Patent Law FAQ

The Manual of Patent Examining Procedure (MPEP) is regularly updated to reflect changes in patent laws, rules, and procedures. According to MPEP 101:

The Manual is updated periodically to include changes in patent laws and rules and also changes in Patent and Trademark Office procedures.

While the MPEP doesn’t specify an exact frequency for updates, they typically occur:

• Multiple times per year to incorporate new policies and procedures
• After significant changes in patent laws or regulations
• When court decisions impact patent examination practices

Users should always refer to the most recent version of the MPEP available on the USPTO website for the most up-to-date information.

For more information on MPEP updates, visit: MPEP updates.

For more information on patent law changes, visit: patent law changes.

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

The USPTO follows a strict procedure for handling telephone and in-person requests for information about unpublished pending or abandoned patent applications:

1. Obtain the caller’s full name, application number, and telephone number
2. Verify the caller’s identity and authority to receive information
3. Check Patent Data Portal or the application file to verify releasable information
4. Return the call using a verified telephone number

Information is only released to authorized individuals, such as the patent practitioner of record, inventor, applicant, or authorized representative of the assignee of record.

Access to information about unpublished patent applications is generally restricted. However, according to MPEP 101, there are specific circumstances under which such information may be accessed:

1. If you are the applicant, an inventor, the assignee of record, or the attorney or agent of record, you may be able to access information about the application.
2. If the application is identified in a published patent document or in another application as specified in 37 CFR 1.14(a)(1)(i) through (a)(1)(vi), certain status information may be available to the public.
3. In some cases, a petition for access or a power to inspect may be required to access information about an unpublished application.

It’s important to note that the USPTO has strict procedures for verifying the identity and authority of individuals requesting information about unpublished applications to maintain confidentiality.

For more information on unpublished applications, visit: unpublished applications.

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

If a suspended practitioner is given power to inspect a patent application, the USPTO will not accept it. MPEP 105 clearly states: “Power to inspect given to such an attorney or agent will not be accepted.” This means that even if an applicant or inventor attempts to grant inspection rights to a suspended practitioner, the USPTO will reject this authorization and prevent the suspended practitioner from accessing the application materials.

To learn more:

• Power to Inspect
• Suspended Practitioners
• USPTO Procedures
• Patent Application Access
• Rejection of Authorization

No, a suspended or excluded practitioner cannot inspect patent applications. According to MPEP 105, “Power to inspect given to such an attorney or agent will not be accepted.” This means that the USPTO will not allow suspended or excluded practitioners to access or review patent applications, even if they are given permission by the applicant.

To learn more:

• Patent Applications
• Suspended Practitioners
• Excluded Practitioners
• USPTO Procedures
• Patent Inspection

Yes, there is one exception to the communication ban. According to MPEP 105, USPTO employees may communicate with a suspended or excluded practitioner “unless it is one in which said attorney or agent is an inventor or the applicant.” This means that if the suspended or excluded practitioner is listed as an inventor or is the applicant on a patent application, USPTO employees are allowed to communicate with them regarding that specific application.

To learn more:

• Communication Exceptions
• Suspended Practitioners
• Excluded Practitioners
• Inventor-Applicant
• USPTO Procedures

Access restrictions on patent applications change significantly after publication. According to MPEP 106, “Of course, after the application has published pursuant to 35 U.S.C. 122(b), the application will be available to the public and any restriction on the inventor to access his or her application previously granted will no longer be in effect.”

This means that once a patent application is published, typically 18 months after the earliest filing date, any previously imposed restrictions on access, including those on the inventor, are lifted. The application becomes publicly accessible, aligning with the USPTO’s goal of promoting transparency in the patent process.

For more information on public availability, visit: public availability.

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

The process for obtaining a foreign filing license is part of the USPTO’s screening procedure for patent applications. The MPEP states:

A third function of the screening procedure is to process foreign filing license petitions under37 CFR 5.12(a). SeeMPEP § 140.

The foreign filing license is automatically granted in most cases as part of the application filing process. However, if the application contains subject matter that requires further review, the applicant may need to petition for a foreign filing license separately.

To obtain a foreign filing license, applicants should:

1. File a patent application with the USPTO
2. Wait for the automatic screening process to complete
3. If a license is not automatically granted, file a petition under 37 CFR 5.12(a)
4. Provide any additional information requested by the USPTO

It’s important to note that filing an application abroad without first obtaining a foreign filing license can have serious consequences, including abandonment of the U.S. application and potential criminal penalties.

For more information on foreign filing license, visit: foreign filing license.

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

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

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

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

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

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

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

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

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

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

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

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

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

Papers related to property rights under the Atomic Energy Act or National Aeronautics and Space Act require special handling. According to MPEP 150:

Any papers pertaining to property rights under section 152 of the Atomic Energy Act, 42 U.S.C. 2182, (DOE), or section 305(c) or the National Aeronautics and Space Act, 42 U.S.C. 2457, (NASA), that have not been associated with the application file, or have not been made of record in the file and processed by the Licensing and Review section, must be sent to the Licensing and Review section immediately.

Key points:

• Papers related to property rights under these acts must be properly associated with the application file
• If not already processed by the Licensing and Review section, they must be sent there immediately
• This ensures proper handling and review of sensitive information related to atomic energy or space activities

For more information on National Aeronautics and Space Act, visit: National Aeronautics and Space Act.

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

The USPTO has a process for handling defective property rights statements submitted in response to DOE or NASA review requests. According to MPEP 150:

If the statement submitted during this period is defective, another letter is sent from Licensing and Review detailing the deficiencies and giving applicant another opportunity to respond during this period of informal correspondence.

The process typically involves:

• Initial review of the submitted statement
• If defects are found, a letter is sent detailing the deficiencies
• The applicant is given another opportunity to respond and correct the statement
• If repeated efforts to correct a defective statement show lack of cooperation, a formal request with a 30-day statutory deadline may be issued

It’s crucial for applicants to address any deficiencies promptly to avoid potential abandonment of their application.

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

The USPTO typically does not send a filing receipt for a Continued Prosecution Application (CPA). This practice is mentioned in MPEP ¶ 2.35, which states:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The reason for this is that a CPA is a continuation of an existing application rather than an entirely new filing. The USPTO communicates the acceptance of the CPA through other means, typically in the first Office action on the CPA. This approach streamlines the process and reduces redundant paperwork.

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

The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:

In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application.

Key points about the retrieval timing:

• The first attempt is typically made when the application is assigned to an examiner.
• Retrieval occurs after the Office of Patent Application Processing completes its review.
• Applicants should check the Private PAIR system to confirm successful retrieval.
• A successful retrieval usually takes about one week to complete.

To learn more:

• PDX
• USPTO Procedures
• Foreign Applications
• Retrieval Timing

To claim the benefit of a prior application’s filing date for a divisional application, applicants must follow specific procedures. The MPEP ¶ 2.01 provides guidance:

Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.

This means applicants should:

• Review 35 U.S.C. 120 for statutory requirements
• Consult MPEP § 211 for detailed guidance on claiming benefit
• Follow the procedures outlined in 37 CFR 1.78 for claiming benefit of an earlier-filed application

It’s crucial to properly establish the benefit claim to secure the earlier filing date for the divisional application.

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

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

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

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

Continued Prosecution Applications (CPAs) are only available for design patent applications. If an improper CPA is filed for a utility or plant application, the following occurs:

• For applications filed on or after June 8, 1995, the improper CPA is treated as a Request for Continued Examination (RCE) under 37 CFR 1.114
• If the requirements for an RCE are not met, the Office will send a Notice of Improper Request for Continued Examination (RCE)
• For applications filed before June 8, 1995, the improper CPA cannot be treated as an RCE
• The applicant will be notified of the improper CPA

MPEP 201.06(d) states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed. It further notes: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

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

For more information on utility patents, visit: utility patents.

After a Continued Prosecution Application (CPA) is established, the USPTO proceeds with examination. According to MPEP ¶ 2.35:

Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.

This means that once the CPA is established, the examiner will review the application and issue an Office action. It’s important to note that applicants are not separately notified of the abandonment of the parent application, nor is a filing receipt normally sent for a CPA.

For more information on CPA, visit: CPA.

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

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

There are two primary methods for requesting the deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications:

• Letter to the examiner: You can submit a letter directly to the patent examiner handling your application.
• Request for corrected filing receipt: You can file a formal request for a corrected filing receipt with the USPTO.

These methods are outlined in MPEP § 201, ¶ 2.32, which states:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt.

It’s important to note that this procedure is specific to design applications and is not applicable to utility patents.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

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

Continued Prosecution Applications (CPAs) have several key differences from regular continuation applications filed under 37 CFR 1.53(b):

• CPAs are only available for design applications, not utility or plant applications
• CPAs use the same application number as the prior application
• CPAs do not require a new specification or drawings to be filed
• The filing requirements for a CPA are minimal compared to a regular continuation
• CPAs are typically processed faster than regular continuations
• Filing a CPA automatically abandons the prior application

MPEP 201.06(d) states: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).

For more information on design patents, visit: design patents.

For more information on patent application types, visit: patent application types.

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

To ensure proper processing of priority papers, the MPEP recommends marking them with specific information. According to MPEP 215.03:

It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data.

This practice helps prevent priority papers from becoming separated from their corresponding U.S. applications, which can cause severe problems for both the Office and the applicant. By adhering to this suggestion, applicants can significantly reduce potential issues in processing priority claims.

To learn more:

• priority papers
• application number
• document processing
• USPTO procedures

How should applicants submit written status inquiries to the USPTO?

When submitting written status inquiries to the USPTO, applicants should follow these guidelines:

• Include the application serial number, filing date, and art unit (if known).
• Provide a specific description of the precise information requested.
• Include any necessary authorization for release of information.
• Submit the inquiry to the appropriate USPTO office or Technology Center.

MPEP 203.08 advises: ‘Written status requests will be answered in all cases.’ However, it also notes that ‘Telephone inquiries regarding the status of applications, other than those in secrecy order and those under 35 U.S.C. 181, may be made by persons entitled to the information, to the appropriate USPTO staff member.’

To learn more:

• written status inquiries
• USPTO procedures
• application information

According to MPEP ¶ 2.35, the USPTO treats ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. The MPEP explicitly states:

Any ‘conditional’ request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.

This means that even if an applicant submits a CPA request with conditions attached, the USPTO will process it as a standard, unconditional CPA request. This policy ensures clarity and consistency in the application process.

For more information on CPA, visit: CPA.

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

How does the USPTO handle status inquiries for unpublished applications?

The USPTO has specific procedures for handling status inquiries for unpublished applications:

• Status information is only provided to applicants, their attorneys or agents, or assignees of record.
• Third parties cannot receive status information about unpublished applications.
• The USPTO may confirm the filing date, application number, and whether the application is pending, abandoned, or patented.

As stated in MPEP 203.08, ‘For unpublished applications, the Office will not give status information to the public without the authorization of the applicant, attorney or agent of record or the assignee of record.’

To learn more:

• unpublished applications
• status inquiries
• USPTO procedures

The USPTO treats a proper priority claim to an application filed in a participating foreign intellectual property office as a request to obtain a copy of the foreign application. According to MPEP 215.01:

The Office treats a proper priority claim under 37 CFR 1.55 to an application filed in a participating foreign intellectual property office as a request that the Office obtain a copy of the foreign application from the participating intellectual property office.

This means that applicants generally do not need to file a separate request for the USPTO to retrieve the priority document if it’s from a participating office.

To learn more:

• Priority Claims
• USPTO Procedures
• Foreign Applications
• PDX

The filing date of a Continued Prosecution Application (CPA) is determined by the date on which a proper request for a CPA is filed. Specifically, the MPEP states:

The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed.

It’s important to note that the CPA request must be on a separate paper. If the request is not on a separate paper, it will not be considered a proper CPA request and will not receive a filing date.

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

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

Filing a Continued Prosecution Application (CPA) has implications for confidentiality and public access to application information:

• Filing a CPA is construed as a waiver of confidentiality under 35 U.S.C. 122
• Members of the public entitled to access the prior application may be given similar access to the CPA
• This waiver extends to any continuing applications in the chain of CPAs
• Certified copies of CPAs will include the most recent non-continued prosecution application in the chain

MPEP 201.06(d) states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

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

When a Continued Prosecution Application (CPA) request for a design patent application is deemed unacceptable, the examiner uses a specific form paragraph to inform the applicant. According to MPEP ¶ 2.31, the examiner note states:

“Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.”

The form paragraph includes:

• An acknowledgment of the CPA request receipt
• The filing date of the paper containing the request
• The Application Number identified in the CPA request
• An explanation of why the request is not acceptable
• A statement that no CPA has been established

This formal communication ensures that the applicant is clearly informed about the status of their CPA request and the reasons for its non-acceptance.

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

When a Continued Prosecution Application (CPA) request for a design patent application is not compliant with the regulations, the examiner informs the applicant using a specific form paragraph. The MPEP provides guidance on this:

Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.

The form paragraph includes:

• Acknowledgment of the CPA request receipt
• The filing date of the paper containing the request
• The application number identified in the CPA request
• Explanation of why the request is not acceptable
• Statement that no CPA has been established

This standardized approach ensures clear communication between the USPTO and the applicant regarding the status of their CPA request.

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

Filing a Continued Prosecution Application (CPA) has several effects on the examination process:

• The CPA is treated as a continuation of the prior application for examination purposes
• Information Disclosure Statements from the prior application are automatically considered in the CPA
• Affidavits and declarations from the prior application carry over to the CPA
• A terminal disclaimer filed in the parent application carries over to the CPA
• For examination priority, CPAs are treated as ‘amended’ applications rather than ‘new’ applications if an Office action was issued in the prior application

MPEP 201.06(d) notes: For examination priority purposes only, the USPTO will treat continuation CPAs as if they were ‘amended’ applications (as of the CPA filing date) and not as ‘new’ applications. This treatment is limited to CPAs in which the prior application has an Office action issued by the examiner.

For more information on design patents, visit: design patents.

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

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

To request deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications, you need to file a proper request with the USPTO. According to MPEP § 201, specifically paragraph 2.32:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt. However, it should be noted that this is only available for design applications.

