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

The USPTO records documents other than assignments for several important reasons:

1. Public interest: To provide notification to third parties of equitable interests or other matters relevant to patent ownership.
2. Transparency: To maintain a clear record of various interests in patents and patent applications.
3. Legal compliance: To fulfill the requirements of 35 U.S.C. 261 and 37 CFR 3.11.

The MPEP states, “Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application.” (MPEP 313)

Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states:

Title reports may not be ordered by applicants or attorneys.

These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.

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)

What types of documents can be recorded in the USPTO assignment database?

The USPTO assignment database accepts various types of documents related to patent ownership and interests. According to MPEP 302, recordable documents include:

• Assignments of patent rights
• Security interests (e.g., liens, mortgages)
• Licenses
• Releases
• Certificates of name changes
• Mergers
• Other documents affecting title to applications, patents, or registrations

The MPEP states: ‘Any document which relates to the title in a patent or patent application will be recorded as provided in 37 CFR 3.11.’ This broad definition allows for the recording of various ownership-related documents.

For more information on licenses, visit: licenses.

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

For more information on recordable documents, visit: recordable documents.

For more information on security interests, visit: security interests.

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

The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents for patents and patent applications
• Recording these documents in the USPTO’s assignment database
• Maintaining accurate records of patent ownership and transfers
• Ensuring that assignment information is searchable and accessible
• Processing requests for copies of recorded documents

By centralizing these functions, the USPTO can maintain a comprehensive and up-to-date record of patent ownership separate from the technical aspects of patent prosecution.

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

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

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

PALM stands for Patent Application Locator and Monitoring system. While MPEP 303 doesn’t provide a definition, it mentions PALM in the context of assignment information:

“…it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

PALM is an internal USPTO database system used by patent examiners to access and track information about patent applications, including assignment details. It’s a crucial tool for examiners when they need to verify ownership or resolve conflicts related to patent applications.

Indexing against a recorded certificate refers to the process of associating additional patent numbers or application numbers with a document that has already been recorded in the USPTO’s Assignment Division. However, the USPTO does not process such requests for ‘indexing’ or ‘cross-referencing’ unless a new submission is made.

According to MPEP 315, The Office does not process requests for ‘indexing’ or ‘cross-referencing’ additional patent numbers or application numbers against a document, other than an assignment, previously recorded in the Assignment Division.

A title report in patent law is a form used by the Assignment Division of the USPTO to report the name of the owner of an application or patent as shown by their records on a specific date. According to the MPEP:

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made.

These reports are used internally within the USPTO and are not available for direct request by applicants or attorneys.

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

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

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

When a petition to ‘expunge’ a document is granted, the document is not completely removed from the USPTO assignment records. According to MPEP 323.01(d):

Even if a petition to ‘expunge’ a document is granted with respect to a particular application or patent, the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number, and the image will appear when someone views that reel and frame number.

However, the USPTO takes steps to limit the visibility of the expunged document:

• Links to the application or patent subject to the petition are deleted.
• The document won’t appear in searches for that application or patent number in the Assignment Historical Database.
• A redacted version of the ‘expunged’ document is recorded and appears in the assignment records instead of the original document.

To learn more:

• expungement
• assignment records
• document visibility
• USPTO database

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.

If the USPTO returns a document unrecorded and you believe it represents an unusual case that justifies recordation, you have the option to petition for its recordation. The MPEP provides the following guidance:

“Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document.” (MPEP 313)

To petition:

1. Submit the document to the Office of Petitions
2. Include a petition under 37 CFR 1.181
3. Provide justification for why the document should be recorded

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)

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

No, the USPTO does not determine the legal effect of recorded documents on patent ownership at the time of recordation. The MPEP clearly states:

“The recordation of a document is not a determination of the effect of the document on the chain of title. The determination of what, if any, effect a document has on title will be made by the Office at such times as ownership must be established to permit action to be taken by the purported assignee in connection with a patent or an application.” (MPEP 313)

This means:

• Recordation is primarily for public notice
• The USPTO will evaluate ownership when necessary for specific actions
• Parties should not assume recordation equates to USPTO approval of ownership claims

Expungement of assignment records is extremely rare and does not result in the complete removal of a document from the assignment records. According to MPEP 323.01(d), petitions to expunge are granted only if:

• Normal corrective procedures are inadequate
• The integrity of assignment records won’t be affected

Even if granted, “the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number.” However, links to the specific application or patent will be deleted from the Assignment Historical Database. A redacted version of the ‘expunged’ document must be recorded in its place.

Yes, arbitration awards in patent disputes can be modified under certain circumstances. According to 35 U.S.C. 294(c):

‘The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judgment rendered by a court of competent jurisdiction from which no appeal can or has been taken, such award may be modified by any court of competent jurisdiction upon application by any party to the arbitration.’

If an award is modified, the party requesting the modification must file a notice with the USPTO, as per 37 CFR 1.335(b).

Are patent assignment records publicly accessible after recording at the USPTO?

Yes, patent assignment records become publicly accessible after they are recorded at the USPTO. The MPEP 302.01 states: ‘Assignment documents submitted for recording are scanned and stored in a public database.’

This means:

• Anyone can access recorded assignment information
• The public database allows searching for patent ownership details
• Transparency in patent ownership is maintained

Public accessibility of these records is crucial for maintaining transparency in patent ownership and facilitating due diligence in patent transactions. Interested parties can search and retrieve assignment information through the USPTO’s Assignment Search database.

To learn more:

• patent assignment
• public records
• USPTO database

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

What types of documents can be recorded in the USPTO assignment database?

