Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
'MPEP 306-Assignment of Division (1)
For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
and Continuation-in-Part in Relation to Parent Application' (1)
For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
MPEP 200 - Types and Status of Application; Benefit and Priority (1)
The ‘Minimum Significant Part of the Number’ refers to the essential portion of a foreign application number that should be used in United States Patent and Trademark Office (USPTO) records. According to the MPEP:
The ‘Minimum Significant Part of the Number’ identified in the tables should be used in United States Patent and Trademark Office records.
This concept is important because:
- It standardizes the citation of foreign applications across different numbering systems
- It ensures that the most crucial identifying information is captured
- It facilitates accurate cross-referencing and searching of patent documents
Applicants and examiners should refer to the WIPO tables to determine the correct ‘Minimum Significant Part of the Number’ for each foreign intellectual property office.
To learn more:
MPEP 300 - Ownership and Assignment (6)
USPTO patent assignment records contain valuable information about the ownership and transfer of patent rights. According to MPEP 301.01, these records include:
- Reel and frame number of the recordation
- Name of the conveying party (assignor)
- Name and address of the receiving party (assignee)
- Patent or application number
- Date of execution
- Date of recordation
The MPEP further states: The actual assignment document will not be viewable through Assignment Search. Only the bibliographic information contained in the recorded cover sheet will be viewable from the Assignment Search database.
This information helps track the chain of title for patents and applications, which is crucial for determining current ownership and potential licensing opportunities.
If an assignee’s ownership changes during patent prosecution, it’s crucial to update the USPTO records. As per MPEP 325:
“A new statement under 37 CFR 3.73(c) is required to be filed when ownership changes to another assignee.”
This means that:
- The new assignee must file a new 37 CFR 3.73(c) statement.
- The new statement must establish the new assignee’s ownership.
- Until the new statement is filed, the previous assignee remains the party of record.
It’s important to keep ownership records up-to-date to ensure that the correct party has the right to take action in the application.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO records, visit: USPTO records.
How does the USPTO handle incorrect or erroneous assignment recordings?
The USPTO has a specific process for handling incorrect or erroneous assignment recordings:
- No expungement: The USPTO does not expunge or remove assignment documents once they are recorded.
- Corrective documents: Parties can record corrective documents to address errors or provide clarifications.
- Maintaining integrity: This approach preserves the integrity of the assignment records.
As stated in MPEP 302: ‘Even if a recorded document is subsequently found to be invalid, the recording will be maintained in the assignment records and the assignment records will not be expunged.’ This policy ensures a complete historical record of all recorded documents.
For more information on USPTO records, visit: USPTO records.
For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
Obtaining copies of patent assignment records depends on when the assignment was recorded. According to MPEP 301.01:
- For assignments recorded on or after May 1, 1957:
- Copies can be obtained from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19.
- The MPEP states: “Requests for abstracts of title for assignments of patents recorded after May 1, 1957, are provided by the Certification Division upon request and payment of fee required in 37 CFR 1.19.”
- For assignments recorded before May 1, 1957:
- These records are maintained by the National Archives and Records Administration (NARA).
- Requests should be directed to NARA directly.
- The MPEP advises: “Requests for copies of pre-1957 records for patents should be directed to the National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA.”
When requesting copies, be sure to identify the reel and frame number where the assignment is recorded to avoid extra charges for search time.
To learn more:
There are two ways to make a patent assignment of record with the USPTO:
- Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
- Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
MPEP 301-Ownership/Assignability of Patents and Applications (2)
USPTO patent assignment records contain valuable information about the ownership and transfer of patent rights. According to MPEP 301.01, these records include:
- Reel and frame number of the recordation
- Name of the conveying party (assignor)
- Name and address of the receiving party (assignee)
- Patent or application number
- Date of execution
- Date of recordation
The MPEP further states: The actual assignment document will not be viewable through Assignment Search. Only the bibliographic information contained in the recorded cover sheet will be viewable from the Assignment Search database.
This information helps track the chain of title for patents and applications, which is crucial for determining current ownership and potential licensing opportunities.
There are two ways to make a patent assignment of record with the USPTO:
- Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
- Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
MPEP 302 - Recording of Assignment Documents (1)
How does the USPTO handle incorrect or erroneous assignment recordings?
The USPTO has a specific process for handling incorrect or erroneous assignment recordings:
- No expungement: The USPTO does not expunge or remove assignment documents once they are recorded.
- Corrective documents: Parties can record corrective documents to address errors or provide clarifications.
