fee required for the USPTO to issue the patent.
2. Publication fee: If applicable, this fee covers the cost of publishing the patent application.

The MPEP states that an application becomes abandoned “for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 ).” Therefore, timely payment of these fees is crucial to maintain the allowed status and proceed to patent issuance.

To learn more:

• allowed application
• issue fee
• publication fee
• patent issuance
• application abandonment

Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:

• The claim must be made within the time period set forth in 37 CFR 1.55(g).
• A petition to accept an unintentionally delayed claim for priority must be filed.
• The required fee must be paid.
• A certified copy of the foreign application must be submitted.

The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’

Yes, a delayed priority claim can be accepted after patent issuance, but the process is more complex and requires a certificate of correction. According to MPEP 214.02:

For utility and plant applications filed on or after November 29, 2000, the failure to timely file a priority claim because of an error in a foreign priority claim may be corrected pursuant to 37 CFR 1.55(g). The failure to timely file a priority claim to an earlier filed application may be corrected pursuant to 37 CFR 1.78(c) and (e).

To correct a delayed priority claim after patent issuance:

• File a petition under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e), as appropriate.
• Submit a request for a certificate of correction under 37 CFR 1.323.
• Pay the required fees for both the petition and the certificate of correction.
• Provide a statement of unintentional delay covering the entire period of delay.

It’s important to note that the standards for accepting a delayed priority claim after issuance are typically higher, and the USPTO may require a more detailed explanation of the circumstances surrounding the delay.

To learn more:

• delayed priority claim
• patent issuance
• certificate of correction
• MPEP 214.02

To learn more:

• MPEP 214.02

MPEP 203.04 defines an ‘allowed’ or ‘in issue’ patent application as follows:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).

Essentially, an application is ‘allowed’ when the examiner has determined it meets all requirements for patentability and has sent a Notice of Allowance. This status continues until the patent is issued, unless specific actions are taken to withdraw it or it becomes abandoned due to non-payment of fees.

MPEP 203.04 defines an ‘allowed’ or ‘in issue’ patent application as follows:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).

Essentially, an application is ‘allowed’ when the examiner has determined it meets all requirements for patentability and has sent a Notice of Allowance. This status continues until the patent is issued, unless specific actions are taken to withdraw it or it becomes abandoned due to non-payment of fees.

An ‘allowed’ patent application is one that has been examined and determined to meet all statutory requirements. According to MPEP 203.04:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.

The status of ‘allowed’ continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue or becomes abandoned for failure to pay the issue fee and any required publication fee.

For more information on allowed application, visit: allowed application.

For more information on notice of allowance, visit: notice of allowance.

For more information on patent issuance, visit: patent issuance.

Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:

• The claim must be made within the time period set forth in 37 CFR 1.55(g).
• A petition to accept an unintentionally delayed claim for priority must be filed.
• The required fee must be paid.
• A certified copy of the foreign application must be submitted.

The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’

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 deadline for submitting assignee information for patent issuance is crucial to ensure the information appears on the patent. According to MPEP 307:

The submission of the request in compliance with 37 CFR 3.81(b) must be made prior to, or at the same time as, the payment of the issue fee.

This means that assignees must submit their information no later than when the issue fee is paid. It’s important to note that:

• Late submissions may result in the assignee data not being included on the patent
• The USPTO will not delay issuance of the patent to accommodate late submissions
• Correcting assignee information after issuance requires a certificate of correction, which may involve additional fees and procedures

To avoid complications, it’s recommended to submit the assignee information as early as possible in the patent issuance process, ensuring compliance with 37 CFR 3.81(b).

For more information on assignee information, visit: assignee information.

For more information on patent issuance, visit: patent issuance.

If the assignee’s name and address are not identified in item 3 of the Fee(s) Transmittal form (PTOL-85B), the following occurs:

• The patent will issue to the applicant instead of the assignee.
• Assignment data printed on the patent will be based solely on the information supplied on the PTOL-85B form.

As stated in the MPEP: Unless an assignee’s name and address are identified in item 3 of the Fee(s) Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied.

It’s crucial for applicants and assignees to ensure that the correct information is provided on the PTOL-85B form to avoid any issues with patent issuance to the intended party.

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 an assignee fails to comply with 37 CFR 3.81(b) when requesting issuance of a patent to the assignee, the patent may still be issued to the assignee. However, the USPTO will not include the assignee data on the patent.

According to the MPEP 307: Failure to comply with the provisions of 37 CFR 3.81(b) will not impact the issuance of the patent. However, the Office will not include the assignee data on the patent if the assignee data is not submitted in compliance with 37 CFR 3.81(b).

This means that while the patent will be issued, the official patent document will not reflect the assignee information, which could potentially cause complications in establishing ownership records.

For more information on patent issuance, visit: patent issuance.

If a patent is issued to the wrong applicant, the USPTO has procedures to correct this error. According to MPEP 308:

‘If a patent is issued to the wrong applicant because of an error in the Office, the patentee may request a certificate of correction… If the error was not the Office’s fault, the assignee(s) or applicant(s) may request a reissue.’