This process is specific to design applications and allows for the correction of inventorship in CPAs.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

The USPTO handles improper Continued Prosecution Application (CPA) requests in the following ways:

1. For utility or plant applications filed on or after July 14, 2003, improper CPA requests are treated as requests for continued examination (RCE) under 37 CFR 1.114 if the application has a filing date on or after June 8, 1995.
2. If the improper CPA doesn’t satisfy RCE requirements, it’s treated as an improper RCE, and the time period set in the last Office action continues to run.
3. For applications with a filing date before June 8, 1995, the Office will notify the applicant of the improper CPA by mailing a notice.
4. If an examiner discovers an improperly processed CPA, they should immediately notify a supervisory applications examiner (SAE) or other technical support staff to correct the application records.
5. The Office will not convert an improper CPA into an application under 37 CFR 1.53(b) unless there are extenuating circumstances.

As stated in the MPEP: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the TC who will reprocess the CPA and correct the application records as appropriate.

It’s important to note that if the application becomes abandoned due to an improper CPA, the applicant may need to file a petition under 37 CFR 1.137 to revive the application and pay the required fees.

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

For more information on RCE, visit: RCE.

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

The USPTO has specific procedures for handling Congressional and other official inquiries to ensure uniformity and compliance with Department of Commerce directives:

• Inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies are typically processed through specialized offices.
• The Office of Policy and International Affairs and/or the Office of Governmental Affairs usually handle these inquiries.
• Specific types of correspondence are directed to appropriate offices for immediate attention.

According to the MPEP: Correspondence and inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies normally are cleared by the USPTO’s Office of Policy and International Affairs and/or the Office of Governmental Affairs. (MPEP 203.08(a))

For specific types of inquiries:

• Embassies, Office of the U.S. Trade Representative, Department of State: Contact the Administrator of the Office of Policy and International Affairs at 571-272-9300.
• Congress or the White House: Contact the Director of the Office of Governmental Affairs at 571-272-7300.

This process ensures uniformity in the handling of contacts from the indicated sources, and also so that compliance with directives of the Department of Commerce is attained.

To learn more:

• Congressional inquiries
• official inquiries
• USPTO procedures
• Office of Policy and International Affairs
• Office of Governmental Affairs

Congressional and other official inquiries about patent applications are handled through specific channels at the USPTO. According to MPEP 203.08(a):

Correspondence and inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies normally are cleared by the USPTO’s Office of Policy and International Affairs and/or the Office of Governmental Affairs.

This procedure ensures uniformity in handling contacts from these sources and compliance with Department of Commerce directives. Specific instructions are provided for transmitting such inquiries to the appropriate offices within the USPTO.

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

After an application becomes abandoned, it is no longer pending and is removed from the USPTO’s active files. The application file, however, is retained in storage for a period as determined by the USPTO. During this retention period, certain actions may still be possible:

1. The applicant may file a petition to revive the application if the abandonment was unintentional or unavoidable.
2. The application may serve as a basis for claiming benefit in a later-filed application, subject to certain conditions.
3. The application may be used as prior art against other applications.
4. The public may request access to the application file if it has been opened to public inspection.

It’s important to note that once an application is abandoned, it cannot be used as the basis for a statutory invention registration. For more details on abandoned applications, see MPEP 203.05 and MPEP 711.

The USPTO typically does not send a filing receipt for a Continued Prosecution Application (CPA). This practice is mentioned in MPEP ¶ 2.35, which states:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The reason for this is that a CPA is a continuation of an existing application rather than an entirely new filing. The USPTO communicates the acceptance of the CPA through other means, typically in the first Office action on the CPA. This approach streamlines the process and reduces redundant paperwork.

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

To claim the benefit of a prior application’s filing date for a divisional application, applicants must follow specific procedures. The MPEP ¶ 2.01 provides guidance:

Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.

This means applicants should:

• Review 35 U.S.C. 120 for statutory requirements
• Consult MPEP § 211 for detailed guidance on claiming benefit
• Follow the procedures outlined in 37 CFR 1.78 for claiming benefit of an earlier-filed application

It’s crucial to properly establish the benefit claim to secure the earlier filing date for the divisional application.

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

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

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

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

Continued Prosecution Applications (CPAs) are only available for design patent applications. If an improper CPA is filed for a utility or plant application, the following occurs:

• For applications filed on or after June 8, 1995, the improper CPA is treated as a Request for Continued Examination (RCE) under 37 CFR 1.114
• If the requirements for an RCE are not met, the Office will send a Notice of Improper Request for Continued Examination (RCE)
• For applications filed before June 8, 1995, the improper CPA cannot be treated as an RCE
• The applicant will be notified of the improper CPA

MPEP 201.06(d) states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed. It further notes: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

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

For more information on utility patents, visit: utility patents.

After a Continued Prosecution Application (CPA) is established, the USPTO proceeds with examination. According to MPEP ¶ 2.35:

Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.

This means that once the CPA is established, the examiner will review the application and issue an Office action. It’s important to note that applicants are not separately notified of the abandonment of the parent application, nor is a filing receipt normally sent for a CPA.

For more information on CPA, visit: CPA.

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

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

There are two primary methods for requesting the deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications:

• Letter to the examiner: You can submit a letter directly to the patent examiner handling your application.
• Request for corrected filing receipt: You can file a formal request for a corrected filing receipt with the USPTO.

These methods are outlined in MPEP § 201, ¶ 2.32, which states:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt.

It’s important to note that this procedure is specific to design applications and is not applicable to utility patents.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

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

Continued Prosecution Applications (CPAs) have several key differences from regular continuation applications filed under 37 CFR 1.53(b):

• CPAs are only available for design applications, not utility or plant applications
• CPAs use the same application number as the prior application
• CPAs do not require a new specification or drawings to be filed
• The filing requirements for a CPA are minimal compared to a regular continuation
• CPAs are typically processed faster than regular continuations
• Filing a CPA automatically abandons the prior application

MPEP 201.06(d) states: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).

For more information on design patents, visit: design patents.

For more information on patent application types, visit: patent application types.

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

According to MPEP ¶ 2.35, the USPTO treats ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. The MPEP explicitly states:

Any ‘conditional’ request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.

This means that even if an applicant submits a CPA request with conditions attached, the USPTO will process it as a standard, unconditional CPA request. This policy ensures clarity and consistency in the application process.

For more information on CPA, visit: CPA.

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

The filing date of a Continued Prosecution Application (CPA) is determined by the date on which a proper request for a CPA is filed. Specifically, the MPEP states:

The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed.

It’s important to note that the CPA request must be on a separate paper. If the request is not on a separate paper, it will not be considered a proper CPA request and will not receive a filing date.

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

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

Filing a Continued Prosecution Application (CPA) has implications for confidentiality and public access to application information:

• Filing a CPA is construed as a waiver of confidentiality under 35 U.S.C. 122
• Members of the public entitled to access the prior application may be given similar access to the CPA
• This waiver extends to any continuing applications in the chain of CPAs
• Certified copies of CPAs will include the most recent non-continued prosecution application in the chain

MPEP 201.06(d) states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

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

When a Continued Prosecution Application (CPA) request for a design patent application is deemed unacceptable, the examiner uses a specific form paragraph to inform the applicant. According to MPEP ¶ 2.31, the examiner note states:

“Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.”

The form paragraph includes:

• An acknowledgment of the CPA request receipt
• The filing date of the paper containing the request
• The Application Number identified in the CPA request
• An explanation of why the request is not acceptable
• A statement that no CPA has been established

This formal communication ensures that the applicant is clearly informed about the status of their CPA request and the reasons for its non-acceptance.

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

When a Continued Prosecution Application (CPA) request for a design patent application is not compliant with the regulations, the examiner informs the applicant using a specific form paragraph. The MPEP provides guidance on this:

Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.

The form paragraph includes:

• Acknowledgment of the CPA request receipt
• The filing date of the paper containing the request
• The application number identified in the CPA request
• Explanation of why the request is not acceptable
• Statement that no CPA has been established

This standardized approach ensures clear communication between the USPTO and the applicant regarding the status of their CPA request.

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

Filing a Continued Prosecution Application (CPA) has several effects on the examination process:

• The CPA is treated as a continuation of the prior application for examination purposes
• Information Disclosure Statements from the prior application are automatically considered in the CPA
• Affidavits and declarations from the prior application carry over to the CPA
• A terminal disclaimer filed in the parent application carries over to the CPA
• For examination priority, CPAs are treated as ‘amended’ applications rather than ‘new’ applications if an Office action was issued in the prior application

MPEP 201.06(d) notes: For examination priority purposes only, the USPTO will treat continuation CPAs as if they were ‘amended’ applications (as of the CPA filing date) and not as ‘new’ applications. This treatment is limited to CPAs in which the prior application has an Office action issued by the examiner.

For more information on design patents, visit: design patents.

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

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

To request deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications, you need to file a proper request with the USPTO. According to MPEP § 201, specifically paragraph 2.32:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt. However, it should be noted that this is only available for design applications.

This process is specific to design applications and allows for the correction of inventorship in CPAs.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

The USPTO handles improper Continued Prosecution Application (CPA) requests in the following ways:

1. For utility or plant applications filed on or after July 14, 2003, improper CPA requests are treated as requests for continued examination (RCE) under 37 CFR 1.114 if the application has a filing date on or after June 8, 1995.
2. If the improper CPA doesn’t satisfy RCE requirements, it’s treated as an improper RCE, and the time period set in the last Office action continues to run.
3. For applications with a filing date before June 8, 1995, the Office will notify the applicant of the improper CPA by mailing a notice.
4. If an examiner discovers an improperly processed CPA, they should immediately notify a supervisory applications examiner (SAE) or other technical support staff to correct the application records.
5. The Office will not convert an improper CPA into an application under 37 CFR 1.53(b) unless there are extenuating circumstances.

As stated in the MPEP: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the TC who will reprocess the CPA and correct the application records as appropriate.

It’s important to note that if the application becomes abandoned due to an improper CPA, the applicant may need to file a petition under 37 CFR 1.137 to revive the application and pay the required fees.

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

For more information on RCE, visit: RCE.

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

After an application becomes abandoned, it is no longer pending and is removed from the USPTO’s active files. The application file, however, is retained in storage for a period as determined by the USPTO. During this retention period, certain actions may still be possible:

1. The applicant may file a petition to revive the application if the abandonment was unintentional or unavoidable.
2. The application may serve as a basis for claiming benefit in a later-filed application, subject to certain conditions.
3. The application may be used as prior art against other applications.
4. The public may request access to the application file if it has been opened to public inspection.

It’s important to note that once an application is abandoned, it cannot be used as the basis for a statutory invention registration. For more details on abandoned applications, see MPEP 203.05 and MPEP 711.

Congressional and other official inquiries about patent applications are handled through specific channels at the USPTO. According to MPEP 203.08(a):

Correspondence and inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies normally are cleared by the USPTO’s Office of Policy and International Affairs and/or the Office of Governmental Affairs.

This procedure ensures uniformity in handling contacts from these sources and compliance with Department of Commerce directives. Specific instructions are provided for transmitting such inquiries to the appropriate offices within the USPTO.

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

Assignment documents are not placed directly in patent application files to ensure proper recording and maintenance of ownership records. MPEP 318 states:

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

This procedure serves several purposes:

• It centralizes the recording of ownership information
• It ensures that assignments are properly recorded and searchable
• It keeps the main application file focused on technical and procedural aspects of the patent application
• It allows the Assignment Division to maintain a separate database of patent ownership information

MPEP 318 provides clear guidance on where assignment documents should be forwarded for recording. According to the manual:

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

This means that when submitting assignment documents, they should be sent to the USPTO’s Assignment Division, which is responsible for recording and maintaining records of patent ownership changes.

What types of evidence can be used to establish assignee ownership in pre-AIA applications?

For pre-AIA applications (filed before September 16, 2012), assignees can use various types of evidence to establish ownership, including:

• Assignment documents
• Corporate merger documentation
• Patent purchase agreements
• Court orders
• Joint research agreements

The MPEP 324 states: “The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee.” This means that in addition to proving ownership, the assignee must also demonstrate the authority of the person acting on their behalf.

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

For more information on pre-AIA, visit: pre-AIA.

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

If there’s an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the procedure differs from correcting cover sheet errors. According to MPEP 323.01(b):

1. The party responsible for the erroneous document (e.g., the assignor) must either:
   • Create and record a new document, or
   • Make corrections to the original document and re-record it
2. If the assignor is unavailable, the assignee may:
   • Submit an affidavit or declaration identifying the error and requesting correction
   • Include a copy of the originally recorded papers
   • Provide a new cover sheet
   • Pay the required fee for each application or patent to be corrected (37 CFR 3.41)

This process ensures that errors in the actual assignment document are properly addressed and corrected in the USPTO records.

To learn more:

• assignment document errors
• patent assignment
• recordation correction
• USPTO procedures

The USPTO provides specific procedures for resubmitting returned patent documents. According to MPEP 317.01:

“The procedure set forth in § 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service.”

This means that when resubmitting corrected documents, you can use either the Certificate of Mailing procedure (37 CFR 1.8) or the Express Mail procedure (37 CFR 1.10) to potentially preserve the original filing date based on the postal deposit date.

To learn more:

• patent document resubmission
• USPTO procedures
• postal procedures

Keeping assignment documents separate from patent application files is significant for several reasons. MPEP 318 mandates this separation:

“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 significance of this practice includes:

• Maintaining clear distinction between technical content and ownership information
• Ensuring proper recording and indexing of assignment documents
• Facilitating easier searches for patent ownership information
• Reducing the risk of confidential ownership information being inadvertently disclosed
• Allowing for more efficient management of ownership changes throughout a patent’s lifecycle
• Enabling the Assignment Division to specialize in handling ownership matters

This separation streamlines both the patent examination process and the management of patent ownership records.

The Assignment Division plays a crucial role in handling patent assignments at the USPTO. As indicated in 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 submitted for recording
• Properly recording and maintaining assignment records
• Ensuring the accuracy and accessibility of ownership information
• Managing the assignment database separate from application and patent files

This specialized division ensures that patent ownership information is correctly documented and readily available when needed.

