Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 300 - Ownership and Assignment (3)
According to 35 U.S.C. 118, the following parties can file a patent application:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor
The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
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.
MPEP 307 - Issue to Non - Applicant Assignee (1)
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.
MPEP 308 - Issue to Applicant (2)
According to 35 U.S.C. 118, the following parties can file a patent application:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor
The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
MPEP 400 - Representative of Applicant or Owner (15)
For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:
- The inventor(s)
- An assignee to whom the inventor has assigned the invention
- An obligated assignee to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
The regulation states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
To learn more:
For a pre-AIA 37 CFR 1.47(b) application, the applicant must prove one of the following:
- The invention has been assigned to the applicant
- The inventor has agreed in writing to assign the invention to the applicant
- The applicant otherwise has sufficient proprietary interest in the subject matter to justify filing the application
As stated in MPEP 409.03(f):
“When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that (A) the invention has been assigned to the applicant, or (B) the inventor has agreed in writing to assign the invention to the applicant, or (C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.”
The specific documentation required depends on which of these conditions is being met.
To learn more:
To learn more:
For applications filed on or after September 16, 2012:
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest may file the application on behalf of and as agent for the inventor
- The applicant may file a substitute statement in lieu of an inventor’s oath or declaration if the inventor has refused to execute the oath or declaration
For applications filed before September 16, 2012, a petition under pre-AIA 37 CFR 1.47 could be filed.
Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):
“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”
This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.
When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.
To learn more:
To learn more:
What is the significance of ‘facts showing the right’ in proving proprietary interest?
The phrase ‘facts showing the right’ is crucial in proving proprietary interest for patent applications. According to MPEP 409.03(f):
‘Facts showing the right or authority to make the petition must be proved in accordance with 37 CFR 1.46.’
This means that:
- Applicants must provide concrete evidence demonstrating their right to file and prosecute the patent application.
- The evidence should clearly establish the applicant’s legal authority or ownership of the invention.
- These facts are essential for the USPTO to determine if the applicant has the proper standing to proceed with the application.
Examples of such facts might include:
- Documentation of employment agreements assigning invention rights to an employer
- Contracts showing transfer of rights from inventors to the applicant
- Court orders establishing ownership in cases of disputes
The significance of these ‘facts showing the right’ is that they protect the interests of all parties involved and ensure that patent rights are granted to the rightful owners or their authorized representatives.
To learn more:
Pre-AIA 37 CFR 1.47(b) allows a person with a demonstrated proprietary interest to file a patent application on behalf of an inventor who is unavailable. According to the MPEP, this provision is applicable “when no inventor is available to make application” and permits filing “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration.
It’s important to note that this provision is not applicable to applications filed on or after September 16, 2012.
To learn more:
MPEP 409.03(f) – Proof of Proprietary Interest outlines the requirements for establishing proprietary interest in a patent application when an inventor refuses to execute an oath or declaration. The section states:
‘If an inventor refuses to execute an oath or declaration under 37 CFR 1.63, the party to whom the inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent as provided in 37 CFR 1.46.’
This section provides guidance on how to prove sufficient proprietary interest, which is crucial for applicants who need to file a patent application without the inventor’s cooperation.
To learn more:
To learn more:
MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:
- Assignment: A completed transfer of rights in the invention.
- Agreement to Assign: A promise to transfer rights in the future, often conditional.
For an assignment, MPEP 409.03(f) states:
“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”
For an agreement to assign:
“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”
Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.
To learn more:
To learn more:
To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this:
- Show that the invention has been assigned to the applicant
- Provide evidence that the inventor has agreed in writing to assign the invention to the applicant
- Otherwise demonstrate a proprietary interest in the subject matter of the application
The MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application.”
For more detailed information on demonstrating proprietary interest, refer to MPEP § 409.03(f).
To learn more:
How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
To learn more:
If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by:
- Submitting a legal memorandum
- Providing an affidavit or declaration of firsthand knowledge
- Including copies of relevant statutes or court decisions (if non-U.S.)
MPEP 409.03(f) states:
“A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”
The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.
To learn more:
To learn more:
When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:
- Show the invention has been assigned to the applicant
- Prove the inventor agreed in writing to assign the invention to the applicant
- Otherwise demonstrate sufficient proprietary interest
To prove assignment, submit:
- A copy of the assignment document
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.