The USPTO assignment database accepts various types of documents related to patent ownership and interests. According to MPEP 302, recordable documents include:

• Assignments of patent rights
• Security interests (e.g., liens, mortgages)
• Licenses
• Releases
• Certificates of name changes
• Mergers
• Other documents affecting title to applications, patents, or registrations

The MPEP states: ‘Any document which relates to the title in a patent or patent application will be recorded as provided in 37 CFR 3.11.’ This broad definition allows for the recording of various ownership-related documents.

For more information on licenses, visit: licenses.

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

For more information on recordable documents, visit: recordable documents.

For more information on security interests, visit: security interests.

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

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.

PALM stands for Patent Application Locator and Monitoring system. While MPEP 303 doesn’t provide a definition, it mentions PALM in the context of assignment information:

“…it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

PALM is an internal USPTO database system used by patent examiners to access and track information about patent applications, including assignment details. It’s a crucial tool for examiners when they need to verify ownership or resolve conflicts related to patent applications.

Yes, arbitration awards in patent disputes can be modified under certain circumstances. According to 35 U.S.C. 294(c):

‘The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judgment rendered by a court of competent jurisdiction from which no appeal can or has been taken, such award may be modified by any court of competent jurisdiction upon application by any party to the arbitration.’

If an award is modified, the party requesting the modification must file a notice with the USPTO, as per 37 CFR 1.335(b).

Indexing against a recorded certificate refers to the process of associating additional patent numbers or application numbers with a document that has already been recorded in the USPTO’s Assignment Division. However, the USPTO does not process such requests for ‘indexing’ or ‘cross-referencing’ unless a new submission is made.

According to MPEP 315, The Office does not process requests for ‘indexing’ or ‘cross-referencing’ additional patent numbers or application numbers against a document, other than an assignment, previously recorded in the Assignment Division.

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

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

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

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

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

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

The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents for patents and patent applications
• Recording these documents in the USPTO’s assignment database
• Maintaining accurate records of patent ownership and transfers
• Ensuring that assignment information is searchable and accessible
• Processing requests for copies of recorded documents

By centralizing these functions, the USPTO can maintain a comprehensive and up-to-date record of patent ownership separate from the technical aspects of patent prosecution.

Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states:

Title reports may not be ordered by applicants or attorneys.

These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.

A title report in patent law is a form used by the Assignment Division of the USPTO to report the name of the owner of an application or patent as shown by their records on a specific date. According to the MPEP:

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made.

These reports are used internally within the USPTO and are not available for direct request by applicants or attorneys.

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)

Expungement of assignment records is extremely rare and does not result in the complete removal of a document from the assignment records. According to MPEP 323.01(d), petitions to expunge are granted only if:

• Normal corrective procedures are inadequate
• The integrity of assignment records won’t be affected

Even if granted, “the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number.” However, links to the specific application or patent will be deleted from the Assignment Historical Database. A redacted version of the ‘expunged’ document must be recorded in its place.

Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:

• To maintain consistent numbering across editions
• To allow for future expansion of content
• To accommodate planned updates or revisions
• To serve as placeholders for potential new topics or guidance

This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.

Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:

Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.

This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.

MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.

The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:

• Changes in patent laws or regulations
• New court decisions affecting patent examination
• Evolving USPTO policies and procedures
• Feedback from patent examiners and practitioners

Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.

When the USPTO is notified of the death of a sole patent practitioner of record, they continue to hold correspondence with the deceased practitioner’s office. However, the USPTO also mails a copy of the Office action to the person who originally appointed the practitioner. This ensures that the applicant or owner is informed of ongoing patent matters.

The presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:

• They maintain consistent numbering in the MPEP, aiding navigation and referencing
• They allow for future expansion of examination guidelines without major restructuring
• They serve as potential indicators of areas where the USPTO may develop new policies or procedures

Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.

When an applicant’s patent attorney or agent is suspended, they can find a new registered patent attorney or agent by:

1. Consulting the USPTO website at https://oedci.uspto.gov/OEDCI/
2. Calling the Office of Enrollment and Discipline at (571) 272-4097

This information is provided in Form Paragraph 4.07 of MPEP § 407.

No, the USPTO cannot assist in selecting a patent practitioner. According to MPEP 401, “The Office cannot aid in the selection of a patent practitioner.” However, the USPTO does provide resources for finding registered patent attorneys and agents:

• A listing is available at www.uspto.gov/FindPatentAttorney
• Applicants can request a list of registered practitioners in their area by writing to the Office of Enrollment and Discipline (OED)

No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office. (MPEP 406)

No, the USPTO cannot assist in selecting a patent practitioner. According to MPEP 401, “The Office cannot aid in the selection of a patent practitioner.” However, the USPTO does provide resources for finding registered patent attorneys and agents:

• A listing is available at www.uspto.gov/FindPatentAttorney
• Applicants can request a list of registered practitioners in their area by writing to the Office of Enrollment and Discipline (OED)

Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:

• To maintain consistent numbering across editions
• To allow for future expansion of content
• To accommodate planned updates or revisions
• To serve as placeholders for potential new topics or guidance

This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.

MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.

The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:

• Changes in patent laws or regulations
• New court decisions affecting patent examination
• Evolving USPTO policies and procedures
• Feedback from patent examiners and practitioners

Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.

The presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:

• They maintain consistent numbering in the MPEP, aiding navigation and referencing
• They allow for future expansion of examination guidelines without major restructuring
• They serve as potential indicators of areas where the USPTO may develop new policies or procedures

Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.

Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:

Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.

This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.

When the USPTO is notified of the death of a sole patent practitioner of record, they continue to hold correspondence with the deceased practitioner’s office. However, the USPTO also mails a copy of the Office action to the person who originally appointed the practitioner. This ensures that the applicant or owner is informed of ongoing patent matters.