To learn more:

• Assignment Division
• patent assignments
• document recording
• USPTO procedures

According to MPEP 317.01, the recording date for a patent document is defined as follows:

“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.”

This means that the recording date is established when a document that complies with all the necessary requirements is received by the United States Patent and Trademark Office (USPTO).

To learn more:

• patent recording
• document filing
• USPTO procedures

Title reports play a specific role in patent reexamination procedures. The MPEP mentions:

For example, a title report is requested by the Reexamination Preprocessing Staff when a request for reexamination is filed.

This suggests that title reports are used to verify the current owner of a patent when a reexamination is initiated, ensuring that the proper parties are involved in the process.

While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:

1. Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
2. Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
   • The former name (in the space for the party conveying the interest)
   • The new name (in the space for the party receiving the interest)
   • A description of the interest conveyed as “Name Change”
   • Identification of the affected patents or applications
3. Submit the document and cover sheet to the USPTO for recordation, along with any required fee
4. The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)

As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.

It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.

The process for issuing a patent to a non-applicant assignee involves the following steps:

1. A request for issuance to the assignee must be submitted with the payment of the issue fee.
2. The assignment must have been previously recorded in the USPTO or filed for recordation.
3. If the request is submitted after the issue fee payment, additional requirements apply, including a request for a certificate of correction and associated fees.

According to 37 CFR 3.81(a): An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office.

To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either:

• Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence was or is being submitted for recordation.
• Providing a statement specifying where such evidence is recorded in the USPTO (by reel and frame number).

As stated in the MPEP: The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. This ensures that the assignee has the right to take action in the application.

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

For more information on pre-AIA applications, visit: pre-AIA applications.

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

What is the process for correcting errors in recorded assignment documents?

The process for correcting errors in recorded assignment documents involves the following steps:

• For minor errors: You can file a corrective document stating the nature of the error, along with the required fee.
• For more significant errors: You may need to file a new assignment document with the correct information.
• In all cases: Include a cover sheet stating that the document is being submitted to correct an error in a previously recorded assignment document.

According to MPEP 302: Errors in a recorded assignment document will be corrected by the Assignment Division provided a ‘corrective document’ is submitted. The USPTO recommends contacting the Assignment Recordation Branch for specific guidance on your situation.

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

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

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

To correct assignee information on an issued patent, you must follow these steps:

1. Submit a request for a certificate of correction under 37 CFR 1.323.
2. Ensure that a request under 37 CFR 3.81(b) has been granted.
3. Confirm that the assignment was submitted for recordation before the patent was issued.

According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”

The request should be directed to the Office of Petitions and include:

• The processing fee required by 37 CFR 1.17(i)
• A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
• A statement that the assignment was submitted for recordation before the patent was issued
• A request for a certificate of correction under 37 CFR 1.323 with the associated fee

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

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

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

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

To correct typographical errors in a recorded cover sheet, follow these steps as outlined in MPEP 323.01(a):

1. Submit a copy of the originally recorded assignment document.
2. Provide a corrected cover sheet.
3. Pay the required fee for each application or patent to be corrected.
4. Include a copy of the original cover sheet to facilitate comparison.

When submitting the corrected cover sheet:

• Check the ‘Other’ box in the ‘Nature of Conveyance’ area.
• Indicate that the submission is to correct an error in a previously recorded cover sheet.
• Identify the reel and frame numbers (if known) and the nature of the correction.

The MPEP states: The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.

To learn more:

• typographical errors
• cover sheet correction
• patent assignment
• USPTO procedures

Recording a document at the USPTO has the following effects:

• It does not determine the validity of the document or its effect on title.
• The Office may determine a document’s effect when necessary for Office proceedings.
• Conditional assignments are treated as absolute assignments until canceled.
• Recording provides protection against subsequent purchasers without notice.

37 CFR 3.54 states: The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.

Additionally, according to 35 U.S.C. 261, timely recording at the USPTO is crucial for maintaining superiority of rights against subsequent purchasers.

For more information on document recording, visit: document recording.

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

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

What is the difference between recording an assignment and registering a trademark?

Recording an assignment for a patent or trademark application is different from registering a trademark. Here are the key distinctions:

• Recording an assignment: This process involves documenting the transfer of ownership rights for a patent or trademark application. It’s done through the USPTO’s Assignment Recordation Branch.
• Registering a trademark: This is the process of officially registering a trademark with the USPTO to protect your brand identity. It’s handled by the Trademark Office.

As stated in MPEP 302: “The recording of assignments is governed by 35 U.S.C. 261 for patents and 15 U.S.C. 1060 for trademarks.” This indicates that assignment recording is a separate process from trademark registration, which is governed by different statutes.

For more information on assignment recording, visit: assignment recording.

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

The America Invents Act (AIA) brought significant changes to patent law, including rules regarding patent ownership. The key differences between pre-AIA (before September 16, 2012) and AIA (on or after September 16, 2012) patent ownership rules are:

1. Applicability: Pre-AIA rules apply to applications filed before September 16, 2012, while AIA rules apply to applications filed on or after that date.
2. Juristic Entity Representation: Under AIA rules, juristic entities (e.g., corporations) must be represented by a patent practitioner for most actions. Pre-AIA rules allowed juristic entities to take certain actions without representation.
3. Ownership Establishment: The process for establishing ownership is slightly different, with AIA applications following 37 CFR 3.73 and pre-AIA applications following pre-AIA 37 CFR 3.73(b).
4. Inventor’s Oath or Declaration: AIA introduced changes to the inventor’s oath or declaration requirements, which can affect how assignees interact with the patent application process.

According to MPEP 324: [Editor Note: See MPEP § 325 for establishing the right of assignee to take action in an application filed on or after September 16, 2012.] This indicates that different sections of the MPEP should be consulted depending on the application’s filing date.

For more information on pre-AIA, visit: pre-AIA.

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

An assignment and a 37 CFR 3.73(c) statement serve different purposes in the patent application process:

• Assignment: This is the actual transfer of ownership rights from the inventor(s) to the assignee.
• 37 CFR 3.73(c) statement: This is a document filed with the USPTO to establish the assignee’s right to take action in a patent application.

As stated in MPEP 325: “The submission of the statement pursuant to 37 CFR 3.73(c) is not required if a 37 CFR 3.73(b) statement has been previously filed in the application or patent prior to September 16, 2012.” This highlights that the 3.73(c) statement is a procedural document for USPTO purposes, while the assignment is the substantive transfer of rights.

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

The correct procedure for submitting assignment documents to the USPTO involves sending them to the Assignment Division for recording, rather than placing them directly in application or patent files. MPEP 318 clearly states:

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

This process ensures that assignment documents are properly recorded and maintained by the appropriate division within the USPTO.

To learn more:

• assignment documents
• USPTO procedures
• Assignment Division
• document submission

A domestic representative is a person residing within the United States who can be served process or notice of proceedings affecting a patent or rights thereunder on behalf of a foreign assignee. According to MPEP 302.04, An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. This allows foreign assignees to have a point of contact within the U.S. for legal matters related to their patent.

To learn more:

• Foreign Assignee
• Domestic Representative
• Patent Law
• USPTO Procedures

When the USPTO’s Assignment Division returns assignment documents or cover sheets, they include specific information to help you understand the status and next steps. According to MPEP 317.02:

“Assignment documents and cover sheets, or copies of the same, which are returned by Assignment Division will be stamped with the original date of receipt by the Office and will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document.”

In summary, you will receive:

• The original documents or copies, stamped with the original receipt date
• An accompanying letter specifying:
• The reason for the return
• Instructions for correction
• The deadline for resubmission
• Information about maintaining the original receipt date as the recording date

It’s crucial to carefully review this information and act promptly to meet the specified deadline for resubmission.

To learn more:

• returned assignment documents
• USPTO procedures
• document correction
• resubmission instructions

According to 37 CFR 3.61, the designation of a domestic representative should include:

• The name of the person residing within the United States
• The address of the designated person
• A statement that this person may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder

As stated in the regulation, The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder. This information ensures that the USPTO and other parties can effectively communicate with the foreign assignee through their designated representative.

To learn more:

• Domestic Representative
• USPTO Procedures
• Patent Assignment
• Legal Representation

What happens to conditional assignments at the USPTO?

Conditional assignments are treated differently by the USPTO’s Assignment Division. The MPEP 317 states:

“Conditional assignments are returned to the sender by the Assignment Division.”

This means that if an assignment includes conditions that must be met before it becomes effective, the USPTO will not record it. Instead, the Assignment Division will return the document to the sender. It’s important for patent applicants and owners to ensure that any assignments submitted for recording are unconditional to avoid delays in processing.

For more information on Assignment Division, visit: Assignment Division.

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

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

What happens if there’s an error in the patent grant?

Errors in patent grants are addressed through a specific process outlined in MPEP 308. The manual states:

“If the Office discovers that an error exists in the patent grant, the patentee will be notified and required to submit a request for a certificate of correction.”

This process involves the following steps:

• The USPTO identifies an error in the issued patent
• The patentee is notified of the error
• The patentee must submit a request for a certificate of correction
• The USPTO issues a certificate of correction to rectify the error

It’s important to note that the certificate of correction becomes part of the patent and is treated as such for all purposes. Patentees should carefully review their patent grants upon receipt to identify any errors promptly and initiate the correction process if necessary.

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

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

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

If the assignment has not been recorded before the issue fee payment, the following applies:

• The request for issuance to the assignee must state that the assignment document has been filed for recordation.
• This statement should be made in accordance with 37 CFR 3.11.

As stated in 37 CFR 3.81(a): If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.

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

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

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

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

If you fail to correct and resubmit the returned assignment documents within the specified time period, the USPTO will consider the date of receipt of the corrected papers as the new recording date. The MPEP 317.02 clearly states:

“If the returned papers are not corrected and resubmitted within the specified period, the date of receipt of the corrected papers will be considered to be the date of recording of the document.”

It’s crucial to note that this may affect the priority date of your assignment, potentially impacting your rights. Additionally, the MPEP emphasizes that “The specified period to resubmit the returned papers will not be extended.” Therefore, it’s essential to act promptly when you receive returned documents to avoid losing the benefit of the original filing date.

To learn more:

• assignment documents
• resubmission deadline
• recording date
• USPTO procedures

What happens if I don’t record an assignment with the USPTO?

Failing to record an assignment with the USPTO can have significant legal implications. According to MPEP 302:

“An assignment, grant, or conveyance of a patent or application shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the USPTO within three months from its date or prior to the date of such subsequent purchase or mortgage.”

This means that if you don’t record your assignment:

• Your ownership rights may not be enforceable against subsequent purchasers or mortgagees who were unaware of the unrecorded assignment.
• You may face difficulties in proving ownership in legal proceedings or licensing negotiations.
• It could complicate future transfers or financial transactions involving the patent or application.

To protect your interests, it’s crucial to record assignments promptly with the USPTO, ideally within three months of the assignment date or before any subsequent transactions occur.

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

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

If an English translation is not provided with a non-English assignment document, the USPTO will not record the assignment. According to MPEP 302.02:

The assignment document, if not in the English language, will not be recorded unless accompanied by an English translation signed by the translator.

This means that the assignment will be rejected, and the ownership transfer will not be officially recognized by the USPTO. To proceed with the recordation, the applicant or assignee must submit a proper English translation along with the original non-English document.

To learn more:

• patent assignment
• document rejection
• USPTO procedures
• translation requirements

If a typographical error on the original cover sheet does not affect the title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will take the following actions:

• Correct the Assignment Historical Database
• Allow the recording party to keep the original date of recordation

As stated in MPEP 323.01(a): “If the original cover sheet contains a typographical error that does not affect title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will correct the Assignment Historical Database and permit the recording party to keep the original date of recordation.”

This approach ensures that minor errors that don’t impact the substance of the assignment are corrected without affecting the original recordation date, which can be important for legal and priority purposes.

To learn more:

• patent assignment
• cover sheet errors
• recordation date
• USPTO procedures

If the designated domestic representative cannot be found or if no person has been designated, 35 U.S.C. 293 provides a solution:

If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the Eastern District of Virginia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs.

This means that if the domestic representative is unreachable or non-existent, the U.S. District Court for the Eastern District of Virginia will handle the case and determine how to serve the summons. This ensures that legal proceedings can continue even if there are issues with the domestic representative.

To learn more:

• Domestic Representative
• Legal Proceedings
• USPTO Procedures
• Patent Law

When a typographical error on the original cover sheet affects the title to the application or patent against which the assignment or name change is recorded, the consequences are more significant:

• The recording party will not be entitled to keep the original date of recordation
• The Assignment Services Division will correct its automated records
• The date of recordation will be changed to the date the corrected cover sheet was received in the Office

As stated in MPEP 323.01(a): “If the original cover sheet contains a typographical error that affects title to the application or patent against which the assignment or name change is recorded, the recording party will not be entitled to keep the original date of recordation. Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.”

This approach ensures that errors affecting the substance of the assignment or title are properly addressed, even if it means adjusting the recordation date. It’s crucial for patent owners and assignees to be aware of this policy to avoid potential issues with priority dates or legal standing.

To learn more:

• patent assignment
• cover sheet errors
• recordation date
• title effects
• USPTO procedures

Expungement of assignment records at the USPTO 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 assignment records are granted only if the petitioner can prove:

1. The normal corrective procedures outlined in MPEP § 323.01(a) through § 323.01(c) will not provide adequate relief, and
2. The integrity of the assignment records will not be affected by granting the petition.

The MPEP clarifies: 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.

If a petition is granted:

• The Office will delete links to the application or patent subject to the petition.
• A redacted version of the ‘expunged’ document must be recorded and will appear in the assignment records.
• An additional assignment of the ‘correct’ document may be recorded if necessary.

This process ensures the integrity and completeness of the USPTO’s assignment records while addressing legitimate concerns about erroneous or sensitive information.

To learn more:

• expungement
• assignment records
• patent ownership
• USPTO procedures

While designating a domestic representative is not mandatory, it is highly recommended for foreign patent assignees. According to MPEP 302.04, An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The use of ‘may’ indicates that this is optional. However, having a domestic representative can significantly simplify legal proceedings and communications with the USPTO for foreign assignees.