The method of correction depends on whether the error was made by the USPTO or by the applicant. If it was the USPTO’s error, a certificate of correction can be requested. If it was the applicant’s error, a reissue process may be necessary.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on error correction, visit: error correction.

For more information on patent issuance, visit: patent issuance.

For more information on reissue, visit: reissue.

If a request for issuance to an assignee is submitted after the issue fee has been paid, the following requirements must be met:

1. Submit a request under 37 CFR 3.81(b)
2. Include a request for a certificate of correction under 37 CFR 1.323
3. Pay the fee for the certificate of correction (set forth in 37 CFR 1.20(a))
4. Pay the processing fee (set forth in 37 CFR 1.17(i))
5. 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.

To ensure assignee information appears on an issued patent, the assignee must comply with 37 CFR 3.81(b). This regulation outlines the specific requirements for including assignee data on a patent.

According to MPEP 307, the assignee should:

• Submit a request for issuance of the application in the name of the assignee
• Provide the appropriate documentary evidence of ownership (e.g., assignment for patent)
• Specify the assignee’s name and address

The MPEP states: A request for a patent to be issued to an assignee submitted pursuant to 37 CFR 3.81(b) must state that the document required by 37 CFR 3.81(b) is being submitted to OPAP in order to request that the patent be issued to an assignee.

It’s crucial to follow these steps accurately to ensure the assignee information is properly recorded and appears on the issued patent.

For more information on assignee information, visit: assignee information.

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.

When multiple inventors collaborate on an invention, the patent can be issued to them jointly. The MPEP 308 provides guidance on this:

‘If more than one inventor is named in the application, the patent will issue to the inventors jointly.’

This means that all named inventors share ownership of the patent equally, unless they have agreed otherwise or assigned their rights to another party. Each joint inventor has the right to make, use, sell, or license the invention without the consent of the other inventors, subject to any agreements between them.

For more information on joint inventors, visit: joint inventors.

For more information on patent issuance, visit: patent issuance.

The USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:

1. Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
2. Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”

These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.

For more information on multiple assignees, visit: multiple assignees.

For more information on partial assignees, visit: partial assignees.

For more information on patent issuance, visit: patent issuance.

Can a patent be issued to an assignee if the assignment is not recorded?

Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met:

• The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b).
• The request must be submitted no later than the date the issue fee is paid.
• The request must include clear evidence of the assignment.

According to MPEP 307: “An assignee who otherwise shows sufficient proprietary interest in the matter may also be entitled to such a patent.” This means that even without a recorded assignment, an assignee can still have the patent issued to them if they can demonstrate their proprietary interest.

For more information on assignee rights, visit: assignee rights.

For more information on patent issuance, visit: patent issuance.

For more information on proprietary interest, visit: proprietary interest.

Yes, a patent can be issued to a deceased inventor. The MPEP 308 states:

‘A patent may be issued to the legal representative (executor, administrator, etc.) of a deceased inventor.’

In such cases, the patent is issued to the legal representative acting on behalf of the deceased inventor’s estate. This ensures that the inventor’s rights and the value of their invention are preserved even after their death.

For more information on legal representative, visit: legal representative.

For more information on patent issuance, visit: patent issuance.

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 deadline for submitting assignee information for patent issuance is crucial to ensure the information appears on the patent. According to MPEP 307:

The submission of the request in compliance with 37 CFR 3.81(b) must be made prior to, or at the same time as, the payment of the issue fee.

This means that assignees must submit their information no later than when the issue fee is paid. It’s important to note that:

• Late submissions may result in the assignee data not being included on the patent
• The USPTO will not delay issuance of the patent to accommodate late submissions
• Correcting assignee information after issuance requires a certificate of correction, which may involve additional fees and procedures

To avoid complications, it’s recommended to submit the assignee information as early as possible in the patent issuance process, ensuring compliance with 37 CFR 3.81(b).

For more information on assignee information, visit: assignee information.

For more information on patent issuance, visit: patent issuance.

If the assignee’s name and address are not identified in item 3 of the Fee(s) Transmittal form (PTOL-85B), the following occurs:

• The patent will issue to the applicant instead of the assignee.
• Assignment data printed on the patent will be based solely on the information supplied on the PTOL-85B form.

As stated in the MPEP: Unless an assignee’s name and address are identified in item 3 of the Fee(s) Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied.

It’s crucial for applicants and assignees to ensure that the correct information is provided on the PTOL-85B form to avoid any issues with patent issuance to the intended party.

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 an assignee fails to comply with 37 CFR 3.81(b) when requesting issuance of a patent to the assignee, the patent may still be issued to the assignee. However, the USPTO will not include the assignee data on the patent.

According to the MPEP 307: Failure to comply with the provisions of 37 CFR 3.81(b) will not impact the issuance of the patent. However, the Office will not include the assignee data on the patent if the assignee data is not submitted in compliance with 37 CFR 3.81(b).

This means that while the patent will be issued, the official patent document will not reflect the assignee information, which could potentially cause complications in establishing ownership records.

