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

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

The MPEP outlines two ways to make an assignment of record with the USPTO:

1. Recording in the USPTO assignment records: ‘An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment.’
2. Filing in a specific application or patent file: ‘An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding).’

The MPEP notes: ‘Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.’

It’s important to understand the differences between these methods and their respective purposes in patent proceedings.

The MPEP outlines two ways to make an assignment of record with the USPTO:

1. Recording in the USPTO assignment records: ‘An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment.’
2. Filing in a specific application or patent file: ‘An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding).’

The MPEP notes: ‘Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.’

It’s important to understand the differences between these methods and their respective purposes in patent proceedings.

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

The MPEP outlines two ways to make an assignment of record with the USPTO:

1. Recording in the USPTO assignment records: ‘An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment.’
2. Filing in a specific application or patent file: ‘An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding).’

The MPEP notes: ‘Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.’

It’s important to understand the differences between these methods and their respective purposes in patent proceedings.

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

The MPEP outlines two ways to make an assignment of record with the USPTO:

1. Recording in the USPTO assignment records: ‘An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment.’
2. Filing in a specific application or patent file: ‘An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding).’

The MPEP notes: ‘Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding.’

It’s important to understand the differences between these methods and their respective purposes in patent proceedings.