No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office. (MPEP 406)

When an applicant’s patent attorney or agent is suspended, they can find a new registered patent attorney or agent by:

1. Consulting the USPTO website at https://oedci.uspto.gov/OEDCI/
2. Calling the Office of Enrollment and Discipline at (571) 272-4097

This information is provided in Form Paragraph 4.07 of MPEP § 407.

If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:

• Be filed promptly after becoming aware of the discrepancy
• Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
• Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”

The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.

When the USPTO cannot locate a patent or application file after a reasonable search, they follow the procedure outlined in 37 CFR 1.251. The key steps are:

1. The Office notifies the applicant or patentee about the unlocatable file.
2. A time period is set for the applicant or patentee to comply with the notice.
3. The applicant or patentee must respond by either:
   • Providing a copy of their record of all correspondence with the Office (except U.S. patent documents)
   • Producing their record for the Office to copy
   • Stating that they do not possess any record of the correspondence

As stated in MPEP 508.04, “37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.”

The mailing address for trademark applications and trademark-related papers filed on paper is:

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

This address should be used for all trademark-related documents filed on paper, except for:

• Documents sent to the Assignment Recordation Branch for recordation
• Requests for copies of trademark documents
• Certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e)

According to 37 CFR 2.190(a): “In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”

The institution of higher education basis allows applicants to qualify for micro entity status if:

1. The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
2. The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.

The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).

The general mailing address for patent applications and patent-related papers is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.

As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

If you lose entitlement to micro entity status, you must:

1. File a notification of loss of entitlement to micro entity status in the application or patent
2. Pay the required fee in the small entity or undiscounted amount, as appropriate

The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’

Micro entities receive a 75% reduction on many USPTO fees, including:

• Filing fees (nonprovisional and provisional)
• Search fees
• Examination fees
• Issue fees
• Appeal fees
• Maintenance fees
• Patent Trial and Appeal Board fees

The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’

The time limits for responding to a notice under 37 CFR 1.251 vary depending on whether it’s for an application or a patent:

• For applications: The Office sets a three-month period for reply, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
• For patents: The Office sets a six-month period for reply, which is not extendable.

MPEP 508.04 states: “The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.” It also notes: “The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent.”

Improperly claiming micro entity status can have serious consequences:

• It may be considered fraud on the USPTO if done knowingly
• It can result in the patent being held unenforceable
• Improperly paid fees will need to be corrected, which may include late fees

MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:

• For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): “With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.”
• For granted patents: While the patent won’t expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: “While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).”

Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:

Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.

If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.

For micro entity status, gross income is determined as follows:

• Based on the calendar year preceding the year a fee is paid
• Uses the definition of gross income in section 61(a) of the Internal Revenue Code
• Compared to three times the median household income as reported by the Bureau of the Census
• For non-US income, converted using the average currency exchange rate for the relevant calendar year

The USPTO website provides the current maximum qualifying gross income limit.

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”

Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.

For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’

The mailing address for trademark applications and trademark-related papers filed on paper is:

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

This address should be used for all trademark-related documents filed on paper, except for:

• Documents sent to the Assignment Recordation Branch for recordation
• Requests for copies of trademark documents
• Certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e)

According to 37 CFR 2.190(a): “In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”

The general mailing address for patent applications and patent-related papers is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.

As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”

When the USPTO cannot locate a patent or application file after a reasonable search, they follow the procedure outlined in 37 CFR 1.251. The key steps are:

1. The Office notifies the applicant or patentee about the unlocatable file.
2. A time period is set for the applicant or patentee to comply with the notice.
3. The applicant or patentee must respond by either:
   • Providing a copy of their record of all correspondence with the Office (except U.S. patent documents)
   • Producing their record for the Office to copy
   • Stating that they do not possess any record of the correspondence

As stated in MPEP 508.04, “37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.”

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

The time limits for responding to a notice under 37 CFR 1.251 vary depending on whether it’s for an application or a patent:

• For applications: The Office sets a three-month period for reply, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
• For patents: The Office sets a six-month period for reply, which is not extendable.

MPEP 508.04 states: “The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.” It also notes: “The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent.”

The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:

• For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): “With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.”
• For granted patents: While the patent won’t expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: “While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).”

Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.

Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”

The institution of higher education basis allows applicants to qualify for micro entity status if:

1. The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
2. The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.

The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).

If you lose entitlement to micro entity status, you must:

1. File a notification of loss of entitlement to micro entity status in the application or patent
2. Pay the required fee in the small entity or undiscounted amount, as appropriate

The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’

Micro entities receive a 75% reduction on many USPTO fees, including:

• Filing fees (nonprovisional and provisional)
• Search fees
• Examination fees
• Issue fees
• Appeal fees
• Maintenance fees
• Patent Trial and Appeal Board fees

The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’

Improperly claiming micro entity status can have serious consequences:

• It may be considered fraud on the USPTO if done knowingly
• It can result in the patent being held unenforceable
• Improperly paid fees will need to be corrected, which may include late fees

MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

For micro entity status, gross income is determined as follows:

• Based on the calendar year preceding the year a fee is paid
• Uses the definition of gross income in section 61(a) of the Internal Revenue Code
• Compared to three times the median household income as reported by the Bureau of the Census
• For non-US income, converted using the average currency exchange rate for the relevant calendar year

The USPTO website provides the current maximum qualifying gross income limit.

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.

For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:

• Be filed promptly after becoming aware of the discrepancy
• Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
• Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”

The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:

Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.

If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.