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:

1. Submit a request under 37 CFR 3.81(b)
2. Include a request for a certificate of correction under 37 CFR 1.323
3. Pay the fee for the certificate of correction (set forth in 37 CFR 1.20(a))
4. Pay the processing fee (set forth in 37 CFR 1.17(i))
5. 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.

To ensure assignee information appears on an issued patent, the assignee must comply with 37 CFR 3.81(b). This regulation outlines the specific requirements for including assignee data on a patent.

According to MPEP 307, the assignee should:

• Submit a request for issuance of the application in the name of the assignee
• Provide the appropriate documentary evidence of ownership (e.g., assignment for patent)
• Specify the assignee’s name and address

The MPEP states: A request for a patent to be issued to an assignee submitted pursuant to 37 CFR 3.81(b) must state that the document required by 37 CFR 3.81(b) is being submitted to OPAP in order to request that the patent be issued to an assignee.

It’s crucial to follow these steps accurately to ensure the assignee information is properly recorded and appears on the issued patent.

For more information on assignee information, visit: assignee information.

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.

The USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:

1. Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
2. Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”

These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.

For more information on multiple assignees, visit: multiple assignees.

For more information on partial assignees, visit: partial assignees.

For more information on patent issuance, visit: patent issuance.

Can a patent be issued to an assignee if the assignment is not recorded?

Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met:

• The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b).
• The request must be submitted no later than the date the issue fee is paid.
• The request must include clear evidence of the assignment.

According to MPEP 307: “An assignee who otherwise shows sufficient proprietary interest in the matter may also be entitled to such a patent.” This means that even without a recorded assignment, an assignee can still have the patent issued to them if they can demonstrate their proprietary interest.

For more information on assignee rights, visit: assignee rights.

For more information on patent issuance, visit: patent issuance.

For more information on proprietary interest, visit: proprietary interest.

If a patent is issued to the wrong applicant, the USPTO has procedures to correct this error. According to MPEP 308:

‘If a patent is issued to the wrong applicant because of an error in the Office, the patentee may request a certificate of correction… If the error was not the Office’s fault, the assignee(s) or applicant(s) may request a reissue.’

The method of correction depends on whether the error was made by the USPTO or by the applicant. If it was the USPTO’s error, a certificate of correction can be requested. If it was the applicant’s error, a reissue process may be necessary.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on error correction, visit: error correction.

For more information on patent issuance, visit: patent issuance.

For more information on reissue, visit: reissue.

When multiple inventors collaborate on an invention, the patent can be issued to them jointly. The MPEP 308 provides guidance on this:

‘If more than one inventor is named in the application, the patent will issue to the inventors jointly.’

This means that all named inventors share ownership of the patent equally, unless they have agreed otherwise or assigned their rights to another party. Each joint inventor has the right to make, use, sell, or license the invention without the consent of the other inventors, subject to any agreements between them.

For more information on joint inventors, visit: joint inventors.

For more information on patent issuance, visit: patent issuance.

Yes, a patent can be issued to a deceased inventor. The MPEP 308 states:

‘A patent may be issued to the legal representative (executor, administrator, etc.) of a deceased inventor.’

In such cases, the patent is issued to the legal representative acting on behalf of the deceased inventor’s estate. This ensures that the inventor’s rights and the value of their invention are preserved even after their death.

For more information on legal representative, visit: legal representative.

For more information on patent issuance, visit: patent issuance.

If an inventor dies after filing a patent application but before the patent is granted, the process can still continue. According to 37 CFR 1.42 (pre-AIA):

“Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”

However, MPEP 409.01(b) clarifies that the intervention of the executor or administrator is not compulsory:

“When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.”

This means that while it’s advisable for the legal representative to intervene, the patent application can still proceed to allowance or issuance even without such intervention.

To learn more:

• deceased inventor
• patent application
• patent issuance
• legal representative
• pre-AIA

MPEP 203.04 defines an ‘allowed’ or ‘in issue’ patent application as follows:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).

Essentially, an application is ‘allowed’ when the examiner has determined it meets all requirements for patentability and has sent a Notice of Allowance. This status continues until the patent is issued, unless specific actions are taken to withdraw it or it becomes abandoned due to non-payment of fees.

The status of an application as ‘allowed’ has a specific timeframe. According to the MPEP:

“Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue ( 37 CFR 1.313 ), or becomes abandoned for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 ).”

In other words, the ‘allowed’ status begins when the notice of allowance is sent and typically ends when the patent is issued. However, this status can be terminated if the application is withdrawn from issue or becomes abandoned due to non-payment of required fees.

To learn more:

• allowed application status
• notice of allowance
• patent issuance
• application withdrawal
• application abandonment

When applicants receive a Notice of Allowance, they should take specific actions regarding PDX as outlined in MPEP 215.01:

Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed.

Important steps for applicants:

• Verify that the USPTO has received the foreign priority document.
• If the document hasn’t been received, consider filing a paper certified copy.
• Ensure the priority document is received before the patent is granted.
• Be aware that if a certified copy is filed after the issue fee is paid, the patent won’t include the priority claim unless corrected by a certificate of correction.

It’s crucial to confirm receipt of the priority document to maintain the priority claim in the issued patent.

