Patent Law FAQ

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:

• For name changes: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
• For mergers: Documents of merger are also proper links in the chain of title.

Recording these changes ensures:

1. The USPTO has up-to-date information on patent ownership
2. Third parties can accurately identify the current patent owner
3. The chain of title remains clear and unbroken, which can be important for future transactions or litigation
4. Compliance with legal requirements for maintaining patent rights

In addition to assignments, the USPTO will record various other documents relating to interests in patent applications and patents upon request. These include:

• License agreements
• Security interest agreements
• Other documents affecting title to applications, patents, and registrations

As stated in the MPEP, “Other documents affecting title to applications, patents, and registrations will be recorded as provided in 37 CFR Part 3 or at the discretion of the Director.” (MPEP 313)

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

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

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

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

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

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

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

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

According to 37 CFR 3.11, the following documents can be recorded with the USPTO related to patent assignments:

• Assignments of applications, patents, and registrations
• Other documents relating to interests in patent applications and patents
• Documents affecting title to applications, patents, or registrations
• Licenses, assignments, or other interests of the Government in or under patents or patent applications
• Joint research agreements or excerpts of joint research agreements

These documents must be accompanied by completed cover sheets as specified in 37 CFR 3.28 and 3.31.

The fees for recording assignment documents are set forth in 37 CFR 3.41. According to the MPEP:

• For electronic submissions: The fee is currently $0 (as per 37 CFR 1.21(h)(1))
• For paper or facsimile submissions: The fee is set in 37 CFR 1.21(h)(2)

The MPEP advises: Customers should check the current fee schedule on the Office website before submitting documents for recordation.

It’s important to note that a fee is required for each application, patent, and registration against which the document is recorded, as identified in the cover sheet. However, there are exceptions:

• No fee is required for documents required by Executive Order 9424 if the document does not affect title and is identified as such in the cover sheet
• The document must be either faxed, electronically submitted, or mailed in compliance with 37 CFR 3.27

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

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

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

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

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

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

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

If you want to record a document for additional patents or applications that has already been recorded in the Assignment Division, you must submit a new recordation request. MPEP 315 outlines the required components:

1. A copy of the original document (which may be the previously recorded papers with the reel and frame numbers stamped by the Assignment Division, or a copy of such papers)
2. A completed cover sheet (as per 37 CFR 3.31 and MPEP § 302.07)
3. The appropriate recording fee (as specified in 37 CFR 1.21(h) and 3.41)

Upon receiving these items, the USPTO will assign a new recording date to that submission, update the assignment database, and include the cover sheet and document as part of the official record.

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

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

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

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

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

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

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

According to 37 CFR 3.11, the following documents can be recorded with the USPTO related to patent assignments:

• Assignments of applications, patents, and registrations
• Other documents relating to interests in patent applications and patents
• Documents affecting title to applications, patents, or registrations
• Licenses, assignments, or other interests of the Government in or under patents or patent applications
• Joint research agreements or excerpts of joint research agreements

These documents must be accompanied by completed cover sheets as specified in 37 CFR 3.28 and 3.31.

The fees for recording assignment documents are set forth in 37 CFR 3.41. According to the MPEP:

• For electronic submissions: The fee is currently $0 (as per 37 CFR 1.21(h)(1))
• For paper or facsimile submissions: The fee is set in 37 CFR 1.21(h)(2)

The MPEP advises: Customers should check the current fee schedule on the Office website before submitting documents for recordation.

It’s important to note that a fee is required for each application, patent, and registration against which the document is recorded, as identified in the cover sheet. However, there are exceptions:

• No fee is required for documents required by Executive Order 9424 if the document does not affect title and is identified as such in the cover sheet
• The document must be either faxed, electronically submitted, or mailed in compliance with 37 CFR 3.27

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

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

Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:

• For name changes: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
• For mergers: Documents of merger are also proper links in the chain of title.

Recording these changes ensures:

1. The USPTO has up-to-date information on patent ownership
2. Third parties can accurately identify the current patent owner
3. The chain of title remains clear and unbroken, which can be important for future transactions or litigation
4. Compliance with legal requirements for maintaining patent rights

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

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

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

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

If you want to record a document for additional patents or applications that has already been recorded in the Assignment Division, you must submit a new recordation request. MPEP 315 outlines the required components:

1. A copy of the original document (which may be the previously recorded papers with the reel and frame numbers stamped by the Assignment Division, or a copy of such papers)
2. A completed cover sheet (as per 37 CFR 3.31 and MPEP § 302.07)
3. The appropriate recording fee (as specified in 37 CFR 1.21(h) and 3.41)

Upon receiving these items, the USPTO will assign a new recording date to that submission, update the assignment database, and include the cover sheet and document as part of the official record.

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

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

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

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

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

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

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

Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:

• For name changes: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
• For mergers: Documents of merger are also proper links in the chain of title.