The USPTO records documents other than assignments for several important reasons:

1. Public interest: To provide notification to third parties of equitable interests or other matters relevant to patent ownership.
2. Transparency: To maintain a clear record of various interests in patents and patent applications.
3. Legal compliance: To fulfill the requirements of 35 U.S.C. 261 and 37 CFR 3.11.

The MPEP states, “Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application.” (MPEP 313)

Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:

• To maintain consistent numbering across editions
• To allow for future expansion of content
• To accommodate planned updates or revisions
• To serve as placeholders for potential new topics or guidance

This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.

Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states:

Title reports may not be ordered by applicants or attorneys.

These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.

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)

What types of documents can be recorded in the USPTO assignment database?

The USPTO assignment database accepts various types of documents related to patent ownership and interests. According to MPEP 302, recordable documents include:

• Assignments of patent rights
• Security interests (e.g., liens, mortgages)
• Licenses
• Releases
• Certificates of name changes
• Mergers
• Other documents affecting title to applications, patents, or registrations

The MPEP states: ‘Any document which relates to the title in a patent or patent application will be recorded as provided in 37 CFR 3.11.’ This broad definition allows for the recording of various ownership-related documents.

For more information on licenses, visit: licenses.

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

For more information on recordable documents, visit: recordable documents.

For more information on security interests, visit: security interests.

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

If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:

• Be filed promptly after becoming aware of the discrepancy
• Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
• Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”

The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.

The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents for patents and patent applications
• Recording these documents in the USPTO’s assignment database
• Maintaining accurate records of patent ownership and transfers
• Ensuring that assignment information is searchable and accessible
• Processing requests for copies of recorded documents

By centralizing these functions, the USPTO can maintain a comprehensive and up-to-date record of patent ownership separate from the technical aspects of patent prosecution.

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

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

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

When the USPTO cannot locate a patent or application file after a reasonable search, they follow the procedure outlined in 37 CFR 1.251. The key steps are:

1. The Office notifies the applicant or patentee about the unlocatable file.
2. A time period is set for the applicant or patentee to comply with the notice.
3. The applicant or patentee must respond by either:
   • Providing a copy of their record of all correspondence with the Office (except U.S. patent documents)
   • Producing their record for the Office to copy
   • Stating that they do not possess any record of the correspondence

As stated in MPEP 508.04, “37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.”

The institution of higher education basis allows applicants to qualify for micro entity status if:

1. The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
2. The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.

The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).

The general mailing address for patent applications and patent-related papers is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.

As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

PALM stands for Patent Application Locator and Monitoring system. While MPEP 303 doesn’t provide a definition, it mentions PALM in the context of assignment information:

“…it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

PALM is an internal USPTO database system used by patent examiners to access and track information about patent applications, including assignment details. It’s a crucial tool for examiners when they need to verify ownership or resolve conflicts related to patent applications.

Indexing against a recorded certificate refers to the process of associating additional patent numbers or application numbers with a document that has already been recorded in the USPTO’s Assignment Division. However, the USPTO does not process such requests for ‘indexing’ or ‘cross-referencing’ unless a new submission is made.

According to MPEP 315, The Office does not process requests for ‘indexing’ or ‘cross-referencing’ additional patent numbers or application numbers against a document, other than an assignment, previously recorded in the Assignment Division.

Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:

Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.

This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.

A title report in patent law is a form used by the Assignment Division of the USPTO to report the name of the owner of an application or patent as shown by their records on a specific date. According to the MPEP:

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made.

These reports are used internally within the USPTO and are not available for direct request by applicants or attorneys.

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

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

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

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

When a petition to ‘expunge’ a document is granted, the document is not completely removed from the USPTO assignment records. According to MPEP 323.01(d):

Even if a petition to ‘expunge’ a document is granted with respect to a particular application or patent, the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number, and the image will appear when someone views that reel and frame number.

However, the USPTO takes steps to limit the visibility of the expunged document:

• Links to the application or patent subject to the petition are deleted.
• The document won’t appear in searches for that application or patent number in the Assignment Historical Database.
• A redacted version of the ‘expunged’ document is recorded and appears in the assignment records instead of the original document.

To learn more:

• expungement
• assignment records
• document visibility
• USPTO database

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

If you lose entitlement to micro entity status, you must:

1. File a notification of loss of entitlement to micro entity status in the application or patent
2. Pay the required fee in the small entity or undiscounted amount, as appropriate

The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’

Micro entities receive a 75% reduction on many USPTO fees, including:

• Filing fees (nonprovisional and provisional)
• Search fees
• Examination fees
• Issue fees
• Appeal fees
• Maintenance fees
• Patent Trial and Appeal Board fees

The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’

MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.

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.

If the USPTO returns a document unrecorded and you believe it represents an unusual case that justifies recordation, you have the option to petition for its recordation. The MPEP provides the following guidance:

“Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document.” (MPEP 313)

To petition:

1. Submit the document to the Office of Petitions
2. Include a petition under 37 CFR 1.181
3. Provide justification for why the document should be recorded

The time limits for responding to a notice under 37 CFR 1.251 vary depending on whether it’s for an application or a patent:

• For applications: The Office sets a three-month period for reply, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
• For patents: The Office sets a six-month period for reply, which is not extendable.

MPEP 508.04 states: “The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.” It also notes: “The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent.”

Improperly claiming micro entity status can have serious consequences:

• It may be considered fraud on the USPTO if done knowingly
• It can result in the patent being held unenforceable
• Improperly paid fees will need to be corrected, which may include late fees

MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:

• For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): “With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.”
• For granted patents: While the patent won’t expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: “While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).”

Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.