To learn more:

• Foreign Assignee
• Domestic Representative
• USPTO Procedures
• Patent Law

Assignment information printed on a patent follows these guidelines:

• Only the first appearing name of an assignee will be printed on the patent, even if multiple names for the same party are identified on the Fee(s) Transmittal form (PTOL-85B).
• This printing practice does not affect the recording of assignments with the USPTO’s Assignment Division.
• The assignee entry on the PTOL-85B should still include all assignment data as recorded in the Office.

For example: The assignee entry on form PTOL-85B should still be completed to indicate the assignment data as recorded in the Office. For example, the assignment filed in the Office and, therefore, the PTOL-85B assignee entry might read ‘Smith Company doing business as (d.b.a.) Jones Company.’ The assignee entry on the printed patent will read ‘Smith Company.’

It’s important to note that assignment information printed on a patent is not updated after issuance and may not reflect subsequent assignments recorded in the Office.

Enforcement of arbitration awards in patent cases requires specific steps as outlined in 35 U.S.C. 294(d) and 37 CFR 1.335. Key points include:

• The patentee, assignee, or licensee must file a written notice of the award with the USPTO Director.
• The notice must include details about the patent, parties involved, and a copy of the award.
• The award is unenforceable until the required notice is received by the Director.

As stated in 35 U.S.C. 294(e): “The award shall be unenforceable until the notice required by subsection (d) is received by the Director.”

This requirement ensures that the USPTO is informed of arbitration outcomes affecting patent rights.

For more information on arbitration awards, visit: arbitration awards.

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

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

The USPTO has a specific process for handling notices of arbitration awards related to patents. According to the Manual of Patent Examining Procedure (MPEP) Section 311:

“The written notices required by this section should be directed to the attention of the Office of the Solicitor. The Office of the Solicitor will be responsible for processing such notices.”

This process involves:

• Directing all written notices of arbitration awards to the Office of the Solicitor.
• The Office of the Solicitor taking responsibility for processing these notices.
• Ensuring that the notices are properly recorded and associated with the relevant patent files.

This centralized approach helps maintain accurate records of arbitration outcomes affecting patent rights and ensures that the information is properly managed within the USPTO system.

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

The USPTO maintains a clear separation between assignment documents and patent files to ensure proper organization and management of records. MPEP 318 specifies:

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

This separation is maintained by:

• Directing assignment documents to the Assignment Division instead of application or patent files
• Keeping a separate database for assignment records
• Ensuring that patent examiners and other USPTO personnel refer to the Assignment Division for ownership information
• Maintaining distinct processes for handling assignments and patent prosecution

This approach helps in preserving the integrity of both assignment records and patent files while facilitating efficient access to ownership information when needed.

To learn more:

• assignment documents
• patent files
• USPTO procedures
• document management
• record separation

How does the USPTO handle requests for early delivery of patents?

The USPTO has a specific process for handling requests for early delivery of patents. According to MPEP 308:

“Ordinarily the patent grant is delivered to the correspondence address of record. However, a patentee may request in writing before the issue date that the patent grant be delivered to another address or to an assignment recordation branch of the USPTO for recordation of an assignment, provided a fee is paid for the service.”

This means that:

• Patentees can request early delivery of their patent grant
• The request must be made in writing before the issue date
• A fee is required for this service
• The patent can be delivered to an alternative address or to the assignment recordation branch

Early delivery requests are typically made when there’s an urgent need to record an assignment or to obtain the physical patent document for business purposes.

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

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

When discrepancies are found in title reports, the USPTO takes specific actions to address them. The MPEP 320 states:

If there are discrepancies between the title report and the instrument(s) recorded in the USPTO or the file contents, the title report is returned to the paralegal with an explanation of the discrepancy. The paralegal then contacts the person who ordered the title report and requests correction.

This process ensures that any issues with ownership or chain of title are resolved before the patent application proceeds further.

For more information on ownership verification, visit: ownership verification.

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

How does the USPTO handle confidential patent assignment information?

The USPTO generally treats patent assignment records as public information. However, there are provisions for handling confidential information within these records. MPEP 301.01 states:

“Assignments and other documents affecting title to applications, patents, and registrations that are recorded in the USPTO are generally open to public inspection. Only documents that are sealed as provided in 37 CFR 1.14 or otherwise not open to public inspection are not available for public inspection.”

If a document contains sensitive information that should not be publicly disclosed, the parties involved can:

• Redact confidential information before submitting the document for recordation
• Request that certain documents be sealed under 37 CFR 1.14
• Submit separate public and non-public versions of documents when necessary

It’s important to note that the decision to seal documents is at the discretion of the USPTO and is generally limited to specific circumstances outlined in the regulations.

How does the USPTO handle changes in ownership of patents?

The USPTO handles changes in ownership of patents through a process of recording assignments. According to MPEP 301:

“The assignment of a patent, or patent application, is the transfer of the entire right, title and interest therein. An assignment of an application may be made before the application is filed or after it is filed.”

When a change in ownership occurs:

• The new owner must record the assignment with the USPTO
• This recording serves as public notice of the transfer
• It helps maintain clear records of patent ownership

The USPTO maintains these records and updates them as new assignments are recorded.

For more information on assignment recording, visit: assignment recording.

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

How does the USPTO handle assignment documents that contain errors?

The USPTO has procedures in place for handling assignment documents with errors:

• Minor errors: The USPTO may correct minor errors in assignment documents without requiring a new submission. As stated in MPEP 302: ‘Minor corrections to documents recorded pursuant to 37 CFR 3.11 will be made by the Assignment Division, provided that the corrections do not involve the re-recording of the entire assignment document.’
• Major errors: For significant errors, a new corrected document must be submitted. The MPEP notes: ‘Other corrections may be made only by the submission of a new document.’
• Erroneous recording: If an assignment is erroneously recorded, the USPTO will correct its records upon notification.

It’s important to review assignment documents carefully before submission to avoid delays and potential legal issues.

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

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

The USPTO follows a specific process to determine if an error on a cover sheet is typographical in nature. According to MPEP 323.01(a):

“The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.”

This process involves:

• Reviewing the corrected cover sheet submitted by the requesting party
• Comparing it to the original cover sheet
• Examining the originally recorded assignment document or other title-affecting document
• Assessing whether the error is purely typographical or if it substantively affects the title or assignment

If the error is determined to be typographical and does not affect the title, the Assignment Services Division will record the corrected cover sheet and update the Assignment Historical Database. However, if the error affects the title, different procedures apply, including potential changes to the recordation date.

To learn more:

• patent assignment
• cover sheet errors
• USPTO procedures
• typographical errors

The effect on the date of recordation depends on whether the error affects title to the application or patent. According to MPEP 323.01(a):

1. Errors that do not affect title: If the typographical error does not affect title, the Assignment Services Division will correct the Assignment Historical Database and allow the recording party to keep the original date of recordation.
2. Errors that affect title: If the error affects title to the application or patent, the recording party will not keep the original date of recordation. The MPEP states: Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.

It’s crucial to ensure accuracy in cover sheets to maintain the earliest possible recordation date, especially for errors that could affect title to the application or patent.

To learn more:

• recordation date
• cover sheet errors
• patent assignment
• USPTO procedures

To designate a domestic representative, a foreign assignee must follow these steps:

• Prepare a written document signed by the assignee
• Clearly label the document as ‘Designation of Domestic Representative’
• Submit the designation as a separate paper from any assignment document
• Ensure the document is signed in accordance with 37 CFR 1.33(b)

As stated in MPEP 302.04, The designation of domestic representative should always be submitted to the Office as a paper separate from any assignment document. This ensures proper processing and entry into the record of the appropriate application or patent file.

To learn more:

• Foreign Assignee
• Domestic Representative
• USPTO Procedures
• Patent Assignment

To correct a typographical error on a recorded cover sheet for a patent assignment, you need to submit the following to the Assignment Services Division:

• A copy of the originally recorded assignment document (or other document affecting title)
• A corrected cover sheet
• The required fee for each application or patent to be corrected

Additionally, it’s recommended to submit a copy of the original cover sheet to facilitate comparison. When filing the corrected cover sheet, you should:

• Check the box titled “Other” in the “Nature of Conveyance” area
• Indicate that the submission is to correct an error in a previously recorded cover sheet
• Identify the reel and frame numbers (if known)
• Specify the nature of the correction

As stated in MPEP 323.01(a): “The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature.”

To learn more:

• patent assignment
• cover sheet correction
• typographical errors
• USPTO procedures

To ensure your corrected assignment documents are considered timely submitted, the USPTO provides two methods as outlined in MPEP 317.02:

1. Use the certification procedure under 37 CFR 1.8 (see MPEP § 512)
2. Use the “Priority Mail Express®” procedure under 37 CFR 1.10 (see MPEP § 513)

The MPEP states:

“The certification procedure under 37 CFR 1.8 (see MPEP § 512) or the “Priority Mail Express®” procedure under 37 CFR 1.10 (see MPEP § 513) may be used for resubmissions of returned papers to obtain the benefit of the date of deposit in the United States Postal Service to establish that the papers were returned within the time period specified.”

By using either of these methods, you can establish that your corrected documents were submitted within the specified time period, thus maintaining the original receipt date as the recording date of the document.

To learn more:

• assignment documents
• timely submission
• certification procedure
• Priority Mail Express
• USPTO procedures

To correct an error in a recorded cover sheet, you must follow the procedure outlined in 37 CFR 3.34. Specifically:

• The error must be apparent when comparing the cover sheet with the recorded document.
• You must file a corrected cover sheet for recordation.
• Include a copy of the original document submitted for recording.
• Pay the required recording fee as set forth in 37 CFR 3.41.

As stated in the MPEP, Any alleged error in a recorded cover sheet will only be corrected if the error is apparent from a comparison with the recorded assignment document. It’s important to carefully review the notice of recordation issued by the Office after recording.

To learn more:

• cover sheet correction
• patent assignment
• recordation errors
• USPTO procedures

If you discover that another party has improperly recorded an assignment or name change against your application or patent, you can correct this error by following the procedure outlined in MPEP 323.01(c):

1. First, try to contact the party who recorded the erroneous information and request that they record corrective papers.
2. If unsuccessful, submit the following to the Assignment Services Division:
   • A completed cover sheet identifying the affected application or patent
   • An affidavit or declaration:
     • Identifying yourself as the correct owner
     • Stating that the previously recorded document contained erroneous information
     • Providing the reel and frame number of the incorrectly recorded document
   • The required fee for each application or patent to be corrected

The MPEP advises: The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change.

On the corrected cover sheet, check the ‘Other’ box for ‘Nature of Conveyance’ and indicate that you’re correcting an error in a previously recorded document.

To learn more:

• improper assignment
• name change correction
• patent ownership
• USPTO procedures

How can an assignee establish the right to take action in a pre-AIA application?

For pre-AIA applications (filed before September 16, 2012), an assignee can establish the right to take action by:

1. Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or
2. Specifying in the papers requesting or taking action that action is being taken pursuant to a specific 37 CFR provision.

According to MPEP 324: “The assignee must establish its ownership of the property to the satisfaction of the Director. The chain of title from the inventor to the assignee must be clearly established.” This typically involves submitting assignment documents or other evidence of ownership to the USPTO.

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

For more information on pre-AIA, visit: pre-AIA.

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

The USPTO handles returned assignment documents as follows:

• Documents are stamped with the original receipt date.
• A letter accompanies returned documents explaining the correction needed.
• If corrected and resubmitted within the specified time, the original receipt date is considered the recording date.
• Resubmissions can use the certification procedure under 37 CFR 1.8 or the ‘Priority Mail Express®’ procedure under 37 CFR 1.10.
• If not corrected and resubmitted in time, the new receipt date becomes the recording date.

The MPEP states: The certification procedure under 37 CFR 1.8 or the ‘Priority Mail Express®’ procedure under 37 CFR 1.10 may be used for resubmissions of returned papers to obtain the benefit of the date of deposit in the United States Postal Service to establish that the papers were returned within the time period specified.

For more information on assignment recording, visit: assignment recording.

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

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

How are patent assignment documents filed and stored at the USPTO?

The USPTO has a specific process for filing and storing patent assignment documents. According to MPEP 317:

“All recorded assignments are scanned and stored in an electronic database.”

This means that once an assignment is recorded, it is digitized for easy access and long-term storage. The electronic database allows for efficient retrieval and management of assignment records. Additionally, the MPEP notes:

“The original document is returned to the sender with a notation of the reel and frame numbers.”

This process ensures that the original document is returned to the sender while maintaining a digital copy for USPTO records. The reel and frame numbers serve as reference points for locating the scanned document in the electronic database.

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

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

The USPTO has a specific process for handling incomplete patent documents. According to MPEP 317.01:

“Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.”

This means that if a document is missing essential components like a completed cover sheet or the required fee, the USPTO will return it to the sender for correction, provided that a correspondence address is available.

To learn more:

• incomplete patent documents
• USPTO procedures
• document correction

No, the period for resubmitting corrected assignment documents cannot be extended. The MPEP 317.02 is explicit on this point:

“The specified period to resubmit the returned papers will not be extended.”

This strict policy underscores the importance of promptly addressing any issues with returned assignment documents. Failing to meet the specified deadline will result in the loss of the original receipt date as the recording date for the document. Instead, the USPTO will use the date they receive the corrected papers as the new recording date. This change can potentially affect the priority of your assignment and impact your intellectual property rights. Therefore, it’s crucial to carefully review any returned documents and act quickly to make the necessary corrections and resubmit within the given timeframe.

To learn more:

• assignment documents
• resubmission deadline
• USPTO procedures
• document correction

Yes, the original filing date can be preserved for returned patent documents under certain conditions. The MPEP 317.01 states:

“The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document.”

This means that if you correct and resubmit the returned documents within the specified timeframe, the USPTO will use the original filing date as the recording date for the document.

To learn more:

• patent filing date
• document resubmission
• USPTO procedures

Can multiple assignees take action in a patent application?

Yes, multiple assignees can take action in a patent application, but there are specific requirements they must meet. The MPEP 325 states:

“Where multiple assignees are named in the statement under 37 CFR 3.73(c) and/or the Form PTO/AIA/96, and they are not named as joint owners in a single statement or form, the statement or form must be modified accordingly.”