- Maintaining integrity: This approach preserves the integrity of the assignment records.
As stated in MPEP 302: ‘Even if a recorded document is subsequently found to be invalid, the recording will be maintained in the assignment records and the assignment records will not be expunged.’ This policy ensures a complete historical record of all recorded documents.
For more information on USPTO records, visit: USPTO records.
Patent Law (9)
The incorporation-by-reference statement in a patent application should include information about specific types of electronic documents that are to become part of the permanent USPTO records. According to 37 CFR 1.77(b)(5), this statement should identify:
- The names of each file
- The date of creation of each file
- The size of each file in bytes
This applies to the following document types:
- A ‘Computer Program Listing Appendix’
- A ‘Sequence Listing’
- ‘Large Tables’
- An XML file for a ‘Sequence Listing XML’
The MPEP states, The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application.
To learn more:
The ‘Minimum Significant Part of the Number’ refers to the essential portion of a foreign application number that should be used in United States Patent and Trademark Office (USPTO) records. According to the MPEP:
The ‘Minimum Significant Part of the Number’ identified in the tables should be used in United States Patent and Trademark Office records.
This concept is important because:
- It standardizes the citation of foreign applications across different numbering systems
- It ensures that the most crucial identifying information is captured
- It facilitates accurate cross-referencing and searching of patent documents
Applicants and examiners should refer to the WIPO tables to determine the correct ‘Minimum Significant Part of the Number’ for each foreign intellectual property office.
To learn more:
USPTO patent assignment records contain valuable information about the ownership and transfer of patent rights. According to MPEP 301.01, these records include:
- Reel and frame number of the recordation
- Name of the conveying party (assignor)
- Name and address of the receiving party (assignee)
- Patent or application number
- Date of execution
- Date of recordation
The MPEP further states: The actual assignment document will not be viewable through Assignment Search. Only the bibliographic information contained in the recorded cover sheet will be viewable from the Assignment Search database.
This information helps track the chain of title for patents and applications, which is crucial for determining current ownership and potential licensing opportunities.
If an assignee’s ownership changes during patent prosecution, it’s crucial to update the USPTO records. As per MPEP 325:
“A new statement under 37 CFR 3.73(c) is required to be filed when ownership changes to another assignee.”
This means that:
- The new assignee must file a new 37 CFR 3.73(c) statement.
- The new statement must establish the new assignee’s ownership.
- Until the new statement is filed, the previous assignee remains the party of record.
It’s important to keep ownership records up-to-date to ensure that the correct party has the right to take action in the application.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO records, visit: USPTO records.
How does the USPTO handle incorrect or erroneous assignment recordings?
The USPTO has a specific process for handling incorrect or erroneous assignment recordings:
- No expungement: The USPTO does not expunge or remove assignment documents once they are recorded.
- Corrective documents: Parties can record corrective documents to address errors or provide clarifications.
- Maintaining integrity: This approach preserves the integrity of the assignment records.
As stated in MPEP 302: ‘Even if a recorded document is subsequently found to be invalid, the recording will be maintained in the assignment records and the assignment records will not be expunged.’ This policy ensures a complete historical record of all recorded documents.
For more information on USPTO records, visit: USPTO records.
Changing the correspondence address in a patent application does not affect a patent practitioner’s address in the USPTO roster of patent attorneys and agents. This is explicitly stated in 37 CFR 1.33(e):
A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
This means that practitioners must separately update their contact information in the USPTO roster if they wish to change their official address on record with the USPTO. The change of correspondence address in a specific application or patent is independent of the practitioner’s address in the official roster.
To learn more:
For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
Obtaining copies of patent assignment records depends on when the assignment was recorded. According to MPEP 301.01:
- For assignments recorded on or after May 1, 1957:
- Copies can be obtained from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19.
- The MPEP states: “Requests for abstracts of title for assignments of patents recorded after May 1, 1957, are provided by the Certification Division upon request and payment of fee required in 37 CFR 1.19.”
- For assignments recorded before May 1, 1957:
- These records are maintained by the National Archives and Records Administration (NARA).
- Requests should be directed to NARA directly.
- The MPEP advises: “Requests for copies of pre-1957 records for patents should be directed to the National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA.”
When requesting copies, be sure to identify the reel and frame number where the assignment is recorded to avoid extra charges for search time.
To learn more:
There are two ways to make a patent assignment of record with the USPTO:
- Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
- Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.