The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:

• Changes in patent laws or regulations
• New court decisions affecting patent examination
• Evolving USPTO policies and procedures
• Feedback from patent examiners and practitioners

Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:

Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.

If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.

For micro entity status, gross income is determined as follows:

• Based on the calendar year preceding the year a fee is paid
• Uses the definition of gross income in section 61(a) of the Internal Revenue Code
• Compared to three times the median household income as reported by the Bureau of the Census
• For non-US income, converted using the average currency exchange rate for the relevant calendar year

The USPTO website provides the current maximum qualifying gross income limit.

When the USPTO is notified of the death of a sole patent practitioner of record, they continue to hold correspondence with the deceased practitioner’s office. However, the USPTO also mails a copy of the Office action to the person who originally appointed the practitioner. This ensures that the applicant or owner is informed of ongoing patent matters.

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 presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:

• They maintain consistent numbering in the MPEP, aiding navigation and referencing
• They allow for future expansion of examination guidelines without major restructuring
• They serve as potential indicators of areas where the USPTO may develop new policies or procedures

Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

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)

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

When an applicant’s patent attorney or agent is suspended, they can find a new registered patent attorney or agent by:

1. Consulting the USPTO website at https://oedci.uspto.gov/OEDCI/
2. Calling the Office of Enrollment and Discipline at (571) 272-4097

This information is provided in Form Paragraph 4.07 of MPEP § 407.

Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”

No, the USPTO does not determine the legal effect of recorded documents on patent ownership at the time of recordation. The MPEP clearly states:

“The recordation of a document is not a determination of the effect of the document on the chain of title. The determination of what, if any, effect a document has on title will be made by the Office at such times as ownership must be established to permit action to be taken by the purported assignee in connection with a patent or an application.” (MPEP 313)

This means:

• Recordation is primarily for public notice
• The USPTO will evaluate ownership when necessary for specific actions
• Parties should not assume recordation equates to USPTO approval of ownership claims

No, the USPTO cannot assist in selecting a patent practitioner. According to MPEP 401, “The Office cannot aid in the selection of a patent practitioner.” However, the USPTO does provide resources for finding registered patent attorneys and agents:

• A listing is available at www.uspto.gov/FindPatentAttorney
• Applicants can request a list of registered practitioners in their area by writing to the Office of Enrollment and Discipline (OED)

Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.

For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’

Expungement of assignment records is extremely rare and does not result in the complete removal of a document from the assignment records. According to MPEP 323.01(d), petitions to expunge are granted only if:

• Normal corrective procedures are inadequate
• The integrity of assignment records won’t be affected

Even if granted, “the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number.” However, links to the specific application or patent will be deleted from the Assignment Historical Database. A redacted version of the ‘expunged’ document must be recorded in its place.

Yes, arbitration awards in patent disputes can be modified under certain circumstances. According to 35 U.S.C. 294(c):

‘The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judgment rendered by a court of competent jurisdiction from which no appeal can or has been taken, such award may be modified by any court of competent jurisdiction upon application by any party to the arbitration.’

If an award is modified, the party requesting the modification must file a notice with the USPTO, as per 37 CFR 1.335(b).

No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office. (MPEP 406)

Are patent assignment records publicly accessible after recording at the USPTO?

Yes, patent assignment records become publicly accessible after they are recorded at the USPTO. The MPEP 302.01 states: ‘Assignment documents submitted for recording are scanned and stored in a public database.’

This means:

• Anyone can access recorded assignment information
• The public database allows searching for patent ownership details
• Transparency in patent ownership is maintained

Public accessibility of these records is crucial for maintaining transparency in patent ownership and facilitating due diligence in patent transactions. Interested parties can search and retrieve assignment information through the USPTO’s Assignment Search database.

To learn more:

• patent assignment
• public records
• USPTO database

The USPTO records documents other than assignments for several important reasons:

1. Public interest: To provide notification to third parties of equitable interests or other matters relevant to patent ownership.
2. Transparency: To maintain a clear record of various interests in patents and patent applications.
3. Legal compliance: To fulfill the requirements of 35 U.S.C. 261 and 37 CFR 3.11.

The MPEP states, “Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application.” (MPEP 313)

Sections in the Manual of Patent Examining Procedure (MPEP) are sometimes marked as ‘[Reserved]’ for several reasons:

• To maintain consistent numbering across editions
• To allow for future expansion of content
• To accommodate planned updates or revisions
• To serve as placeholders for potential new topics or guidance

This practice helps the USPTO maintain flexibility in organizing and updating the MPEP while preserving a logical structure for users.

Title reports are internal documents used by the USPTO and are not available for direct request by external parties. The MPEP explicitly states:

Title reports may not be ordered by applicants or attorneys.

These reports are typically requested by internal USPTO staff, such as the Reexamination Preprocessing Staff, when needed for specific procedures.

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)

What types of documents can be recorded in the USPTO assignment database?

The USPTO assignment database accepts various types of documents related to patent ownership and interests. According to MPEP 302, recordable documents include:

• Assignments of patent rights
• Security interests (e.g., liens, mortgages)
• Licenses
• Releases
• Certificates of name changes
• Mergers
• Other documents affecting title to applications, patents, or registrations

The MPEP states: ‘Any document which relates to the title in a patent or patent application will be recorded as provided in 37 CFR 3.11.’ This broad definition allows for the recording of various ownership-related documents.

For more information on licenses, visit: licenses.

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

For more information on recordable documents, visit: recordable documents.

For more information on security interests, visit: security interests.