This means that:

• Multiple assignees can be named in a single statement or form if they are joint owners
• If they are not joint owners, separate statements or forms must be submitted for each assignee
• Each assignee must establish their right to take action as per 37 CFR 3.71 and 37 CFR 3.73

It’s important to note that the USPTO will not mediate disputes between assignees. If there are conflicting instructions from multiple assignees, the USPTO may suspend action on the application.

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

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

Can I record an assignment for a pending patent application?

Yes, you can record an assignment for a pending patent application. In fact, the USPTO encourages early recordation of assignments. According to MPEP 302:

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234).

To record an assignment for a pending application:

• Use the application number to identify the application
• Ensure all necessary parties have signed the assignment document
• Submit the assignment document along with the required cover sheet and fee to the USPTO

Early recordation can help establish clear ownership and facilitate future transactions or licensing agreements.

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

Yes, a domestic representative can be changed after the initial designation. While MPEP 302.04 doesn’t explicitly address changing a domestic representative, it states that the designation is made by a written document signed by such assignee. This implies that a new written document can be submitted to change the designation. To change a domestic representative, follow the same process as the initial designation:

• Prepare a new written document clearly labeled ‘Change of Domestic Representative’
• Include the new representative’s name and address
• Submit the document separately from other filings
• Ensure it’s signed in accordance with 37 CFR 1.33(b)

It’s advisable to explicitly state that this new designation supersedes any previous designations to avoid confusion.

To learn more:

• Domestic Representative
• USPTO Procedures
• Patent Assignment
• Legal Representation

How does the USPTO handle confidential patent assignment information?

The USPTO generally treats patent assignment records as public information. However, there are provisions for handling confidential information within these records. MPEP 301.01 states:

“Assignments and other documents affecting title to applications, patents, and registrations that are recorded in the USPTO are generally open to public inspection. Only documents that are sealed as provided in 37 CFR 1.14 or otherwise not open to public inspection are not available for public inspection.”

If a document contains sensitive information that should not be publicly disclosed, the parties involved can:

• Redact confidential information before submitting the document for recordation
• Request that certain documents be sealed under 37 CFR 1.14
• Submit separate public and non-public versions of documents when necessary

It’s important to note that the decision to seal documents is at the discretion of the USPTO and is generally limited to specific circumstances outlined in the regulations.

How does the USPTO handle changes in ownership of patents?

The USPTO handles changes in ownership of patents through a process of recording assignments. According to MPEP 301:

“The assignment of a patent, or patent application, is the transfer of the entire right, title and interest therein. An assignment of an application may be made before the application is filed or after it is filed.”

When a change in ownership occurs:

• The new owner must record the assignment with the USPTO
• This recording serves as public notice of the transfer
• It helps maintain clear records of patent ownership

The USPTO maintains these records and updates them as new assignments are recorded.

For more information on assignment recording, visit: assignment recording.

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

While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:

1. Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
2. Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
   • The former name (in the space for the party conveying the interest)
   • The new name (in the space for the party receiving the interest)
   • A description of the interest conveyed as “Name Change”
   • Identification of the affected patents or applications
3. Submit the document and cover sheet to the USPTO for recordation, along with any required fee
4. The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)

As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.

It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.

What is the process for correcting errors in recorded assignment documents?

The process for correcting errors in recorded assignment documents involves the following steps:

• For minor errors: You can file a corrective document stating the nature of the error, along with the required fee.
• For more significant errors: You may need to file a new assignment document with the correct information.
• In all cases: Include a cover sheet stating that the document is being submitted to correct an error in a previously recorded assignment document.

According to MPEP 302: Errors in a recorded assignment document will be corrected by the Assignment Division provided a ‘corrective document’ is submitted. The USPTO recommends contacting the Assignment Recordation Branch for specific guidance on your situation.

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

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

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

What is the difference between recording an assignment and registering a trademark?

Recording an assignment for a patent or trademark application is different from registering a trademark. Here are the key distinctions:

• Recording an assignment: This process involves documenting the transfer of ownership rights for a patent or trademark application. It’s done through the USPTO’s Assignment Recordation Branch.
• Registering a trademark: This is the process of officially registering a trademark with the USPTO to protect your brand identity. It’s handled by the Trademark Office.

As stated in MPEP 302: “The recording of assignments is governed by 35 U.S.C. 261 for patents and 15 U.S.C. 1060 for trademarks.” This indicates that assignment recording is a separate process from trademark registration, which is governed by different statutes.

For more information on assignment recording, visit: assignment recording.

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

What happens if I don’t record an assignment with the USPTO?

Failing to record an assignment with the USPTO can have significant legal implications. According to MPEP 302:

“An assignment, grant, or conveyance of a patent or application shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the USPTO within three months from its date or prior to the date of such subsequent purchase or mortgage.”

This means that if you don’t record your assignment:

• Your ownership rights may not be enforceable against subsequent purchasers or mortgagees who were unaware of the unrecorded assignment.
• You may face difficulties in proving ownership in legal proceedings or licensing negotiations.
• It could complicate future transfers or financial transactions involving the patent or application.

To protect your interests, it’s crucial to record assignments promptly with the USPTO, ideally within three months of the assignment date or before any subsequent transactions occur.

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

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

How does the USPTO handle assignment documents that contain errors?

The USPTO has procedures in place for handling assignment documents with errors:

• Minor errors: The USPTO may correct minor errors in assignment documents without requiring a new submission. As stated in MPEP 302: ‘Minor corrections to documents recorded pursuant to 37 CFR 3.11 will be made by the Assignment Division, provided that the corrections do not involve the re-recording of the entire assignment document.’
• Major errors: For significant errors, a new corrected document must be submitted. The MPEP notes: ‘Other corrections may be made only by the submission of a new document.’
• Erroneous recording: If an assignment is erroneously recorded, the USPTO will correct its records upon notification.

It’s important to review assignment documents carefully before submission to avoid delays and potential legal issues.

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

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

Can I record an assignment for a pending patent application?

Yes, you can record an assignment for a pending patent application. In fact, the USPTO encourages early recordation of assignments. According to MPEP 302:

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234).

To record an assignment for a pending application:

• Use the application number to identify the application
• Ensure all necessary parties have signed the assignment document
• Submit the assignment document along with the required cover sheet and fee to the USPTO

Early recordation can help establish clear ownership and facilitate future transactions or licensing agreements.

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

The process for issuing a patent to a non-applicant assignee involves the following steps:

1. A request for issuance to the assignee must be submitted with the payment of the issue fee.
2. The assignment must have been previously recorded in the USPTO or filed for recordation.
3. If the request is submitted after the issue fee payment, additional requirements apply, including a request for a certificate of correction and associated fees.

According to 37 CFR 3.81(a): An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office.

To correct assignee information on an issued patent, you must follow these steps:

1. Submit a request for a certificate of correction under 37 CFR 1.323.
2. Ensure that a request under 37 CFR 3.81(b) has been granted.
3. Confirm that the assignment was submitted for recordation before the patent was issued.

According to MPEP 307: “A request for a certificate of correction under 37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising from incomplete or erroneous assignee’s name furnished, or a missing assignee’s name, in item 3 of PTOL-85B will not be granted unless a request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued.”

The request should be directed to the Office of Petitions and include:

• The processing fee required by 37 CFR 1.17(i)
• A request for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee
• A statement that the assignment was submitted for recordation before the patent was issued
• A request for a certificate of correction under 37 CFR 1.323 with the associated fee

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

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

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

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

If the assignment has not been recorded before the issue fee payment, the following applies:

• The request for issuance to the assignee must state that the assignment document has been filed for recordation.
• This statement should be made in accordance with 37 CFR 3.11.

As stated in 37 CFR 3.81(a): If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.

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

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

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

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

Assignment information printed on a patent follows these guidelines:

• Only the first appearing name of an assignee will be printed on the patent, even if multiple names for the same party are identified on the Fee(s) Transmittal form (PTOL-85B).
• This printing practice does not affect the recording of assignments with the USPTO’s Assignment Division.
• The assignee entry on the PTOL-85B should still include all assignment data as recorded in the Office.

For example: The assignee entry on form PTOL-85B should still be completed to indicate the assignment data as recorded in the Office. For example, the assignment filed in the Office and, therefore, the PTOL-85B assignee entry might read ‘Smith Company doing business as (d.b.a.) Jones Company.’ The assignee entry on the printed patent will read ‘Smith Company.’

It’s important to note that assignment information printed on a patent is not updated after issuance and may not reflect subsequent assignments recorded in the Office.

What happens if there’s an error in the patent grant?

Errors in patent grants are addressed through a specific process outlined in MPEP 308. The manual states:

“If the Office discovers that an error exists in the patent grant, the patentee will be notified and required to submit a request for a certificate of correction.”

This process involves the following steps:

• The USPTO identifies an error in the issued patent
• The patentee is notified of the error
• The patentee must submit a request for a certificate of correction
• The USPTO issues a certificate of correction to rectify the error

It’s important to note that the certificate of correction becomes part of the patent and is treated as such for all purposes. Patentees should carefully review their patent grants upon receipt to identify any errors promptly and initiate the correction process if necessary.

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

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

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

How does the USPTO handle requests for early delivery of patents?

The USPTO has a specific process for handling requests for early delivery of patents. According to MPEP 308:

“Ordinarily the patent grant is delivered to the correspondence address of record. However, a patentee may request in writing before the issue date that the patent grant be delivered to another address or to an assignment recordation branch of the USPTO for recordation of an assignment, provided a fee is paid for the service.”

This means that:

• Patentees can request early delivery of their patent grant
• The request must be made in writing before the issue date
• A fee is required for this service
• The patent can be delivered to an alternative address or to the assignment recordation branch

Early delivery requests are typically made when there’s an urgent need to record an assignment or to obtain the physical patent document for business purposes.

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

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

Enforcement of arbitration awards in patent cases requires specific steps as outlined in 35 U.S.C. 294(d) and 37 CFR 1.335. Key points include:

• The patentee, assignee, or licensee must file a written notice of the award with the USPTO Director.
• The notice must include details about the patent, parties involved, and a copy of the award.
• The award is unenforceable until the required notice is received by the Director.

As stated in 35 U.S.C. 294(e): “The award shall be unenforceable until the notice required by subsection (d) is received by the Director.”

This requirement ensures that the USPTO is informed of arbitration outcomes affecting patent rights.

For more information on arbitration awards, visit: arbitration awards.

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

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

The USPTO has a specific process for handling notices of arbitration awards related to patents. According to the Manual of Patent Examining Procedure (MPEP) Section 311:

“The written notices required by this section should be directed to the attention of the Office of the Solicitor. The Office of the Solicitor will be responsible for processing such notices.”

This process involves:

• Directing all written notices of arbitration awards to the Office of the Solicitor.
• The Office of the Solicitor taking responsibility for processing these notices.
• Ensuring that the notices are properly recorded and associated with the relevant patent files.

This centralized approach helps maintain accurate records of arbitration outcomes affecting patent rights and ensures that the information is properly managed within the USPTO system.

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

Recording a document at the USPTO has the following effects:

• It does not determine the validity of the document or its effect on title.
• The Office may determine a document’s effect when necessary for Office proceedings.
• Conditional assignments are treated as absolute assignments until canceled.
• Recording provides protection against subsequent purchasers without notice.

37 CFR 3.54 states: The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration.

Additionally, according to 35 U.S.C. 261, timely recording at the USPTO is crucial for maintaining superiority of rights against subsequent purchasers.

For more information on document recording, visit: document recording.

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

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

What happens to conditional assignments at the USPTO?

Conditional assignments are treated differently by the USPTO’s Assignment Division. The MPEP 317 states:

“Conditional assignments are returned to the sender by the Assignment Division.”

This means that if an assignment includes conditions that must be met before it becomes effective, the USPTO will not record it. Instead, the Assignment Division will return the document to the sender. It’s important for patent applicants and owners to ensure that any assignments submitted for recording are unconditional to avoid delays in processing.

For more information on Assignment Division, visit: Assignment Division.

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

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

The USPTO handles returned assignment documents as follows:

• Documents are stamped with the original receipt date.
• A letter accompanies returned documents explaining the correction needed.
• If corrected and resubmitted within the specified time, the original receipt date is considered the recording date.
• Resubmissions can use the certification procedure under 37 CFR 1.8 or the ‘Priority Mail Express®’ procedure under 37 CFR 1.10.
• If not corrected and resubmitted in time, the new receipt date becomes the recording date.

The MPEP states: The certification procedure under 37 CFR 1.8 or the ‘Priority Mail Express®’ procedure under 37 CFR 1.10 may be used for resubmissions of returned papers to obtain the benefit of the date of deposit in the United States Postal Service to establish that the papers were returned within the time period specified.

For more information on assignment recording, visit: assignment recording.

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

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

How are patent assignment documents filed and stored at the USPTO?

The USPTO has a specific process for filing and storing patent assignment documents. According to MPEP 317:

“All recorded assignments are scanned and stored in an electronic database.”

This means that once an assignment is recorded, it is digitized for easy access and long-term storage. The electronic database allows for efficient retrieval and management of assignment records. Additionally, the MPEP notes:

“The original document is returned to the sender with a notation of the reel and frame numbers.”

This process ensures that the original document is returned to the sender while maintaining a digital copy for USPTO records. The reel and frame numbers serve as reference points for locating the scanned document in the electronic database.

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

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

Assignment documents are not placed directly in patent application files to ensure proper recording and maintenance of ownership records. MPEP 318 states:

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

This procedure serves several purposes:

• It centralizes the recording of ownership information
• It ensures that assignments are properly recorded and searchable
• It keeps the main application file focused on technical and procedural aspects of the patent application
• It allows the Assignment Division to maintain a separate database of patent ownership information

MPEP 318 provides clear guidance on where assignment documents should be forwarded for recording. According to the manual:

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

This means that when submitting assignment documents, they should be sent to the USPTO’s Assignment Division, which is responsible for recording and maintaining records of patent ownership changes.