Patent Procedure (9)
The incorporation-by-reference statement in a patent application should include information about specific types of electronic documents that are to become part of the permanent USPTO records. According to 37 CFR 1.77(b)(5), this statement should identify:
- The names of each file
- The date of creation of each file
- The size of each file in bytes
This applies to the following document types:
- A ‘Computer Program Listing Appendix’
- A ‘Sequence Listing’
- ‘Large Tables’
- An XML file for a ‘Sequence Listing XML’
The MPEP states, The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application.
To learn more:
The ‘Minimum Significant Part of the Number’ refers to the essential portion of a foreign application number that should be used in United States Patent and Trademark Office (USPTO) records. According to the MPEP:
The ‘Minimum Significant Part of the Number’ identified in the tables should be used in United States Patent and Trademark Office records.
This concept is important because:
- It standardizes the citation of foreign applications across different numbering systems
- It ensures that the most crucial identifying information is captured
- It facilitates accurate cross-referencing and searching of patent documents
Applicants and examiners should refer to the WIPO tables to determine the correct ‘Minimum Significant Part of the Number’ for each foreign intellectual property office.
To learn more:
USPTO patent assignment records contain valuable information about the ownership and transfer of patent rights. According to MPEP 301.01, these records include:
- Reel and frame number of the recordation
- Name of the conveying party (assignor)
- Name and address of the receiving party (assignee)
- Patent or application number
- Date of execution
- Date of recordation
The MPEP further states: The actual assignment document will not be viewable through Assignment Search. Only the bibliographic information contained in the recorded cover sheet will be viewable from the Assignment Search database.
This information helps track the chain of title for patents and applications, which is crucial for determining current ownership and potential licensing opportunities.
If an assignee’s ownership changes during patent prosecution, it’s crucial to update the USPTO records. As per MPEP 325:
“A new statement under 37 CFR 3.73(c) is required to be filed when ownership changes to another assignee.”
This means that:
- The new assignee must file a new 37 CFR 3.73(c) statement.
- The new statement must establish the new assignee’s ownership.
- Until the new statement is filed, the previous assignee remains the party of record.
It’s important to keep ownership records up-to-date to ensure that the correct party has the right to take action in the application.
For more information on patent prosecution, visit: patent prosecution.
For more information on USPTO records, visit: USPTO records.
How does the USPTO handle incorrect or erroneous assignment recordings?
The USPTO has a specific process for handling incorrect or erroneous assignment recordings:
- No expungement: The USPTO does not expunge or remove assignment documents once they are recorded.
- Corrective documents: Parties can record corrective documents to address errors or provide clarifications.
- Maintaining integrity: This approach preserves the integrity of the assignment records.
As stated in MPEP 302: ‘Even if a recorded document is subsequently found to be invalid, the recording will be maintained in the assignment records and the assignment records will not be expunged.’ This policy ensures a complete historical record of all recorded documents.
For more information on USPTO records, visit: USPTO records.
Changing the correspondence address in a patent application does not affect a patent practitioner’s address in the USPTO roster of patent attorneys and agents. This is explicitly stated in 37 CFR 1.33(e):
A change of address filed in a patent application or patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.
This means that practitioners must separately update their contact information in the USPTO roster if they wish to change their official address on record with the USPTO. The change of correspondence address in a specific application or patent is independent of the practitioner’s address in the official roster.
To learn more:
For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.
Obtaining copies of patent assignment records depends on when the assignment was recorded. According to MPEP 301.01:
- For assignments recorded on or after May 1, 1957:
- Copies can be obtained from the USPTO upon request and payment of the fee set forth in 37 CFR 1.19.
- The MPEP states: “Requests for abstracts of title for assignments of patents recorded after May 1, 1957, are provided by the Certification Division upon request and payment of fee required in 37 CFR 1.19.”
- For assignments recorded before May 1, 1957:
- These records are maintained by the National Archives and Records Administration (NARA).
- Requests should be directed to NARA directly.
- The MPEP advises: “Requests for copies of pre-1957 records for patents should be directed to the National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA.”
When requesting copies, be sure to identify the reel and frame number where the assignment is recorded to avoid extra charges for search time.
To learn more:
There are two ways to make a patent assignment of record with the USPTO:
- Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment.
- Make the assignment of record in the file of a patent application, patent, or other patent proceeding. This may be necessary for the assignee to ‘take action’ in the application or proceeding.
For a patent to issue to an assignee, the assignment must be recorded or filed for recordation in accordance with 37 CFR 3.11.