To learn more:

• Notice of Allowance
• PDX
• Priority Documents
• Patent Issuance

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 deadline for submitting assignee information for patent issuance is crucial to ensure the information appears on the patent. According to MPEP 307:

The submission of the request in compliance with 37 CFR 3.81(b) must be made prior to, or at the same time as, the payment of the issue fee.

This means that assignees must submit their information no later than when the issue fee is paid. It’s important to note that:

• Late submissions may result in the assignee data not being included on the patent
• The USPTO will not delay issuance of the patent to accommodate late submissions
• Correcting assignee information after issuance requires a certificate of correction, which may involve additional fees and procedures

To avoid complications, it’s recommended to submit the assignee information as early as possible in the patent issuance process, ensuring compliance with 37 CFR 3.81(b).

For more information on assignee information, visit: assignee information.

For more information on patent issuance, visit: patent issuance.

An ‘allowed’ patent application is one that has been examined and determined to meet all statutory requirements. According to MPEP 203.04:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.

The status of ‘allowed’ continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue or becomes abandoned for failure to pay the issue fee and any required publication fee.

For more information on allowed application, visit: allowed application.

For more information on notice of allowance, visit: notice of allowance.

For more information on patent issuance, visit: patent issuance.

If an inventor dies after filing a patent application but before the patent is granted, the process can still continue. According to 37 CFR 1.42 (pre-AIA):

“Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”

However, MPEP 409.01(b) clarifies that the intervention of the executor or administrator is not compulsory:

“When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.”

This means that while it’s advisable for the legal representative to intervene, the patent application can still proceed to allowance or issuance even without such intervention.

To learn more:

• deceased inventor
• patent application
• patent issuance
• legal representative
• pre-AIA

If the assignee’s name and address are not identified in item 3 of the Fee(s) Transmittal form (PTOL-85B), the following occurs:

• The patent will issue to the applicant instead of the assignee.
• Assignment data printed on the patent will be based solely on the information supplied on the PTOL-85B form.

As stated in the MPEP: Unless an assignee’s name and address are identified in item 3 of the Fee(s) Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied.

It’s crucial for applicants and assignees to ensure that the correct information is provided on the PTOL-85B form to avoid any issues with patent issuance to the intended party.

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 an assignee fails to comply with 37 CFR 3.81(b) when requesting issuance of a patent to the assignee, the patent may still be issued to the assignee. However, the USPTO will not include the assignee data on the patent.

According to the MPEP 307: Failure to comply with the provisions of 37 CFR 3.81(b) will not impact the issuance of the patent. However, the Office will not include the assignee data on the patent if the assignee data is not submitted in compliance with 37 CFR 3.81(b).

This means that while the patent will be issued, the official patent document will not reflect the assignee information, which could potentially cause complications in establishing ownership records.

For more information on patent issuance, visit: patent issuance.

If a patent is issued to the wrong applicant, the USPTO has procedures to correct this error. According to MPEP 308:

‘If a patent is issued to the wrong applicant because of an error in the Office, the patentee may request a certificate of correction… If the error was not the Office’s fault, the assignee(s) or applicant(s) may request a reissue.’

The method of correction depends on whether the error was made by the USPTO or by the applicant. If it was the USPTO’s error, a certificate of correction can be requested. If it was the applicant’s error, a reissue process may be necessary.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on error correction, visit: error correction.

For more information on patent issuance, visit: patent issuance.

For more information on reissue, visit: reissue.

If a delayed benefit claim is filed after the patent issues, it cannot be accepted. The MPEP 211.04 states:

‘A delayed benefit claim filed after issuance of a patent cannot be accepted.’

This means that once a patent has been granted, it is no longer possible to add or modify benefit claims. Any attempts to file a delayed benefit claim after patent issuance will be denied.

To learn more:

• delayed benefit claim
• patent issuance
• benefit claim limitations

To maintain an allowed application’s status and proceed to patent issuance, certain fees must be paid. The MPEP mentions two specific fees:

1. Issue fee: This is the fee required for the USPTO to issue the patent.
2. Publication fee: If applicable, this fee covers the cost of publishing the patent application.

The MPEP states that an application becomes abandoned “for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 ).” Therefore, timely payment of these fees is crucial to maintain the allowed status and proceed to patent issuance.

To learn more:

• allowed application
• issue fee
• publication fee
• patent issuance
• application abandonment

If a request for issuance to an assignee is submitted after the issue fee has been paid, the following requirements must be met:

1. Submit a request under 37 CFR 3.81(b)
2. Include a request for a certificate of correction under 37 CFR 1.323
3. Pay the fee for the certificate of correction (set forth in 37 CFR 1.20(a))
4. Pay the processing fee (set forth in 37 CFR 1.17(i))
5. 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.

According to MPEP 608.03(a), models and exhibits are generally disposed of by the USPTO after the application becomes abandoned or the patent is issued. The MPEP states:

‘Models or exhibits that are required by the Office or filed with a petition under 37 CFR 1.91(a)(3) will be disposed of by the Office after the application becomes abandoned or the patent expires or is terminated, whichever is later.’