Keeping assignment documents separate from patent application files is significant for several reasons. MPEP 318 mandates this separation:

“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 significance of this practice includes:

• Maintaining clear distinction between technical content and ownership information
• Ensuring proper recording and indexing of assignment documents
• Facilitating easier searches for patent ownership information
• Reducing the risk of confidential ownership information being inadvertently disclosed
• Allowing for more efficient management of ownership changes throughout a patent’s lifecycle
• Enabling the Assignment Division to specialize in handling ownership matters

This separation streamlines both the patent examination process and the management of patent ownership records.

The Assignment Division plays a crucial role in handling patent assignments at the USPTO. As indicated in 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 submitted for recording
• Properly recording and maintaining assignment records
• Ensuring the accuracy and accessibility of ownership information
• Managing the assignment database separate from application and patent files

This specialized division ensures that patent ownership information is correctly documented and readily available when needed.

To learn more:

• Assignment Division
• patent assignments
• document recording
• USPTO procedures

The correct procedure for submitting assignment documents to the USPTO involves sending them to the Assignment Division for recording, rather than placing them directly in application or patent files. MPEP 318 clearly states:

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

This process ensures that assignment documents are properly recorded and maintained by the appropriate division within the USPTO.

To learn more:

• assignment documents
• USPTO procedures
• Assignment Division
• document submission

The USPTO maintains a clear separation between assignment documents and patent files to ensure proper organization and management of records. MPEP 318 specifies:

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

This separation is maintained by:

• Directing assignment documents to the Assignment Division instead of application or patent files
• Keeping a separate database for assignment records
• Ensuring that patent examiners and other USPTO personnel refer to the Assignment Division for ownership information
• Maintaining distinct processes for handling assignments and patent prosecution

This approach helps in preserving the integrity of both assignment records and patent files while facilitating efficient access to ownership information when needed.

To learn more:

• assignment documents
• patent files
• USPTO procedures
• document management
• record separation

Title reports play a specific role in patent reexamination procedures. The MPEP mentions:

For example, a title report is requested by the Reexamination Preprocessing Staff when a request for reexamination is filed.

This suggests that title reports are used to verify the current owner of a patent when a reexamination is initiated, ensuring that the proper parties are involved in the process.

When discrepancies are found in title reports, the USPTO takes specific actions to address them. The MPEP 320 states:

If there are discrepancies between the title report and the instrument(s) recorded in the USPTO or the file contents, the title report is returned to the paralegal with an explanation of the discrepancy. The paralegal then contacts the person who ordered the title report and requests correction.

This process ensures that any issues with ownership or chain of title are resolved before the patent application proceeds further.

For more information on ownership verification, visit: ownership verification.

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

When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:

For applications filed before September 16, 2012:

• All named applicants
• Assignee of record of an undivided part interest, along with named applicants retaining an interest
• Assignee of the entire interest
• A registered patent attorney or agent not of record acting under 37 CFR 1.34

For applications filed on or after September 16, 2012:

• A patent practitioner of record
• A patent practitioner not of record acting under 37 CFR 1.34
• The applicant (except for juristic entity applicants, which require a patent practitioner)

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

The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:

See MPEP § 402.03 for information regarding when a change of correspondence address or a document granting access (i.e., a power to inspect) may be signed by an attorney or agent who is not of record.

This reference to MPEP § 402.03 suggests that there are certain circumstances where an attorney or agent not of record may be allowed to change the correspondence address or grant access to application information. For specific details, it’s recommended to consult MPEP § 402.03 directly.

For more information on Correspondence Address, visit: Correspondence Address.

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

If an applicant’s patent attorney or agent is suspended, they should take the following steps:

1. File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
2. Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
3. If necessary, find a new registered patent attorney or agent using USPTO resources.
4. Update the correspondence address for the application if it was previously associated with the suspended practitioner.

It’s important to act promptly to ensure continued proper representation and communication with the USPTO.

What is the procedure for an examiner to verify an attorney’s authority during an interview?

When conducting an interview with an attorney or agent who is not of record, the examiner must follow a specific procedure to verify their authority. According to MPEP 405:

If an attorney or agent not of record in an application contacts an examiner for an interview, the examiner may grant the interview if the attorney or agent presents an authorization from the practitioner of record, or presents a signed power of attorney or a paper authorizing them to act as associate or agent.

The examiner should:

• Ask for an authorization from the practitioner of record
• Accept a signed power of attorney
• Accept a paper authorizing the attorney or agent to act as an associate or agent

If none of these are available, the examiner should decline the interview unless the attorney or agent is willing to conduct the interview with the inventor present.

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

When a new power of attorney is filed that lists only one of two previously appointed patent practitioners, it has significant implications. According to MPEP 403.02:

“Note that if the later-filed power of attorney only lists the second practitioner, the later-filed power of attorney serves as a revocation of the earlier-filed power of attorney, even without an express revocation of the power of the first patent practitioner.”

This means that filing a new power of attorney listing only one practitioner effectively revokes the authority of the previously appointed practitioner, even if the revocation is not explicitly stated. This is an important consideration for applicants and practitioners when making changes to representation.

To learn more:

• power of attorney
• patent practitioners
• revocation
• USPTO procedures

What evidence is required to prove an inventor’s refusal to sign a patent application?

When an inventor refuses to sign a patent application, specific evidence is required to proceed without their signature. The MPEP 409.03(d) outlines the necessary proof:

‘Where refusal of the inventor to sign the application papers is the reason for filing under pre-AIA 37 CFR 1.47(b), the applicant should make reasonable efforts to contact the inventor and to secure the inventor’s signature.’

Evidence of refusal typically includes:

• Documented attempts to contact the inventor (emails, letters, phone logs)
• Any written responses from the inventor indicating refusal
• Witness statements corroborating the inventor’s refusal
• A detailed explanation of the circumstances surrounding the refusal

The USPTO requires a thorough statement of facts describing the situation and efforts made to obtain the inventor’s signature. It’s crucial to demonstrate that the inventor was fully informed about the patent application and explicitly refused to sign, rather than simply being unresponsive.

To learn more:

• inventor refusal
• patent application
• evidence requirements
• USPTO procedures

What are the requirements for a registered practitioner to obtain access to an application?

According to MPEP 405, a registered practitioner may obtain access to an application if they fulfill the following requirements:

• The practitioner must be acting in a representative capacity
• The practitioner must have proper authority from the applicant or attorney or agent of record
• Written consent from the applicant, attorney, or agent of record must be provided

The MPEP states: ‘Access will be given to the entire application file history in the absence of a specific request from the authorizing party for only a portion of the file.’ This means that unless specified otherwise, the practitioner will be granted full access to the application file.

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

For more information on registered practitioner, visit: registered practitioner.

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

What are the requirements for a patent practitioner to withdraw from representation?

A patent practitioner who wishes to withdraw from representation must follow specific procedures. According to MPEP 403.01(a): A registered patent practitioner acting in a representative capacity in an application filed on or after September 16, 2012, may not withdraw from representation in that application without leave of the Office.

The process for withdrawal typically involves:

• Filing a request to withdraw as attorney or agent of record
• Providing reasons for the withdrawal
• Ensuring that the applicant is notified of the request
• Obtaining Office approval before ceasing representation

For detailed instructions on the withdrawal process, refer to MPEP 402.06. It’s crucial to follow these procedures to ensure a proper transition and to maintain compliance with USPTO regulations.

To learn more:

• Patent practitioner withdrawal
• Representation in patent applications
• USPTO procedures

How does the USPTO handle conflicting powers of attorney in a patent application?

When conflicting powers of attorney are submitted in a patent application, the USPTO follows specific procedures to resolve the conflict. According to MPEP 402.10:

Where a written power of attorney is submitted in an application without the signature of one or more inventors or assignees, the power of attorney is not accepted until either (1) the nonsigning inventor or assignee provides a power of attorney consistent with the power of attorney provided by the other parties, or (2) the nonsigning inventor or assignee is removed from the application.

In practice, this means:

• The USPTO will not accept a power of attorney unless it is signed by all parties or consistent with previously filed powers.
• If conflicting powers are received, the Office will contact the applicants to resolve the discrepancy.
• The application may be delayed until the conflict is resolved.
• In some cases, the nonsigning inventor or assignee may need to be removed from the application for prosecution to proceed.

It’s crucial for applicants to coordinate and agree on representation to avoid such conflicts and potential delays in the patent application process.

To learn more:

• conflicting powers of attorney
• patent application
• USPTO procedures

The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution. When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.

To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.

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

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

How does an assignee become of record in a patent application?

An assignee must become of record in a patent application before they can revoke the power of attorney given by the applicant. According to MPEP 402.07, this process involves:

1. Filing a statement under 37 CFR 3.73(c)
2. Complying with the requirements of 37 CFR 3.71

The MPEP states:

“The assignee must become of record as provided in 37 CFR 3.71. After the assignee becomes of record, the assignee is permitted to revoke the power of attorney of the applicant under the provisions of 37 CFR 1.36(a).”

This typically involves submitting documentary evidence of the chain of title from the original owner to the assignee, such as assignment documents. Once the USPTO recognizes the assignee as the owner of record, they can proceed with revoking the existing power of attorney and appointing a new one.

To learn more:

• assignee of record
• patent application
• USPTO procedures
• ownership documentation

Can an inventor’s attorney conduct an interview without a power of attorney?

Yes, an inventor’s attorney can conduct an interview without a power of attorney under certain conditions. The MPEP 405 provides guidance on this matter:

Interviews may be granted to an attorney or agent who is not of record in an application if the conditions of 37 CFR 1.33(b)(3) are satisfied.

This means that if the attorney or agent complies with the requirements set forth in 37 CFR 1.33(b)(3), they can conduct an interview even without a formal power of attorney. These requirements typically include providing evidence of their authority to act on behalf of the applicant.

For more information on power of attorney, visit: power of attorney.

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

Can an attorney withdraw from patent representation without client consent?

While it’s generally preferable to obtain client consent, an attorney can withdraw from patent representation without client consent under certain circumstances. However, they must still follow proper procedures and notify the USPTO. The MPEP 402.06 states:

“The requirements for withdrawal of an attorney or agent are set forth in 37 CFR 1.36. The Office of Enrollment and Discipline (OED) handles withdrawal of entire firms.”

Key points to consider:

• The attorney must provide notice to the client and the USPTO.
• Reasons for withdrawal without consent may include ethical conflicts or non-payment of fees.
• The USPTO may require the attorney to show good cause for withdrawal.
• The withdrawal should not unduly prejudice the client’s interests.

Attorneys should consult 37 CFR 1.36 and applicable state bar rules when considering withdrawal without client consent.

To learn more:

• attorney withdrawal
• client consent
• USPTO procedures
• patent representation

Can an assignee revoke power of attorney in all types of patent applications?

An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:

“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”

This means assignees can revoke power of attorney in:

• Applications involved in interference or derivation proceedings
• National stage applications under 35 U.S.C. 371

For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.

To learn more:

• power of attorney
• assignee rights
• patent application types
• USPTO procedures

Can an assignee revoke a power of attorney given by the applicant in a patent application?

Yes, an assignee can revoke a power of attorney given by the applicant in a patent application, provided certain conditions are met. According to MPEP 402.07:

“The assignee of the entire interest can revoke the power of attorney of the applicant and appoint its own patent practitioner.”

This is possible when:

• The assignee has properly become of record pursuant to 37 CFR 3.71.
• The application is involved in an interference or derivation proceeding.
• The application is national stage application filed under 35 U.S.C. 371.

It’s important to note that the assignee must follow proper procedures and file the necessary documents with the USPTO to effectuate this change.

To learn more:

• power of attorney
• assignee rights
• patent application
• USPTO procedures

Yes, an assignee can conduct patent prosecution after attorney withdrawal under certain conditions:

• The assignee must have originally appointed the withdrawing attorney or agent.
• The assignee becomes recognized by the Office for all purposes in the application.
• The assignee can sign amendments and other papers related to the prosecution.

The MPEP 402.06 states: ‘If the applicant is the assignee who appointed the withdrawing attorney or agent, the applicant may conduct the prosecution of the application, for example, by signing amendments and other papers related to the prosecution of the application.’

It’s important to note that while assignees can conduct prosecution, they may benefit from seeking new professional representation to navigate the complex patent process effectively.

To learn more:

• assignee rights
• patent prosecution
• attorney withdrawal
• USPTO procedures

Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:

Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.

This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.

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

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

The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:

See MPEP § 402.03 for information regarding when a change of correspondence address or a document granting access (i.e., a power to inspect) may be signed by an attorney or agent who is not of record.

This reference to MPEP § 402.03 suggests that there are certain circumstances where an attorney or agent not of record may be allowed to change the correspondence address or grant access to application information. For specific details, it’s recommended to consult MPEP § 402.03 directly.

For more information on Correspondence Address, visit: Correspondence Address.

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

What is the procedure for an examiner to verify an attorney’s authority during an interview?

When conducting an interview with an attorney or agent who is not of record, the examiner must follow a specific procedure to verify their authority. According to MPEP 405:

If an attorney or agent not of record in an application contacts an examiner for an interview, the examiner may grant the interview if the attorney or agent presents an authorization from the practitioner of record, or presents a signed power of attorney or a paper authorizing them to act as associate or agent.

The examiner should:

• Ask for an authorization from the practitioner of record
• Accept a signed power of attorney
• Accept a paper authorizing the attorney or agent to act as an associate or agent

If none of these are available, the examiner should decline the interview unless the attorney or agent is willing to conduct the interview with the inventor present.

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

What are the requirements for a registered practitioner to obtain access to an application?

According to MPEP 405, a registered practitioner may obtain access to an application if they fulfill the following requirements:

• The practitioner must be acting in a representative capacity
• The practitioner must have proper authority from the applicant or attorney or agent of record
• Written consent from the applicant, attorney, or agent of record must be provided

The MPEP states: ‘Access will be given to the entire application file history in the absence of a specific request from the authorizing party for only a portion of the file.’ This means that unless specified otherwise, the practitioner will be granted full access to the application file.

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

For more information on registered practitioner, visit: registered practitioner.

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

Can an inventor’s attorney conduct an interview without a power of attorney?