The MPEP states: If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.
To learn more:
To learn more:
A person who shows sufficient proprietary interest in an invention can file a patent application as the applicant. According to MPEP § 409.05, such a person must submit a petition including:
- The fee set forth in 37 CFR 1.17(g)
- A showing of sufficient proprietary interest in the matter
- A statement that making the application on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
The proprietary interest can be demonstrated by a legal memorandum showing that a court would likely award title of the invention to the applicant. Supporting facts and documentation should be provided.
For more information on proprietary interest, visit: proprietary interest.
When all inventors are unavailable or unwilling to sign a patent application, there are still options for filing. According to MPEP § 409.03(b) (for applications filed before September 16, 2012) and MPEP § 409.05 (for applications filed on or after September 16, 2012):
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest in the matter may file the application
In such cases, substitute statements would need to be filed in lieu of inventors’ oaths or declarations, along with the necessary petitions and evidence of the applicant’s right to file the application.
For more information on assignee applicant, visit: assignee applicant.
For more information on proprietary interest, visit: proprietary interest.
Patent Law (18)
According to 35 U.S.C. 118, the following parties can file a patent application:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor
The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:
- The inventor(s)
- An assignee to whom the inventor has assigned the invention
- An obligated assignee to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
The regulation states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
To learn more:
For a pre-AIA 37 CFR 1.47(b) application, the applicant must prove one of the following:
- The invention has been assigned to the applicant
- The inventor has agreed in writing to assign the invention to the applicant
- The applicant otherwise has sufficient proprietary interest in the subject matter to justify filing the application
As stated in MPEP 409.03(f):
“When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that (A) the invention has been assigned to the applicant, or (B) the inventor has agreed in writing to assign the invention to the applicant, or (C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.”
The specific documentation required depends on which of these conditions is being met.
To learn more:
To learn more:
For applications filed on or after September 16, 2012:
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest may file the application on behalf of and as agent for the inventor
- The applicant may file a substitute statement in lieu of an inventor’s oath or declaration if the inventor has refused to execute the oath or declaration
For applications filed before September 16, 2012, a petition under pre-AIA 37 CFR 1.47 could be filed.
An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):
“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”
This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.
When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.
To learn more:
To learn more:
What is the significance of ‘facts showing the right’ in proving proprietary interest?
The phrase ‘facts showing the right’ is crucial in proving proprietary interest for patent applications. According to MPEP 409.03(f):
‘Facts showing the right or authority to make the petition must be proved in accordance with 37 CFR 1.46.’
This means that:
- Applicants must provide concrete evidence demonstrating their right to file and prosecute the patent application.
- The evidence should clearly establish the applicant’s legal authority or ownership of the invention.
- These facts are essential for the USPTO to determine if the applicant has the proper standing to proceed with the application.
Examples of such facts might include:
- Documentation of employment agreements assigning invention rights to an employer
- Contracts showing transfer of rights from inventors to the applicant
- Court orders establishing ownership in cases of disputes
The significance of these ‘facts showing the right’ is that they protect the interests of all parties involved and ensure that patent rights are granted to the rightful owners or their authorized representatives.
To learn more:
Pre-AIA 37 CFR 1.47(b) allows a person with a demonstrated proprietary interest to file a patent application on behalf of an inventor who is unavailable. According to the MPEP, this provision is applicable “when no inventor is available to make application” and permits filing “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration.
It’s important to note that this provision is not applicable to applications filed on or after September 16, 2012.
To learn more:
MPEP 409.03(f) – Proof of Proprietary Interest outlines the requirements for establishing proprietary interest in a patent application when an inventor refuses to execute an oath or declaration. The section states:
‘If an inventor refuses to execute an oath or declaration under 37 CFR 1.63, the party to whom the inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent as provided in 37 CFR 1.46.’
This section provides guidance on how to prove sufficient proprietary interest, which is crucial for applicants who need to file a patent application without the inventor’s cooperation.
To learn more:
To learn more:
MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:
- Assignment: A completed transfer of rights in the invention.
- Agreement to Assign: A promise to transfer rights in the future, often conditional.