However, it’s important to note that applicants can request the return of their models or exhibits. The USPTO will notify the applicant when the model or exhibit is no longer needed, and the applicant must arrange for its return within a specified time frame.

To learn more:

• models
• exhibits
• USPTO
• patent issuance
• disposal

The USPTO has a specific process to ensure that all applications are cleared from secrecy review before they are issued as patents. According to the MPEP:

All applications are required to be cleared from secrecy review before forwarding to issue. If the L&R code on the general information display does not equal 1, then in an IFW application, a message should be sent to LREVINCOMINGDOCS.

The USPTO uses a system called the Patent Data Portal (PDP) to track the status of applications:

The Patent Data Portal (PDP) System’s general information display discloses the current Licensing and Review status. The indicator “L&R code” displays the current status of the application while the indicators “Third Level Review” and “Secrecy Order” display the historical status of the application.

Specific codes are used to indicate the status of an application:

• An L&R code of “3” or a “Third Level Review” of “Yes” indicates that the application is/has been considered for security screening.
• A Secrecy Code of “4” indicates that the application is currently under Secrecy Order.

If an application is under Secrecy Order, special handling is required:

In this case, the application has been converted to a paper application file and there should be no images maintained in the Image File Wrapper system (IFW).

This process ensures that no application is issued as a patent until it has been fully cleared from secrecy review, protecting sensitive information and national security interests.

For more information on patent issuance, visit: patent issuance.

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

To ensure assignee information appears on an issued patent, the assignee must comply with 37 CFR 3.81(b). This regulation outlines the specific requirements for including assignee data on a patent.

According to MPEP 307, the assignee should:

• Submit a request for issuance of the application in the name of the assignee
• Provide the appropriate documentary evidence of ownership (e.g., assignment for patent)
• Specify the assignee’s name and address

The MPEP states: A request for a patent to be issued to an assignee submitted pursuant to 37 CFR 3.81(b) must state that the document required by 37 CFR 3.81(b) is being submitted to OPAP in order to request that the patent be issued to an assignee.

It’s crucial to follow these steps accurately to ensure the assignee information is properly recorded and appears on the issued patent.

For more information on assignee information, visit: assignee information.

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.

When multiple inventors collaborate on an invention, the patent can be issued to them jointly. The MPEP 308 provides guidance on this:

‘If more than one inventor is named in the application, the patent will issue to the inventors jointly.’

This means that all named inventors share ownership of the patent equally, unless they have agreed otherwise or assigned their rights to another party. Each joint inventor has the right to make, use, sell, or license the invention without the consent of the other inventors, subject to any agreements between them.

For more information on joint inventors, visit: joint inventors.

For more information on patent issuance, visit: patent issuance.

The USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

Allowed secrecy order applications require special handling to maintain security while progressing through the patent process. The MPEP 130 provides guidance on this:

When a secrecy order case is allowed, the Office of Patent Application Processing (OPAP) is notified. The notice of allowance and issue fee letters are drafted and reviewed in the Technology Center and may be hand carried to OPAP for mailing.

Key points about handling allowed secrecy order applications:

• The Office of Patent Application Processing (OPAP) is notified of the allowance.
• Notice of allowance and issue fee letters are carefully drafted and reviewed.
• These documents may be hand-carried to OPAP for mailing to ensure security.
• The application remains under secrecy order even after allowance.
• Special care is taken to prevent unauthorized disclosure throughout the process.

This careful handling ensures that the application’s classified status is maintained even as it progresses towards issuance.

For more information on classified information, visit: classified information.

For more information on patent issuance, visit: patent issuance.

Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:

• The claim must be made within the time period set forth in 37 CFR 1.55(g).
• A petition to accept an unintentionally delayed claim for priority must be filed.
• The required fee must be paid.
• A certified copy of the foreign application must be submitted.

The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’

Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:

1. Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
2. Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”

These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.

For more information on multiple assignees, visit: multiple assignees.

For more information on partial assignees, visit: partial assignees.

For more information on patent issuance, visit: patent issuance.

Can a patent be issued to an assignee if the assignment is not recorded?

Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met:

• The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b).
• The request must be submitted no later than the date the issue fee is paid.
• The request must include clear evidence of the assignment.

According to MPEP 307: “An assignee who otherwise shows sufficient proprietary interest in the matter may also be entitled to such a patent.” This means that even without a recorded assignment, an assignee can still have the patent issued to them if they can demonstrate their proprietary interest.

For more information on assignee rights, visit: assignee rights.

For more information on patent issuance, visit: patent issuance.

For more information on proprietary interest, visit: proprietary interest.

Yes, a patent can be issued to a deceased inventor. The MPEP 308 states:

‘A patent may be issued to the legal representative (executor, administrator, etc.) of a deceased inventor.’

In such cases, the patent is issued to the legal representative acting on behalf of the deceased inventor’s estate. This ensures that the inventor’s rights and the value of their invention are preserved even after their death.

For more information on legal representative, visit: legal representative.

For more information on patent issuance, visit: patent issuance.