Yes, an inventor’s attorney can conduct an interview without a power of attorney under certain conditions. The MPEP 405 provides guidance on this matter:

Interviews may be granted to an attorney or agent who is not of record in an application if the conditions of 37 CFR 1.33(b)(3) are satisfied.

This means that if the attorney or agent complies with the requirements set forth in 37 CFR 1.33(b)(3), they can conduct an interview even without a formal power of attorney. These requirements typically include providing evidence of their authority to act on behalf of the applicant.

For more information on power of attorney, visit: power of attorney.

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

Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:

Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.

This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.

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

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

When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:

For applications filed before September 16, 2012:

• All named applicants
• Assignee of record of an undivided part interest, along with named applicants retaining an interest
• Assignee of the entire interest
• A registered patent attorney or agent not of record acting under 37 CFR 1.34

For applications filed on or after September 16, 2012:

• A patent practitioner of record
• A patent practitioner not of record acting under 37 CFR 1.34
• The applicant (except for juristic entity applicants, which require a patent practitioner)

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

If an applicant’s patent attorney or agent is suspended, they should take the following steps:

1. File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
2. Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
3. If necessary, find a new registered patent attorney or agent using USPTO resources.
4. Update the correspondence address for the application if it was previously associated with the suspended practitioner.

It’s important to act promptly to ensure continued proper representation and communication with the USPTO.

The USPTO actively encourages the use of interviews to expedite patent prosecution. According to MPEP § 408, The Office encourages the use of interviews to expedite prosecution. When an examiner believes an interview would advance the application’s progress, they may contact the patent practitioner of record to suggest a telephonic, personal, or video conference interview.

To initiate an interview, applicants should submit an ‘Applicant Initiated Interview Request’ form (PTOL-413A) prior to the interview. This form helps the examiner prepare and focus on the issues to be discussed.

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

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

When a patent or application file cannot be located after a reasonable search, the USPTO has a specific procedure outlined in 37 CFR 1.251. The Office will notify the applicant or patentee and set a time period for compliance with one of the following options:

• Provide a copy of all correspondence records between the Office and the applicant/patentee, along with a list and a statement of completeness.
• Produce the applicant’s/patentee’s records for the Office to copy, along with a statement of completeness.
• If no records are possessed, provide a statement to that effect.

The MPEP states, 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.

For pending applications, failure to comply within the set time period will result in abandonment of the application.

For more information on file reconstruction, visit: file reconstruction.

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

According to 37 CFR 1.29(k)(1), the itemization for a micro entity fee deficiency payment must include:

• Each type of fee erroneously paid as a micro entity
• The current fee amount for a small or non-small entity
• The micro entity fee actually paid and the date of payment
• The deficiency owed amount for each fee
• The total deficiency payment owed

The MPEP specifies: The paper must contain an itemization of the total deficiency payment and include the following information: (1) each particular type of fee that was erroneously paid as a micro entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a small or non-small entity; (2) the micro entity fee actually paid, and the date on which it was paid; (3) the deficiency owed amount (for each fee erroneously paid); and (4) the total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts.

To learn more:

• Micro Entity
• Fee Itemization
• Patent Fees
• USPTO Procedures

According to MPEP 508.02, after a patent application is either patented or abandoned, any incoming communication that is not intended to become part of the official record will be returned to the sender. The MPEP states:

“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.”

This procedure ensures that the official patent file remains accurate and contains only relevant information after the application process has concluded.

To learn more:

• Patent application
• Abandoned application
• USPTO procedures
• Patent file management

After a patent is granted or an application is abandoned, the USPTO has specific procedures for handling incoming communications. According to the MPEP, 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.

In the case of digital documents, the MPEP states, 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 the document will be marked as closed in the digital system, effectively removing it from active consideration.

For more information on post-grant communications, visit: post-grant communications.

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

If the USPTO cannot locate a file after a reasonable search, they will notify the applicant or patentee and set a time period for compliance. According to 37 CFR 1.251(a), the applicant or patentee must respond by:

• Providing a copy of their record of correspondence with the USPTO
• Producing their record for the USPTO to copy
• Stating that they do not possess any record of correspondence

The specific requirements are outlined in the notice and must be followed to avoid potential consequences.

To learn more:

• Unlocatable files
• USPTO procedures
• Patent correspondence
• Application reconstruction

If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.

If you fail to comply with the requirements for correcting micro entity status errors, as outlined in 37 CFR 1.29(k)(1) and (k)(2), the USPTO has two options:

1. Treat it as an authorization to process the deficiency payment and charge a processing fee
2. Require compliance within a non-extendable one-month period

The MPEP states: If the requirements of paragraphs (k)(1) and (2) of this section are not complied with, such failure will either be treated at the option of the Office as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month time period that is not extendable under § 1.136(a) to avoid the return of the fee deficiency payment.

It’s important to carefully follow the requirements to avoid additional fees or potential loss of rights.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

To prove a filing delay due to a postal emergency, applicants must provide sufficient evidence. According to MPEP 511:

The nature of the evidence required by the Office to establish that the paper was timely filed will depend upon the circumstances of the particular emergency and the nature of the filing.

This evidence may include:

• Documentation of the postal service interruption or emergency
• Proof of attempted mailing during the affected period
• Explanation of how the emergency directly impacted the filing
• Any official notices or bulletins related to the postal disruption

The USPTO will evaluate each case individually to determine if the delay was indeed caused by the designated emergency.

To learn more:

• postal emergencies
• evidence
• filing delays
• USPTO procedures

The consequences of not responding to a notice about an unlocatable file differ for pending applications and granted patents:

• For pending applications: According to 37 CFR 1.251(b), 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, the MPEP states that 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 USPTO proceedings, the Office may take action under 37 CFR 41.128 or 37 CFR 11.18.

To learn more:

• Patent abandonment
• USPTO procedures
• Patent enforcement
• Application consequences

Fraudulently establishing small entity status or paying fees as a small entity is considered a serious offense. According to 37 CFR 1.27(h): ‘Any attempt to fraudulently establish status as a small entity or pay fees as a small entity will be considered as a fraud practiced or attempted on the Office.’

The consequences of such actions can be severe, potentially including:

• Invalidation of the patent
• Criminal charges for fraud
• Disciplinary action against registered patent practitioners

It’s crucial to ensure that all claims to small entity status are truthful and accurate. Do not rely on oral advice from USPTO employees regarding entitlement to small entity status.

To learn more:

• small entity status
• fraud
• USPTO procedures
• patent law

Filing a Continued Prosecution Application (CPA) by facsimile requires specific procedures, as outlined in MPEP 502.01:

1. CPAs are only available for design applications.
2. The CPA must be sent to the central facsimile number: (571) 273-8300.
3. An authorization to charge the basic filing fee to a deposit account or credit card must be included, or the application will be treated as filed without the basic filing fee.
4. There is a special receipt procedure for CPA filings by fax:

There is a special receipt procedure for filing a CPA by fax, whereby the Office will fax back a receipt of the CPA filing if applicant submits the Office receipt form along with the CPA filing.

It’s important to note that if the USPTO has no evidence of receiving a CPA transmitted by fax, the applicant may need to file a petition under 37 CFR 1.6(f) to request a filing date. This petition must include:

• Information about the previous transmission
• An additional copy of the CPA
• A statement attesting to the previous transmission
• Evidence of the transmission, such as a sending unit’s report or other evidence created within one business day of the transmission

Always ensure that you follow these procedures carefully when filing a CPA by facsimile to avoid any issues with the filing date or processing of your application.

To learn more:

• Continued Prosecution Application
• CPA
• facsimile filing
• USPTO procedures
• design applications

The deficiency owed for micro entity fee errors is calculated according to 37 CFR 1.29(k)(2). The MPEP states:

The deficiency owed for each previous fee erroneously paid as a micro entity is the difference between the current fee amount for a small entity or non-small entity, as applicable, on the date the deficiency is paid in full and the amount of the previous erroneous micro entity fee payment.

To calculate the total deficiency payment:

1. Determine the current fee amount for each erroneously paid fee (small or non-small entity rate)
2. Subtract the micro entity fee amount previously paid
3. Sum up all individual deficiency amounts

This calculation ensures that the correct fee amount is paid based on the entity status and current fee schedule.

To learn more:

• Micro Entity
• Fee Calculation
• Patent Fees
• USPTO Procedures

How does USPTO verify gross income for micro entity status?

The USPTO generally does not independently verify the gross income of applicants claiming micro entity status. According to MPEP 509.04(a):

“The Office does not generally question certification of micro entity status but may require additional information on a case-by-case basis.”

However, applicants are required to certify their eligibility for micro entity status under oath. Providing false information can lead to severe consequences, including invalidation of the patent and potential criminal charges for fraud.

To learn more:

• micro entity status
• gross income verification
• USPTO procedures

During postal service emergencies, the USPTO takes special measures to ensure patent applications are handled appropriately:

• The USPTO Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a).
• This designation allows for the acceptance of filings that would have been timely filed if not for the postal service interruption or emergency.
• The USPTO may publish a notice in the Official Gazette and on its website about the designation and any special procedures to be followed.

As stated in MPEP 511: The USPTO will consider on a case-by-case basis whether to waive the date indicated on any certificate of mailing or transmission accompanied by a showing which establishes to the satisfaction of the Director that the delay was due to the emergency.

To learn more:

• postal emergencies
• USPTO procedures
• patent applications
• filing deadlines

The USPTO has a specific procedure for handling missing documents from an application file. According to the MPEP:

When a document is missing from an application, Office practice is to call the applicant’s representative and request submission (generally by facsimile) of a copy of the missing document.

This informal approach is the primary method used by the USPTO to address missing documents. However, if this informal method is unsuccessful, the Office may resort to more formal measures:

While the Office will generally treat missing documents in this relatively informal manner (rather than issuing a notice under 37 CFR 1.251), the Office may issue a notice under 37 CFR 1.251 to obtain a copy of a missing document if the Office’s informal attempts to obtain a copy of the document are unsuccessful.

It’s important for applicants and their representatives to promptly respond to such informal requests to avoid more formal procedures and potential delays in application processing.

To learn more:

• Missing documents
• USPTO procedures
• Patent application
• Document submission

How does the USPTO assign application numbers to continuation or divisional applications?

The USPTO assigns application numbers to continuation or divisional applications in the same manner as new applications. According to MPEP 503:

A continuation or divisional application (including a continued prosecution application) filed under 37 CFR 1.53(b) is assigned a new application number.

This means:

• Each continuation or divisional application receives a unique number
• The number is assigned in the same sequence as other new applications
• The application number does not indicate its relationship to the parent application

It’s important to reference the parent application in the appropriate sections of the new application to establish the continuity.

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

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

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

For papers that have been scanned into the Image File Wrapper (IFW) system, the USPTO has a specific procedure for ‘returning’ them. According to MPEP 508.02:

“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 instead of physically returning the paper, the USPTO will electronically close or restrict access to the document within the IFW system. This process maintains the integrity of the digital file while effectively ‘returning’ the document.

To learn more:

• Image File Wrapper
• IFW
• USPTO procedures
• Digital patent files

To properly use a certificate of mailing for patent correspondence, follow these steps:

1. Prepare your correspondence.
2. Attach a certificate of mailing to each piece of correspondence.
3. Include the required information on the certificate.
4. Sign and date the certificate.
5. Mail the correspondence with the attached certificate.

According to MPEP 512:

Each piece of correspondence for which a certificate is filed must include a signed and dated certificate which sets forth the date of deposit or transmission.

Ensure that you follow these guidelines to properly use the certificate of mailing procedure.

To learn more:

• certificate of mailing
• patent correspondence
• USPTO procedures

To correct an error in micro entity status, you need to follow the procedure outlined in 37 CFR 1.29(k). This involves:

• Submitting a separate deficiency payment for each application or patent
• Providing an itemization of the total deficiency payment
• Paying the deficiency owed

The MPEP states: 37 CFR 1.29(k) contains provisions for a micro entity that correspond to the provisions of 37 CFR 1.28(c) for a small entity. This means the process is similar to correcting small entity status errors.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.

For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.

For more information on image file wrapper, visit: image file wrapper.

For more information on patent application filing, visit: patent application filing.

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

Errors in small entity status can be excused if they were made in good faith. According to 37 CFR 1.28(c): ‘If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate submission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section.’

To correct the error, you must:

• Submit a separate deficiency payment for each application or patent
• Provide an itemized list of the fees paid in error
• Pay the deficiency owed (difference between the small entity fee paid and the current non-small entity fee)

To learn more:

• small entity status
• error correction
• patent fees
• USPTO procedures

Yes, submitting a deficiency payment for micro entity fee errors affects your micro entity status. According to 37 CFR 1.29(k)(4):

Any deficiency payment (based on a previous erroneous payment of a micro entity fee) submitted under this paragraph will be treated as a notification of a loss of entitlement to micro entity status under paragraph (i) of this section.

This means that by submitting a deficiency payment, you are effectively notifying the USPTO that you are no longer entitled to micro entity status. After making the deficiency payment, you will need to pay fees at the small entity or non-small entity rate, as applicable, unless you file a new certification of micro entity status.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

According to MPEP 508.02, submitting additional information after a patent application has been abandoned is generally not possible. The section states:

“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.”

This means that once an application is abandoned, the USPTO will typically return any new submissions related to that application. However, there are some exceptions:

• Petitions to revive the abandoned application
• Requests for continued examination (RCE) in certain circumstances
• Appeals to the Patent Trial and Appeal Board, if filed within the appropriate timeframe

If you wish to submit additional information after abandonment, you should consult with a patent attorney to determine if any of these options are available in your specific case.

To learn more:

• Abandoned applications
• Patent revival
• USPTO procedures

Yes, you can request a refund if you establish small entity status after paying full fees, but there are strict time limits:

• You must file an assertion of small entity status and a refund request within 3 months of the date of the full fee payment
• This 3-month period cannot be extended

According to 37 CFR 1.28(a): “A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to establishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136.”

To learn more:

• small entity status
• patent fees
• refunds

To learn more:

• USPTO procedures

No, you cannot correct micro entity status errors for multiple applications or patents in a single submission. The MPEP, citing 37 CFR 1.29(k)(1), states:

Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error) required for a single application or patent. Where more than one application or patent is involved, separate submissions of deficiency payments are required for each application or patent (see § 1.4(b)).