For an assignment, MPEP 409.03(f) states:
“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”
For an agreement to assign:
“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”
Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.
To learn more:
To learn more:
To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this:
- Show that the invention has been assigned to the applicant
- Provide evidence that the inventor has agreed in writing to assign the invention to the applicant
- Otherwise demonstrate a proprietary interest in the subject matter of the application
The MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application.”
For more detailed information on demonstrating proprietary interest, refer to MPEP § 409.03(f).
To learn more:
How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
To learn more:
If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by:
- Submitting a legal memorandum
- Providing an affidavit or declaration of firsthand knowledge
- Including copies of relevant statutes or court decisions (if non-U.S.)
MPEP 409.03(f) states:
“A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”
The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.
To learn more:
To learn more:
When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:
- Show the invention has been assigned to the applicant
- Prove the inventor agreed in writing to assign the invention to the applicant
- Otherwise demonstrate sufficient proprietary interest
To prove assignment, submit:
- A copy of the assignment document
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.
The MPEP states: If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.
To learn more:
To learn more:
A person who shows sufficient proprietary interest in an invention can file a patent application as the applicant. According to MPEP § 409.05, such a person must submit a petition including:
- The fee set forth in 37 CFR 1.17(g)
- A showing of sufficient proprietary interest in the matter
- A statement that making the application on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
The proprietary interest can be demonstrated by a legal memorandum showing that a court would likely award title of the invention to the applicant. Supporting facts and documentation should be provided.
For more information on proprietary interest, visit: proprietary interest.
When all inventors are unavailable or unwilling to sign a patent application, there are still options for filing. According to MPEP § 409.03(b) (for applications filed before September 16, 2012) and MPEP § 409.05 (for applications filed on or after September 16, 2012):
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest in the matter may file the application
In such cases, substitute statements would need to be filed in lieu of inventors’ oaths or declarations, along with the necessary petitions and evidence of the applicant’s right to file the application.
For more information on assignee applicant, visit: assignee applicant.
For more information on proprietary interest, visit: proprietary interest.
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.
Patent Procedure (18)
According to 35 U.S.C. 118, the following parties can file a patent application:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor
The law states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
For applications filed on or after September 16, 2012, the following parties may file a patent application as the applicant:
- The inventor(s)
- An assignee to whom the inventor has assigned the invention
- An obligated assignee to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
As stated in 37 CFR 1.46(a): “A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant:
- A person to whom the inventor has assigned the invention
- A person to whom the inventor is under an obligation to assign the invention
- A person who otherwise shows sufficient proprietary interest in the matter
The regulation states: A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
To learn more:
For a pre-AIA 37 CFR 1.47(b) application, the applicant must prove one of the following:
- The invention has been assigned to the applicant
- The inventor has agreed in writing to assign the invention to the applicant
- The applicant otherwise has sufficient proprietary interest in the subject matter to justify filing the application
As stated in MPEP 409.03(f):
“When an application is deposited pursuant to pre-AIA 37 CFR 1.47(b), the pre-AIA 37 CFR 1.47(b) applicant must prove that (A) the invention has been assigned to the applicant, or (B) the inventor has agreed in writing to assign the invention to the applicant, or (C) the applicant otherwise has sufficient proprietary interest in the subject matter to justify the filing of the application.”
The specific documentation required depends on which of these conditions is being met.
To learn more:
To learn more:
For applications filed on or after September 16, 2012:
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest may file the application on behalf of and as agent for the inventor
- The applicant may file a substitute statement in lieu of an inventor’s oath or declaration if the inventor has refused to execute the oath or declaration
For applications filed before September 16, 2012, a petition under pre-AIA 37 CFR 1.47 could be filed.
An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including:
- The fee set forth in § 1.17(g)
- A showing that the person has sufficient proprietary interest in the matter
- A statement that making the application for patent by this person on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
This requirement is outlined in 37 CFR 1.46(b)(2): If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):
“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”
This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.
When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.
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What is the significance of ‘facts showing the right’ in proving proprietary interest?
The phrase ‘facts showing the right’ is crucial in proving proprietary interest for patent applications. According to MPEP 409.03(f):
‘Facts showing the right or authority to make the petition must be proved in accordance with 37 CFR 1.46.’