No, patent applications under Secrecy Orders are not issued and cannot be involved in interferences or derivation proceedings. The MPEP states: Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted where one or more of the conflicting cases is classified or under Secrecy Order. This is further supported by 37 CFR 5.3 and MPEP § 2306.

For more information on patent issuance, visit: patent issuance.

Yes, a delayed priority claim can be accepted after patent issuance, but the process is more complex and requires a certificate of correction. According to MPEP 214.02:

For utility and plant applications filed on or after November 29, 2000, the failure to timely file a priority claim because of an error in a foreign priority claim may be corrected pursuant to 37 CFR 1.55(g). The failure to timely file a priority claim to an earlier filed application may be corrected pursuant to 37 CFR 1.78(c) and (e).

To correct a delayed priority claim after patent issuance:

• File a petition under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e), as appropriate.
• Submit a request for a certificate of correction under 37 CFR 1.323.
• Pay the required fees for both the petition and the certificate of correction.
• Provide a statement of unintentional delay covering the entire period of delay.

It’s important to note that the standards for accepting a delayed priority claim after issuance are typically higher, and the USPTO may require a more detailed explanation of the circumstances surrounding the delay.

To learn more:

• delayed priority claim
• patent issuance
• certificate of correction
• MPEP 214.02

To learn more:

• MPEP 214.02

MPEP 203.04 defines an ‘allowed’ or ‘in issue’ patent application as follows:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).

Essentially, an application is ‘allowed’ when the examiner has determined it meets all requirements for patentability and has sent a Notice of Allowance. This status continues until the patent is issued, unless specific actions are taken to withdraw it or it becomes abandoned due to non-payment of fees.

The status of an application as ‘allowed’ has a specific timeframe. According to the MPEP:

“Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue ( 37 CFR 1.313 ), or becomes abandoned for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 ).”

In other words, the ‘allowed’ status begins when the notice of allowance is sent and typically ends when the patent is issued. However, this status can be terminated if the application is withdrawn from issue or becomes abandoned due to non-payment of required fees.

To learn more:

• allowed application status
• notice of allowance
• patent issuance
• application withdrawal
• application abandonment

When applicants receive a Notice of Allowance, they should take specific actions regarding PDX as outlined in MPEP 215.01:

Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed.

Important steps for applicants:

• Verify that the USPTO has received the foreign priority document.
• If the document hasn’t been received, consider filing a paper certified copy.
• Ensure the priority document is received before the patent is granted.
• Be aware that if a certified copy is filed after the issue fee is paid, the patent won’t include the priority claim unless corrected by a certificate of correction.

It’s crucial to confirm receipt of the priority document to maintain the priority claim in the issued patent.

To learn more:

• Notice of Allowance
• PDX
• Priority Documents
• Patent Issuance

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 deadline for submitting assignee information for patent issuance is crucial to ensure the information appears on the patent. According to MPEP 307:

The submission of the request in compliance with 37 CFR 3.81(b) must be made prior to, or at the same time as, the payment of the issue fee.

This means that assignees must submit their information no later than when the issue fee is paid. It’s important to note that:

• Late submissions may result in the assignee data not being included on the patent
• The USPTO will not delay issuance of the patent to accommodate late submissions
• Correcting assignee information after issuance requires a certificate of correction, which may involve additional fees and procedures

To avoid complications, it’s recommended to submit the assignee information as early as possible in the patent issuance process, ensuring compliance with 37 CFR 3.81(b).

For more information on assignee information, visit: assignee information.

For more information on patent issuance, visit: patent issuance.

An ‘allowed’ patent application is one that has been examined and determined to meet all statutory requirements. According to MPEP 203.04:

An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.

The status of ‘allowed’ continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue or becomes abandoned for failure to pay the issue fee and any required publication fee.

For more information on allowed application, visit: allowed application.

For more information on notice of allowance, visit: notice of allowance.

For more information on patent issuance, visit: patent issuance.

If an inventor dies after filing a patent application but before the patent is granted, the process can still continue. According to 37 CFR 1.42 (pre-AIA):

“Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention.”

However, MPEP 409.01(b) clarifies that the intervention of the executor or administrator is not compulsory:

“When an inventor dies after filing an application and executing the oath or declaration required by pre-AIA 37 CFR 1.63, the executor or administrator should intervene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.”

This means that while it’s advisable for the legal representative to intervene, the patent application can still proceed to allowance or issuance even without such intervention.

To learn more:

• deceased inventor
• patent application
• patent issuance
• legal representative
• pre-AIA

If the assignee’s name and address are not identified in item 3 of the Fee(s) Transmittal form (PTOL-85B), the following occurs:

• The patent will issue to the applicant instead of the assignee.
• Assignment data printed on the patent will be based solely on the information supplied on the PTOL-85B form.

As stated in the MPEP: Unless an assignee’s name and address are identified in item 3 of the Fee(s) Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied.

It’s crucial for applicants and assignees to ensure that the correct information is provided on the PTOL-85B form to avoid any issues with patent issuance to the intended party.

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 an assignee fails to comply with 37 CFR 3.81(b) when requesting issuance of a patent to the assignee, the patent may still be issued to the assignee. However, the USPTO will not include the assignee data on the patent.