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

If there’s a discrepancy between the filing date accorded by the USPTO and the “date accepted” on the Priority Mail Express® mailing label, you can file a petition under 37 CFR 1.10(c). MPEP 513 states that such a petition should:

• Be filed promptly after becoming aware of the discrepancy
• Include evidence that the Priority Mail Express® number was placed on the correspondence before mailing
• Include a true copy of the Priority Mail Express® mailing label showing the “date accepted”

The petition should be filed as soon as the discrepancy is noticed to ensure timely correction of the filing date.

The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318:

“Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.”

The Assignment Division’s responsibilities include:

• Receiving assignment documents for patents and patent applications
• Recording these documents in the USPTO’s assignment database
• Maintaining accurate records of patent ownership and transfers
• Ensuring that assignment information is searchable and accessible
• Processing requests for copies of recorded documents

By centralizing these functions, the USPTO can maintain a comprehensive and up-to-date record of patent ownership separate from the technical aspects of patent prosecution.

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

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

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

When the USPTO cannot locate a patent or application file after a reasonable search, they follow the procedure outlined in 37 CFR 1.251. The key steps are:

1. The Office notifies the applicant or patentee about the unlocatable file.
2. A time period is set for the applicant or patentee to comply with the notice.
3. The applicant or patentee must respond by either:
   • Providing a copy of their record of all correspondence with the Office (except U.S. patent documents)
   • Producing their record for the Office to copy
   • Stating that they do not possess any record of the correspondence

As stated in MPEP 508.04, “37 CFR 1.251 sets forth a procedure for the reconstruction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search.”

The institution of higher education basis allows applicants to qualify for micro entity status if:

1. The applicant’s employer, from which the applicant obtains the majority of their income, is an institution of higher education as defined in the Higher Education Act of 1965, or
2. The applicant has assigned, granted, conveyed, or is obligated to assign, grant or convey, a license or ownership interest in the application to such an institution of higher education.

The applicant must also qualify as a small entity. This basis is implemented in 37 CFR 1.29(d).

The general mailing address for patent applications and patent-related papers is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for correspondence including patent applications, replies to notices of informality, requests for extension of time, notices of appeal, briefs, requests for oral hearings, applications for patent term extensions, reexamination requests, statutory disclaimers, certificates of correction, petitions, and other patent-related correspondence processed by organizations reporting to the Commissioner for Patents.

As stated in MPEP 501: “Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450”

Priority Mail Express® is a service offered by the United States Postal Service (USPS) that can be used to establish a filing date for patent applications and other correspondence with the USPTO. As stated in MPEP 513:

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by Priority Mail Express® and received by the Office is found in section 21(a) of Title 35 of the United States Code.

Using Priority Mail Express® allows applicants to receive a filing date as of the date the correspondence was deposited with USPS, rather than the date it was received by the USPTO.

PALM stands for Patent Application Locator and Monitoring system. While MPEP 303 doesn’t provide a definition, it mentions PALM in the context of assignment information:

“…it is necessary for the examiner to obtain assignment information from PALM.” (MPEP 303)

PALM is an internal USPTO database system used by patent examiners to access and track information about patent applications, including assignment details. It’s a crucial tool for examiners when they need to verify ownership or resolve conflicts related to patent applications.

Indexing against a recorded certificate refers to the process of associating additional patent numbers or application numbers with a document that has already been recorded in the USPTO’s Assignment Division. However, the USPTO does not process such requests for ‘indexing’ or ‘cross-referencing’ unless a new submission is made.

According to MPEP 315, The Office does not process requests for ‘indexing’ or ‘cross-referencing’ additional patent numbers or application numbers against a document, other than an assignment, previously recorded in the Assignment Division.

Form Paragraph 4.03 is used by USPTO examiners in Office actions to notify relevant parties about the death of a patent practitioner. The paragraph reads:

Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.

This paragraph informs recipients that the power of attorney has been terminated and that a new attorney or agent can be appointed.

A title report in patent law is a form used by the Assignment Division of the USPTO to report the name of the owner of an application or patent as shown by their records on a specific date. According to the MPEP:

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made.

These reports are used internally within the USPTO and are not available for direct request by applicants or attorneys.

According to MPEP 508.02, “After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender. If a paper has been scanned into the IFW, ‘return’ of the paper will be accomplished by the Office closing it in IFW.”

This means that any documents received after a patent is granted or an application is abandoned will not be added to the official record. Instead, they will be either physically returned to the sender or, if already scanned into the Image File Wrapper (IFW) system, electronically closed within the system.

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

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

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

When a petition to ‘expunge’ a document is granted, the document is not completely removed from the USPTO assignment records. According to MPEP 323.01(d):

Even if a petition to ‘expunge’ a document is granted with respect to a particular application or patent, the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number, and the image will appear when someone views that reel and frame number.

However, the USPTO takes steps to limit the visibility of the expunged document:

• Links to the application or patent subject to the petition are deleted.
• The document won’t appear in searches for that application or patent number in the Assignment Historical Database.
• A redacted version of the ‘expunged’ document is recorded and appears in the assignment records instead of the original document.

To learn more:

• expungement
• assignment records
• document visibility
• USPTO database

In the event of a postal interruption or emergency:

• An announcement will be placed on the USPTO website at www.uspto.gov
• A notice will be published in the Official Gazette
• These communications will provide instructions about filing patent applications and other papers related to patent applications and patents

The USPTO Director may prescribe rules considering papers or fees filed on the date they would have been deposited with the USPS, but for postal service interruptions or emergencies.

As stated in MPEP 511: “In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

If you lose entitlement to micro entity status, you must:

1. File a notification of loss of entitlement to micro entity status in the application or patent
2. Pay the required fee in the small entity or undiscounted amount, as appropriate

The notification must be filed prior to or at the time of paying the earliest fee after the date on which status as a micro entity is no longer appropriate. As stated in 37 CFR 1.29(i): ‘Payment of a fee in other than the micro entity amount is not sufficient notification that micro entity status is no longer appropriate.’