Recording these changes ensures:

1. The USPTO has up-to-date information on patent ownership
2. Third parties can accurately identify the current patent owner
3. The chain of title remains clear and unbroken, which can be important for future transactions or litigation
4. Compliance with legal requirements for maintaining patent rights

In addition to assignments, the USPTO will record various other documents relating to interests in patent applications and patents upon request. These include:

• License agreements
• Security interest agreements
• Other documents affecting title to applications, patents, and registrations

As stated in the MPEP, “Other documents affecting title to applications, patents, and registrations will be recorded as provided in 37 CFR Part 3 or at the discretion of the Director.” (MPEP 313)

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

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

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

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

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

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

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

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

According to 37 CFR 3.11, the following documents can be recorded with the USPTO related to patent assignments:

• Assignments of applications, patents, and registrations
• Other documents relating to interests in patent applications and patents
• Documents affecting title to applications, patents, or registrations
• Licenses, assignments, or other interests of the Government in or under patents or patent applications
• Joint research agreements or excerpts of joint research agreements

These documents must be accompanied by completed cover sheets as specified in 37 CFR 3.28 and 3.31.

The fees for recording assignment documents are set forth in 37 CFR 3.41. According to the MPEP:

• For electronic submissions: The fee is currently $0 (as per 37 CFR 1.21(h)(1))
• For paper or facsimile submissions: The fee is set in 37 CFR 1.21(h)(2)

The MPEP advises: Customers should check the current fee schedule on the Office website before submitting documents for recordation.

It’s important to note that a fee is required for each application, patent, and registration against which the document is recorded, as identified in the cover sheet. However, there are exceptions:

• No fee is required for documents required by Executive Order 9424 if the document does not affect title and is identified as such in the cover sheet
• The document must be either faxed, electronically submitted, or mailed in compliance with 37 CFR 3.27

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

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

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

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

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

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

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

If you want to record a document for additional patents or applications that has already been recorded in the Assignment Division, you must submit a new recordation request. MPEP 315 outlines the required components:

1. A copy of the original document (which may be the previously recorded papers with the reel and frame numbers stamped by the Assignment Division, or a copy of such papers)
2. A completed cover sheet (as per 37 CFR 3.31 and MPEP § 302.07)
3. The appropriate recording fee (as specified in 37 CFR 1.21(h) and 3.41)

Upon receiving these items, the USPTO will assign a new recording date to that submission, update the assignment database, and include the cover sheet and document as part of the official record.

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

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

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

Recording business name changes and mergers is crucial for maintaining an accurate chain of title for patents. MPEP 314 emphasizes this importance:

• For name changes: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title.
• For mergers: Documents of merger are also proper links in the chain of title.

Recording these changes ensures:

1. The USPTO has up-to-date information on patent ownership
2. Third parties can accurately identify the current patent owner
3. The chain of title remains clear and unbroken, which can be important for future transactions or litigation
4. Compliance with legal requirements for maintaining patent rights

In addition to assignments, the USPTO will record various other documents relating to interests in patent applications and patents upon request. These include:

• License agreements
• Security interest agreements
• Other documents affecting title to applications, patents, and registrations

As stated in the MPEP, “Other documents affecting title to applications, patents, and registrations will be recorded as provided in 37 CFR Part 3 or at the discretion of the Director.” (MPEP 313)

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

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

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

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

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

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

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

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

According to 37 CFR 3.11, the following documents can be recorded with the USPTO related to patent assignments:

• Assignments of applications, patents, and registrations
• Other documents relating to interests in patent applications and patents
• Documents affecting title to applications, patents, or registrations
• Licenses, assignments, or other interests of the Government in or under patents or patent applications
• Joint research agreements or excerpts of joint research agreements

These documents must be accompanied by completed cover sheets as specified in 37 CFR 3.28 and 3.31.

The fees for recording assignment documents are set forth in 37 CFR 3.41. According to the MPEP:

• For electronic submissions: The fee is currently $0 (as per 37 CFR 1.21(h)(1))
• For paper or facsimile submissions: The fee is set in 37 CFR 1.21(h)(2)

The MPEP advises: Customers should check the current fee schedule on the Office website before submitting documents for recordation.

It’s important to note that a fee is required for each application, patent, and registration against which the document is recorded, as identified in the cover sheet. However, there are exceptions:

• No fee is required for documents required by Executive Order 9424 if the document does not affect title and is identified as such in the cover sheet
• The document must be either faxed, electronically submitted, or mailed in compliance with 37 CFR 3.27

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

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

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

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

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

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

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

If you want to record a document for additional patents or applications that has already been recorded in the Assignment Division, you must submit a new recordation request. MPEP 315 outlines the required components:

1. A copy of the original document (which may be the previously recorded papers with the reel and frame numbers stamped by the Assignment Division, or a copy of such papers)
2. A completed cover sheet (as per 37 CFR 3.31 and MPEP § 302.07)
3. The appropriate recording fee (as specified in 37 CFR 1.21(h) and 3.41)

Upon receiving these items, the USPTO will assign a new recording date to that submission, update the assignment database, and include the cover sheet and document as part of the official record.

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

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

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