According to the MPEP 307: Failure to comply with the provisions of 37 CFR 3.81(b) will not impact the issuance of the patent. However, the Office will not include the assignee data on the patent if the assignee data is not submitted in compliance with 37 CFR 3.81(b).

This means that while the patent will be issued, the official patent document will not reflect the assignee information, which could potentially cause complications in establishing ownership records.

For more information on patent issuance, visit: patent issuance.

If a patent is issued to the wrong applicant, the USPTO has procedures to correct this error. According to MPEP 308:

‘If a patent is issued to the wrong applicant because of an error in the Office, the patentee may request a certificate of correction… If the error was not the Office’s fault, the assignee(s) or applicant(s) may request a reissue.’

The method of correction depends on whether the error was made by the USPTO or by the applicant. If it was the USPTO’s error, a certificate of correction can be requested. If it was the applicant’s error, a reissue process may be necessary.

For more information on Certificate of Correction, visit: Certificate of Correction.

For more information on error correction, visit: error correction.

For more information on patent issuance, visit: patent issuance.

For more information on reissue, visit: reissue.

If a delayed benefit claim is filed after the patent issues, it cannot be accepted. The MPEP 211.04 states:

‘A delayed benefit claim filed after issuance of a patent cannot be accepted.’

This means that once a patent has been granted, it is no longer possible to add or modify benefit claims. Any attempts to file a delayed benefit claim after patent issuance will be denied.

To learn more:

• delayed benefit claim
• patent issuance
• benefit claim limitations

To maintain an allowed application’s status and proceed to patent issuance, certain fees must be paid. The MPEP mentions two specific fees:

1. Issue fee: This is the fee required for the USPTO to issue the patent.
2. Publication fee: If applicable, this fee covers the cost of publishing the patent application.

The MPEP states that an application becomes abandoned “for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 ).” Therefore, timely payment of these fees is crucial to maintain the allowed status and proceed to patent issuance.

To learn more:

• allowed application
• issue fee
• publication fee
• patent issuance
• application abandonment

If a request for issuance to an assignee is submitted after the issue fee has been paid, the following requirements must be met:

1. Submit a request under 37 CFR 3.81(b)
2. Include a request for a certificate of correction under 37 CFR 1.323
3. Pay the fee for the certificate of correction (set forth in 37 CFR 1.20(a))
4. Pay the processing fee (set forth in 37 CFR 1.17(i))
5. 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.

According to MPEP 608.03(a), models and exhibits are generally disposed of by the USPTO after the application becomes abandoned or the patent is issued. The MPEP states:

‘Models or exhibits that are required by the Office or filed with a petition under 37 CFR 1.91(a)(3) will be disposed of by the Office after the application becomes abandoned or the patent expires or is terminated, whichever is later.’

However, it’s important to note that applicants can request the return of their models or exhibits. The USPTO will notify the applicant when the model or exhibit is no longer needed, and the applicant must arrange for its return within a specified time frame.

To learn more:

• models
• exhibits
• USPTO
• patent issuance
• disposal

The USPTO has a specific process to ensure that all applications are cleared from secrecy review before they are issued as patents. According to the MPEP:

All applications are required to be cleared from secrecy review before forwarding to issue. If the L&R code on the general information display does not equal 1, then in an IFW application, a message should be sent to LREVINCOMINGDOCS.

The USPTO uses a system called the Patent Data Portal (PDP) to track the status of applications:

The Patent Data Portal (PDP) System’s general information display discloses the current Licensing and Review status. The indicator “L&R code” displays the current status of the application while the indicators “Third Level Review” and “Secrecy Order” display the historical status of the application.

Specific codes are used to indicate the status of an application:

• An L&R code of “3” or a “Third Level Review” of “Yes” indicates that the application is/has been considered for security screening.
• A Secrecy Code of “4” indicates that the application is currently under Secrecy Order.

If an application is under Secrecy Order, special handling is required:

In this case, the application has been converted to a paper application file and there should be no images maintained in the Image File Wrapper system (IFW).

This process ensures that no application is issued as a patent until it has been fully cleared from secrecy review, protecting sensitive information and national security interests.

For more information on patent issuance, visit: patent issuance.

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

To ensure assignee information appears on an issued patent, the assignee must comply with 37 CFR 3.81(b). This regulation outlines the specific requirements for including assignee data on a patent.

According to MPEP 307, the assignee should:

• Submit a request for issuance of the application in the name of the assignee
• Provide the appropriate documentary evidence of ownership (e.g., assignment for patent)
• Specify the assignee’s name and address

The MPEP states: A request for a patent to be issued to an assignee submitted pursuant to 37 CFR 3.81(b) must state that the document required by 37 CFR 3.81(b) is being submitted to OPAP in order to request that the patent be issued to an assignee.

It’s crucial to follow these steps accurately to ensure the assignee information is properly recorded and appears on the issued patent.

For more information on assignee information, visit: assignee information.

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.