Micro entities receive a 75% reduction on many USPTO fees, including:

• Filing fees (nonprovisional and provisional)
• Search fees
• Examination fees
• Issue fees
• Appeal fees
• Maintenance fees
• Patent Trial and Appeal Board fees

The micro entity discount applies to most fees ‘for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.’

MPEP 404 is currently marked as ‘[Reserved]’, which means this section is not currently in use but is being held for potential future content or updates. The USPTO may use this section in future revisions of the Manual of Patent Examining Procedure to add new information or guidance related to the representation of applicants or owners in patent matters.

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.

If the USPTO returns a document unrecorded and you believe it represents an unusual case that justifies recordation, you have the option to petition for its recordation. The MPEP provides the following guidance:

“Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document.” (MPEP 313)

To petition:

1. Submit the document to the Office of Petitions
2. Include a petition under 37 CFR 1.181
3. Provide justification for why the document should be recorded

The time limits for responding to a notice under 37 CFR 1.251 vary depending on whether it’s for an application or a patent:

• For applications: The Office sets a three-month period for reply, which is extendable under 37 CFR 1.136(a) by up to three additional months, for a maximum of six months.
• For patents: The Office sets a six-month period for reply, which is not extendable.

MPEP 508.04 states: “The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.” It also notes: “The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent.”

Improperly claiming micro entity status can have serious consequences:

• It may be considered fraud on the USPTO if done knowingly
• It can result in the patent being held unenforceable
• Improperly paid fees will need to be corrected, which may include late fees

MPEP 509.04 warns: ‘Any attempt to fraudulently establish status as a micro entity, or pay fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office. Improperly, and with intent to deceive, establishing status as a micro entity, or paying fees as a micro entity, shall be considered as a fraud practiced or attempted on the Office.’

To qualify for micro entity status, an applicant must meet the following requirements:

• Qualify as a small entity
• Not be named as an inventor on more than 4 previously filed patent applications
• Not have a gross income exceeding 3 times the median household income in the previous calendar year
• Not have assigned, licensed, or be obligated to assign or license rights to an entity that exceeds the gross income limit

Alternatively, an applicant can qualify if they are employed by or have assigned rights to an institution of higher education.

The consequences of failing to respond to a 37 CFR 1.251 notice differ for pending applications and granted patents:

• For pending applications: Failure to reply within the set time period will result in abandonment of the application. MPEP 508.04 cites 37 CFR 1.251(b): “With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.”
• For granted patents: While the patent won’t expire, there may be limitations on the certified copy of the patent file that the Office can produce. MPEP 508.04 states: “While abandonment (or expiration) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent).”

Additionally, for patents involved in proceedings before the Office, action may be taken under 37 CFR 41.128 or 37 CFR 11.18.

The frequency of updates to reserved sections in the MPEP varies and is determined by the USPTO based on several factors:

• Changes in patent laws or regulations
• New court decisions affecting patent examination
• Evolving USPTO policies and procedures
• Feedback from patent examiners and practitioners

Reserved sections may be filled or updated during regular MPEP revisions, which typically occur annually or as needed. However, there is no fixed schedule for updating specific reserved sections, and some may remain reserved for extended periods.

Micro entity status, once properly established, generally remains in effect until:

• A fee is paid in the small entity or undiscounted amount
• A notification of loss of entitlement to micro entity status is filed
• The issue fee or a maintenance fee is due

However, the applicant has a continued obligation to verify eligibility for micro entity status each time a fee is paid. As stated in 37 CFR 1.29(g): ‘a fee may be paid in the micro entity amount only if status as a micro entity as defined in paragraph (a) or (d) of this section is appropriate on the date the fee is being paid.’

The filing date for Priority Mail Express® submissions is typically determined by the “date accepted” on the Priority Mail Express® mailing label. According to MPEP 513:

Office personnel will routinely look to the Priority Mail Express® mailing label, and stamp the “date accepted” or other official USPS notation as the filing date of the correspondence.

If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. It’s important to note that the “date accepted” must be completed by the USPS, not by the applicant.

For micro entity status, gross income is determined as follows:

• Based on the calendar year preceding the year a fee is paid
• Uses the definition of gross income in section 61(a) of the Internal Revenue Code
• Compared to three times the median household income as reported by the Bureau of the Census
• For non-US income, converted using the average currency exchange rate for the relevant calendar year

The USPTO website provides the current maximum qualifying gross income limit.

When the USPTO is notified of the death of a sole patent practitioner of record, they continue to hold correspondence with the deceased practitioner’s office. However, the USPTO also mails a copy of the Office action to the person who originally appointed the practitioner. This ensures that the applicant or owner is informed of ongoing patent matters.

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 presence of reserved sections like MPEP 404 does not directly affect patent examination. These sections are placeholders and do not contain any substantive information or guidance for examiners. However, their existence may indirectly impact the examination process in the following ways:

• They maintain consistent numbering in the MPEP, aiding navigation and referencing
• They allow for future expansion of examination guidelines without major restructuring
• They serve as potential indicators of areas where the USPTO may develop new policies or procedures

Patent examiners rely on active, non-reserved sections of the MPEP, current USPTO policies, and relevant laws and regulations to conduct examinations.

The application filing limit for micro entity status works as follows:

• An applicant must not have been named as an inventor on more than 4 previously filed patent applications
• This limit excludes provisional applications, foreign applications, and PCT applications where the basic national fee was not paid
• Applications filed as a result of previous employment where rights were assigned don’t count towards the limit

MPEP 509.04(a) clarifies: ‘It does not matter how long ago the previous applications were filed or whether the previously filed applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.’