This means you must submit separate deficiency payments and itemizations for each application or patent where micro entity fees were erroneously paid. This requirement ensures clear and accurate processing of fee corrections for each individual case.

To learn more:

• Micro Entity
• Fee Correction
• Patent Fees
• USPTO Procedures

How does the USPTO assign application numbers to continuation or divisional applications?

The USPTO assigns application numbers to continuation or divisional applications in the same manner as new applications. According to MPEP 503:

A continuation or divisional application (including a continued prosecution application) filed under 37 CFR 1.53(b) is assigned a new application number.

This means:

• Each continuation or divisional application receives a unique number
• The number is assigned in the same sequence as other new applications
• The application number does not indicate its relationship to the parent application

It’s important to reference the parent application in the appropriate sections of the new application to establish the continuity.

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

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

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

If the date of receipt stamp is illegible or missing, the USPTO will make every effort to determine the correct date of receipt. This may involve examining other evidence, such as postmarks, electronic filing receipts, or other documentation. If the correct date cannot be determined, the USPTO may use the date it was discovered that the document was received as the date of receipt. Applicants should always ensure that their submissions are properly dated and stamped to avoid potential issues with filing dates.

When a patent or application file cannot be located after a reasonable search, the USPTO has a specific procedure outlined in 37 CFR 1.251. The Office will notify the applicant or patentee and set a time period for compliance with one of the following options:

• Provide a copy of all correspondence records between the Office and the applicant/patentee, along with a list and a statement of completeness.
• Produce the applicant’s/patentee’s records for the Office to copy, along with a statement of completeness.
• If no records are possessed, provide a statement to that effect.

The MPEP states, 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.

For pending applications, failure to comply within the set time period will result in abandonment of the application.

For more information on file reconstruction, visit: file reconstruction.

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

After a patent is granted or an application is abandoned, the USPTO has specific procedures for handling incoming communications. According to the MPEP, 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.

In the case of digital documents, the MPEP states, 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 the document will be marked as closed in the digital system, effectively removing it from active consideration.

For more information on post-grant communications, visit: post-grant communications.

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

Patent applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. As stated in the MPEP, All applications are electronically scanned and loaded into the Image File Wrapper (IFW) system upon filing. This digital system allows examiners, technical support staff, and other Office personnel to perform further processing and examination efficiently.

For physical items such as models, exhibits, and specimens, special handling procedures are in place. The MPEP directs readers to MPEP § 608.03 and 608.03(a) for more information on these items.

For more information on image file wrapper, visit: image file wrapper.

For more information on patent application filing, visit: patent application filing.

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

To prove a filing delay due to a postal emergency, applicants must provide sufficient evidence. According to MPEP 511:

The nature of the evidence required by the Office to establish that the paper was timely filed will depend upon the circumstances of the particular emergency and the nature of the filing.

This evidence may include:

• Documentation of the postal service interruption or emergency
• Proof of attempted mailing during the affected period
• Explanation of how the emergency directly impacted the filing
• Any official notices or bulletins related to the postal disruption

The USPTO will evaluate each case individually to determine if the delay was indeed caused by the designated emergency.

To learn more:

• postal emergencies
• evidence
• filing delays
• USPTO procedures

During postal service emergencies, the USPTO takes special measures to ensure patent applications are handled appropriately:

• The USPTO Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a).
• This designation allows for the acceptance of filings that would have been timely filed if not for the postal service interruption or emergency.
• The USPTO may publish a notice in the Official Gazette and on its website about the designation and any special procedures to be followed.

As stated in MPEP 511: The USPTO will consider on a case-by-case basis whether to waive the date indicated on any certificate of mailing or transmission accompanied by a showing which establishes to the satisfaction of the Director that the delay was due to the emergency.

To learn more:

• postal emergencies
• USPTO procedures
• patent applications
• filing deadlines

To properly use a certificate of mailing for patent correspondence, follow these steps:

1. Prepare your correspondence.
2. Attach a certificate of mailing to each piece of correspondence.
3. Include the required information on the certificate.
4. Sign and date the certificate.
5. Mail the correspondence with the attached certificate.

According to MPEP 512:

Each piece of correspondence for which a certificate is filed must include a signed and dated certificate which sets forth the date of deposit or transmission.

Ensure that you follow these guidelines to properly use the certificate of mailing procedure.

To learn more:

• certificate of mailing
• patent correspondence
• USPTO procedures

No, the USPTO does not return annotated sheets submitted for patent drawing corrections. According to MPEP 608.02(v), “Annotated sheets filed by an applicant and used for correction of the drawing will not be returned.” This policy ensures that the USPTO maintains a complete record of all proposed changes to the patent drawings throughout the examination process.

To learn more:

• patent drawings
• annotated sheets
• USPTO procedures
• drawing corrections

The USPTO typically does not send a filing receipt for a Continued Prosecution Application (CPA). This practice is mentioned in MPEP ¶ 2.35, which states:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The reason for this is that a CPA is a continuation of an existing application rather than an entirely new filing. The USPTO communicates the acceptance of the CPA through other means, typically in the first Office action on the CPA. This approach streamlines the process and reduces redundant paperwork.

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

Assignment documents are not placed directly in patent application files to ensure proper recording and maintenance of ownership records. MPEP 318 states:

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

This procedure serves several purposes:

• It centralizes the recording of ownership information
• It ensures that assignments are properly recorded and searchable
• It keeps the main application file focused on technical and procedural aspects of the patent application
• It allows the Assignment Division to maintain a separate database of patent ownership information

The responsibilities for preparing and reviewing the patent abstract are divided as follows:

• Preparation: The applicant is responsible for preparing the abstract.
• Review: The examiner is responsible for reviewing the abstract for compliance with the guidelines.

The MPEP states: Preparation of the abstract is the responsibility of the applicant. Background knowledge of the art and an appreciation of the applicant’s contribution to the art are most important in the preparation of the abstract. The review of the abstract for compliance with these guidelines is the responsibility of the examiner.

If amendments are necessary, they can be made either by the applicant or by the examiner with the applicant’s approval, especially at the time of allowance or in response to a printer query.

To learn more:

• patent abstract preparation
• patent examiner duties
• patent application
• USPTO procedures

When an attorney is suspended, the signing authority for papers in a patent application depends on the filing date:

For applications filed before September 16, 2012:

• All named applicants
• Assignee of record of an undivided part interest, along with named applicants retaining an interest
• Assignee of the entire interest
• A registered patent attorney or agent not of record acting under 37 CFR 1.34

For applications filed on or after September 16, 2012:

• A patent practitioner of record
• A patent practitioner not of record acting under 37 CFR 1.34
• The applicant (except for juristic entity applicants, which require a patent practitioner)

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

MPEP 318 provides clear guidance on where assignment documents should be forwarded for recording. According to the manual:

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

This means that when submitting assignment documents, they should be sent to the USPTO’s Assignment Division, which is responsible for recording and maintaining records of patent ownership changes.

The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:

In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application.

Key points about the retrieval timing:

• The first attempt is typically made when the application is assigned to an examiner.
• Retrieval occurs after the Office of Patent Application Processing completes its review.
• Applicants should check the Private PAIR system to confirm successful retrieval.
• A successful retrieval usually takes about one week to complete.

To learn more:

• PDX
• USPTO Procedures
• Foreign Applications
• Retrieval Timing

The MPEP provides specific guidance on when an attorney or agent not of record can change the correspondence address. It states:

See MPEP § 402.03 for information regarding when a change of correspondence address or a document granting access (i.e., a power to inspect) may be signed by an attorney or agent who is not of record.

This reference to MPEP § 402.03 suggests that there are certain circumstances where an attorney or agent not of record may be allowed to change the correspondence address or grant access to application information. For specific details, it’s recommended to consult MPEP § 402.03 directly.

For more information on Correspondence Address, visit: Correspondence Address.

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

What types of evidence can be used to establish assignee ownership in pre-AIA applications?

For pre-AIA applications (filed before September 16, 2012), assignees can use various types of evidence to establish ownership, including:

• Assignment documents
• Corporate merger documentation
• Patent purchase agreements
• Court orders
• Joint research agreements

The MPEP 324 states: “The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee.” This means that in addition to proving ownership, the assignee must also demonstrate the authority of the person acting on their behalf.

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

For more information on pre-AIA, visit: pre-AIA.

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

To claim the benefit of a prior application’s filing date for a divisional application, applicants must follow specific procedures. The MPEP ¶ 2.01 provides guidance:

Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.

This means applicants should:

• Review 35 U.S.C. 120 for statutory requirements
• Consult MPEP § 211 for detailed guidance on claiming benefit
• Follow the procedures outlined in 37 CFR 1.78 for claiming benefit of an earlier-filed application

It’s crucial to properly establish the benefit claim to secure the earlier filing date for the divisional application.

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

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

If there’s an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the procedure differs from correcting cover sheet errors. According to MPEP 323.01(b):

1. The party responsible for the erroneous document (e.g., the assignor) must either:
   • Create and record a new document, or
   • Make corrections to the original document and re-record it
2. If the assignor is unavailable, the assignee may:
   • Submit an affidavit or declaration identifying the error and requesting correction
   • Include a copy of the originally recorded papers
   • Provide a new cover sheet
   • Pay the required fee for each application or patent to be corrected (37 CFR 3.41)

This process ensures that errors in the actual assignment document are properly addressed and corrected in the USPTO records.

To learn more:

• assignment document errors
• patent assignment
• recordation correction
• USPTO procedures

Papers related to property rights under the Atomic Energy Act or National Aeronautics and Space Act require special handling. According to MPEP 150:

Any papers pertaining to property rights under section 152 of the Atomic Energy Act, 42 U.S.C. 2182, (DOE), or section 305(c) or the National Aeronautics and Space Act, 42 U.S.C. 2457, (NASA), that have not been associated with the application file, or have not been made of record in the file and processed by the Licensing and Review section, must be sent to the Licensing and Review section immediately.

Key points:

• Papers related to property rights under these acts must be properly associated with the application file
• If not already processed by the Licensing and Review section, they must be sent there immediately
• This ensures proper handling and review of sensitive information related to atomic energy or space activities

For more information on National Aeronautics and Space Act, visit: National Aeronautics and Space Act.

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

If an applicant’s patent attorney or agent is suspended, they should take the following steps:

1. File a new power of attorney in the application to have a registered attorney or agent represent them before the Office.
2. Ensure all future papers are signed by authorized parties (see MPEP § 407, Form Paragraph 4.07 for details on who can sign).
3. If necessary, find a new registered patent attorney or agent using USPTO resources.
4. Update the correspondence address for the application if it was previously associated with the suspended practitioner.

It’s important to act promptly to ensure continued proper representation and communication with the USPTO.

The USPTO provides specific procedures for resubmitting returned patent documents. According to MPEP 317.01:

“The procedure set forth in § 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service.”

This means that when resubmitting corrected documents, you can use either the Certificate of Mailing procedure (37 CFR 1.8) or the Express Mail procedure (37 CFR 1.10) to potentially preserve the original filing date based on the postal deposit date.

To learn more:

• patent document resubmission
• USPTO procedures
• postal procedures

Keeping assignment documents separate from patent application files is significant for several reasons. MPEP 318 mandates this separation:

“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 significance of this practice includes:

• Maintaining clear distinction between technical content and ownership information
• Ensuring proper recording and indexing of assignment documents
• Facilitating easier searches for patent ownership information
• Reducing the risk of confidential ownership information being inadvertently disclosed
• Allowing for more efficient management of ownership changes throughout a patent’s lifecycle
• Enabling the Assignment Division to specialize in handling ownership matters

This separation streamlines both the patent examination process and the management of patent ownership records.

The Assignment Division plays a crucial role in handling patent assignments at the USPTO. As indicated in 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 submitted for recording
• Properly recording and maintaining assignment records
• Ensuring the accuracy and accessibility of ownership information
• Managing the assignment database separate from application and patent files

This specialized division ensures that patent ownership information is correctly documented and readily available when needed.

To learn more:

• Assignment Division
• patent assignments
• document recording
• USPTO procedures

According to MPEP 317.01, the recording date for a patent document is defined as follows:

“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.”

This means that the recording date is established when a document that complies with all the necessary requirements is received by the United States Patent and Trademark Office (USPTO).

To learn more:

• patent recording
• document filing
• USPTO procedures

Title reports play a specific role in patent reexamination procedures. The MPEP mentions:

For example, a title report is requested by the Reexamination Preprocessing Staff when a request for reexamination is filed.

This suggests that title reports are used to verify the current owner of a patent when a reexamination is initiated, ensuring that the proper parties are involved in the process.

The process for returning models, exhibits, or specimens to patent applicants is outlined in 37 CFR 1.94. Key points include:

• The USPTO may return items when they are no longer necessary for the conduct of business.
• Applicants are notified and must arrange for the return at their own expense.
• A time period (usually two months) is set for making return arrangements.
• Extensions of time are available under 37 CFR 1.136, except for perishables.

The MPEP states, Failure by applicant to establish that arrangements for the return of a model, exhibit, or specimen have been made within the time period set in the notice will result in the disposal of the model, exhibit, or specimen by the Office. (MPEP 608.03(a))

To learn more:

• models
• exhibits
• specimens
• return process
• USPTO

To learn more:

• patent models
• USPTO procedures

While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps:

1. Prepare a document evidencing the name change (e.g., a certificate of name change or merger document)
2. Complete a cover sheet (Form PTO-1595 or equivalent) that includes:
   • The former name (in the space for the party conveying the interest)
   • The new name (in the space for the party receiving the interest)
   • A description of the interest conveyed as “Name Change”
   • Identification of the affected patents or applications
3. Submit the document and cover sheet to the USPTO for recordation, along with any required fee
4. The submission can be done electronically through EPAS, by mail, or by fax (subject to limitations)

As with other recorded documents, the USPTO will assign reel and frame numbers and add recordation stampings to the processed document.

It’s important to note that while this process records the name change, it does not update the assignee name in individual patent or application files. Separate requests may be needed to update assignee names in specific applications or patents.