When multiple inventors collaborate on an invention, the patent can be issued to them jointly. The MPEP 308 provides guidance on this:

‘If more than one inventor is named in the application, the patent will issue to the inventors jointly.’

This means that all named inventors share ownership of the patent equally, unless they have agreed otherwise or assigned their rights to another party. Each joint inventor has the right to make, use, sell, or license the invention without the consent of the other inventors, subject to any agreements between them.

For more information on joint inventors, visit: joint inventors.

For more information on patent issuance, visit: patent issuance.

The USPTO has specific provisions for handling partial assignees in patent issuance:

1. If one or more assignees, together with one or more inventors, hold the entire right, title, and interest in the application, the patent may issue in the names of both the assignee(s) and the inventor(s).
2. If multiple assignees hold the entire right, title, and interest to the exclusion of all inventors, the patent may issue in the names of the multiple assignees.

This is outlined in 37 CFR 3.81(c): (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor. (2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

Allowed secrecy order applications require special handling to maintain security while progressing through the patent process. The MPEP 130 provides guidance on this:

When a secrecy order case is allowed, the Office of Patent Application Processing (OPAP) is notified. The notice of allowance and issue fee letters are drafted and reviewed in the Technology Center and may be hand carried to OPAP for mailing.

Key points about handling allowed secrecy order applications:

• The Office of Patent Application Processing (OPAP) is notified of the allowance.
• Notice of allowance and issue fee letters are carefully drafted and reviewed.
• These documents may be hand-carried to OPAP for mailing to ensure security.
• The application remains under secrecy order even after allowance.
• Special care is taken to prevent unauthorized disclosure throughout the process.

This careful handling ensures that the application’s classified status is maintained even as it progresses towards issuance.

For more information on classified information, visit: classified information.

For more information on patent issuance, visit: patent issuance.

Yes, it is possible to claim priority to a foreign application after your U.S. patent has been issued. According to MPEP 216.01, a claim for priority under 35 U.S.C. 119(a)-(d) or (f) can be made after the patent is granted, subject to certain conditions:

• The claim must be made within the time period set forth in 37 CFR 1.55(g).
• A petition to accept an unintentionally delayed claim for priority must be filed.
• The required fee must be paid.
• A certified copy of the foreign application must be submitted.

The MPEP states: ‘A claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be made after the patent issues if the claim is accompanied by a grantable petition to accept an unintentionally delayed claim for priority.’

Yes, a patent can be issued to multiple assignees or a combination of assignees and inventors. According to MPEP 307, there are two scenarios:

1. Partial assignees and inventors: “If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.”
2. Multiple assignees: “If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.”

These provisions allow for flexibility in patent issuance when ownership is shared among multiple parties.

For more information on multiple assignees, visit: multiple assignees.

For more information on partial assignees, visit: partial assignees.

For more information on patent issuance, visit: patent issuance.

Can a patent be issued to an assignee if the assignment is not recorded?

Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met:

• The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b).
• The request must be submitted no later than the date the issue fee is paid.
• The request must include clear evidence of the assignment.

According to MPEP 307: “An assignee who otherwise shows sufficient proprietary interest in the matter may also be entitled to such a patent.” This means that even without a recorded assignment, an assignee can still have the patent issued to them if they can demonstrate their proprietary interest.

For more information on assignee rights, visit: assignee rights.

For more information on patent issuance, visit: patent issuance.

For more information on proprietary interest, visit: proprietary interest.

Yes, a patent can be issued to a deceased inventor. The MPEP 308 states:

‘A patent may be issued to the legal representative (executor, administrator, etc.) of a deceased inventor.’

In such cases, the patent is issued to the legal representative acting on behalf of the deceased inventor’s estate. This ensures that the inventor’s rights and the value of their invention are preserved even after their death.

For more information on legal representative, visit: legal representative.

For more information on patent issuance, visit: patent issuance.

No, patent applications under Secrecy Orders are not issued and cannot be involved in interferences or derivation proceedings. The MPEP states: Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted where one or more of the conflicting cases is classified or under Secrecy Order. This is further supported by 37 CFR 5.3 and MPEP § 2306.

For more information on patent issuance, visit: patent issuance.

Yes, a delayed priority claim can be accepted after patent issuance, but the process is more complex and requires a certificate of correction. According to MPEP 214.02:

For utility and plant applications filed on or after November 29, 2000, the failure to timely file a priority claim because of an error in a foreign priority claim may be corrected pursuant to 37 CFR 1.55(g). The failure to timely file a priority claim to an earlier filed application may be corrected pursuant to 37 CFR 1.78(c) and (e).

To correct a delayed priority claim after patent issuance:

• File a petition under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e), as appropriate.
• Submit a request for a certificate of correction under 37 CFR 1.323.
• Pay the required fees for both the petition and the certificate of correction.
• Provide a statement of unintentional delay covering the entire period of delay.

It’s important to note that the standards for accepting a delayed priority claim after issuance are typically higher, and the USPTO may require a more detailed explanation of the circumstances surrounding the delay.

To learn more:

• delayed priority claim
• patent issuance
• certificate of correction
• MPEP 214.02

To learn more:

• MPEP 214.02