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)

To certify micro entity status, you must file a certification form with the USPTO. The USPTO provides two forms:

• Form PTO/SB/15A for certifying under the gross income basis
• Form PTO/SB/15B for certifying under the institution of higher education basis

The certification must be signed by an authorized party as defined in 37 CFR 1.33(b). It should be filed prior to or at the time of paying the first fee as a micro entity.

The USPTO provides an online database for searching patent assignment records. According to MPEP 301.01, ‘Assignment records, digests, and indexes are available in the public search room of the USPTO.’ To search online:

• Visit the USPTO Patent Assignment Search page
• Enter relevant information such as patent number, assignee name, or assignor name
• Review the search results for the desired assignment information

The MPEP states, ‘The assignment records of patents and applications are open to public inspection and copies of these records may be obtained upon request and payment of the fee set forth in 37 CFR 1.19(b)(3).’

You can petition the USPTO Director to consider correspondence as filed on a particular date if it was returned or refused by the USPS due to a Priority Mail Express® interruption or emergency. The petition process is outlined in 37 CFR 1.10(g) and (h):

1. File the petition promptly after becoming aware of the return or refusal
2. Include the original correspondence or a copy showing the Priority Mail Express® mailing label number
3. Provide a copy of the Priority Mail Express® mailing label showing the “date accepted” (for returned mail)
4. Include a statement establishing the original deposit attempt and that the correspondence is the original or a true copy
5. The USPTO may require additional evidence to verify the interruption or emergency

As stated in MPEP 511: “37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspondence that was returned by the USPS due to an interruption or emergency in Priority Mail Express® service considered as filed on a particular date in the Office.”

When an applicant’s patent attorney or agent is suspended, they can find a new registered patent attorney or agent by:

1. Consulting the USPTO website at https://oedci.uspto.gov/OEDCI/
2. Calling the Office of Enrollment and Discipline at (571) 272-4097

This information is provided in Form Paragraph 4.07 of MPEP § 407.

Patent applications are initially processed by the USPTO through electronic scanning and loading into the Image File Wrapper (IFW) system. According to MPEP 508, “All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. Once documents are loaded into the IFW system, examiners, technical support staff, and other Office personnel will perform further processing and examination using the IFW system.”

No, the USPTO does not determine the legal effect of recorded documents on patent ownership at the time of recordation. The MPEP clearly states:

“The recordation of a document is not a determination of the effect of the document on the chain of title. The determination of what, if any, effect a document has on title will be made by the Office at such times as ownership must be established to permit action to be taken by the purported assignee in connection with a patent or an application.” (MPEP 313)

This means:

• Recordation is primarily for public notice
• The USPTO will evaluate ownership when necessary for specific actions
• Parties should not assume recordation equates to USPTO approval of ownership claims

No, the USPTO cannot assist in selecting a patent practitioner. According to MPEP 401, “The Office cannot aid in the selection of a patent practitioner.” However, the USPTO does provide resources for finding registered patent attorneys and agents:

• A listing is available at www.uspto.gov/FindPatentAttorney
• Applicants can request a list of registered practitioners in their area by writing to the Office of Enrollment and Discipline (OED)

Yes, foreign applicants can qualify for micro entity status if they meet all the requirements. The USPTO states in MPEP 509.04(a):

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States.

For applicants with income in foreign currency, 37 CFR 1.29(c) specifies: ‘If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.’

Expungement of assignment records is extremely rare and does not result in the complete removal of a document from the assignment records. According to MPEP 323.01(d), petitions to expunge are granted only if:

• Normal corrective procedures are inadequate
• The integrity of assignment records won’t be affected

Even if granted, “the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number.” However, links to the specific application or patent will be deleted from the Assignment Historical Database. A redacted version of the ‘expunged’ document must be recorded in its place.

Yes, arbitration awards in patent disputes can be modified under certain circumstances. According to 35 U.S.C. 294(c):

‘The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judgment rendered by a court of competent jurisdiction from which no appeal can or has been taken, such award may be modified by any court of competent jurisdiction upon application by any party to the arbitration.’

If an award is modified, the party requesting the modification must file a notice with the USPTO, as per 37 CFR 1.335(b).

No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office. (MPEP 406)

Are patent assignment records publicly accessible after recording at the USPTO?

Yes, patent assignment records become publicly accessible after they are recorded at the USPTO. The MPEP 302.01 states: ‘Assignment documents submitted for recording are scanned and stored in a public database.’

This means:

• Anyone can access recorded assignment information
• The public database allows searching for patent ownership details
• Transparency in patent ownership is maintained

Public accessibility of these records is crucial for maintaining transparency in patent ownership and facilitating due diligence in patent transactions. Interested parties can search and retrieve assignment information through the USPTO’s Assignment Search database.

To learn more:

• patent assignment
• public records
• USPTO database

The mailing address for trademark applications and trademark-related papers filed on paper is:

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

This address should be used for all trademark-related documents filed on paper, except for:

• Documents sent to the Assignment Recordation Branch for recordation
• Requests for copies of trademark documents
• Certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e)

According to 37 CFR 2.190(a): “In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”

The mailing address for trademark applications and trademark-related papers filed on paper is:

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

This address should be used for all trademark-related documents filed on paper, except for:

• Documents sent to the Assignment Recordation Branch for recordation
• Requests for copies of trademark documents
• Certain documents filed under the Madrid Protocol as specified in 37 CFR 2.190(e)

According to 37 CFR 2.190(a): “In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.”