This means that:
- Applicants must provide concrete evidence demonstrating their right to file and prosecute the patent application.
- The evidence should clearly establish the applicant’s legal authority or ownership of the invention.
- These facts are essential for the USPTO to determine if the applicant has the proper standing to proceed with the application.
Examples of such facts might include:
- Documentation of employment agreements assigning invention rights to an employer
- Contracts showing transfer of rights from inventors to the applicant
- Court orders establishing ownership in cases of disputes
The significance of these ‘facts showing the right’ is that they protect the interests of all parties involved and ensure that patent rights are granted to the rightful owners or their authorized representatives.
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Pre-AIA 37 CFR 1.47(b) allows a person with a demonstrated proprietary interest to file a patent application on behalf of an inventor who is unavailable. According to the MPEP, this provision is applicable “when no inventor is available to make application” and permits filing “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort” or who refuses to sign the application oath or declaration.
It’s important to note that this provision is not applicable to applications filed on or after September 16, 2012.
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MPEP 409.03(f) – Proof of Proprietary Interest outlines the requirements for establishing proprietary interest in a patent application when an inventor refuses to execute an oath or declaration. The section states:
‘If an inventor refuses to execute an oath or declaration under 37 CFR 1.63, the party to whom the inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent as provided in 37 CFR 1.46.’
This section provides guidance on how to prove sufficient proprietary interest, which is crucial for applicants who need to file a patent application without the inventor’s cooperation.
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MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are:
- Assignment: A completed transfer of rights in the invention.
- Agreement to Assign: A promise to transfer rights in the future, often conditional.
For an assignment, MPEP 409.03(f) states:
“If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.”
For an agreement to assign:
“When an inventor has agreed in writing to assign an invention described in an application deposited pursuant to pre-AIA 37 CFR 1.47(b), a copy of that agreement should be submitted.”
Additionally, if the agreement to assign is conditional, evidence that the conditions have been met must be provided. This often applies to employment agreements, where the applicant must prove the invention was made during the course of employment.
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To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this:
- Show that the invention has been assigned to the applicant
- Provide evidence that the inventor has agreed in writing to assign the invention to the applicant
- Otherwise demonstrate a proprietary interest in the subject matter of the application
The MPEP states: “The pre-AIA 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application.”
For more detailed information on demonstrating proprietary interest, refer to MPEP § 409.03(f).
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How can inventors and joint inventors file patent applications after September 16, 2012?
For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:
- An inventor or joint inventor may file an application.
- A legal representative of a deceased or legally incapacitated inventor may file an application.
- An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.
As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.
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If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by:
- Submitting a legal memorandum
- Providing an affidavit or declaration of firsthand knowledge
- Including copies of relevant statutes or court decisions (if non-U.S.)
MPEP 409.03(f) states:
“A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”
The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.
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When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:
- Show the invention has been assigned to the applicant
- Prove the inventor agreed in writing to assign the invention to the applicant
- Otherwise demonstrate sufficient proprietary interest
To prove assignment, submit:
- A copy of the assignment document
- A statement under pre-AIA 37 CFR 3.73(b) by the assignee
For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.
The MPEP states: If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.
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A person who shows sufficient proprietary interest in an invention can file a patent application as the applicant. According to MPEP § 409.05, such a person must submit a petition including:
- The fee set forth in 37 CFR 1.17(g)
- A showing of sufficient proprietary interest in the matter
- A statement that making the application on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties
The proprietary interest can be demonstrated by a legal memorandum showing that a court would likely award title of the invention to the applicant. Supporting facts and documentation should be provided.
For more information on proprietary interest, visit: proprietary interest.
When all inventors are unavailable or unwilling to sign a patent application, there are still options for filing. According to MPEP § 409.03(b) (for applications filed before September 16, 2012) and MPEP § 409.05 (for applications filed on or after September 16, 2012):
- An assignee or obligated assignee may file the application as the applicant
- A person who shows sufficient proprietary interest in the matter may file the application
In such cases, substitute statements would need to be filed in lieu of inventors’ oaths or declarations, along with the necessary petitions and evidence of the applicant’s right to file the application.
For more information on assignee applicant, visit: assignee applicant.
For more information on proprietary interest, visit: proprietary interest.
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.