How can an assignee establish the right to take action in a pre-AIA application?
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: Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or Specifying in the papers requesting or…
Read MoreWhat is the difference between pre-AIA and AIA applications regarding assignee filing?
What is the difference between pre-AIA and AIA applications regarding assignee filing? The key difference between pre-AIA (America Invents Act) and AIA applications regarding assignee filing lies in the requirements for establishing the right of an assignee to take action: Pre-AIA applications (filed before September 16, 2012): The assignee must establish their right to take…
Read MoreWhat types of evidence can be used to establish assignee ownership in pre-AIA applications?
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…
Read MoreWho can prosecute a patent application as the applicant?
According to MPEP 325, one or more assignees can conduct prosecution of a national patent application as the applicant. Specifically, 37 CFR 3.71(b) states that: “The assignee(s) who may conduct either the prosecution of a national application for patent as the applicant under § 1.46 of this title or a supplemental examination or reexamination proceeding…
Read MoreHow is ownership established when there are multiple assignees?
When there are multiple assignees or a combination of partial assignees and inventors, establishing ownership for patent applications becomes more complex. According to MPEP 325 and 37 CFR 3.73(c)(2), each owner must submit a statement that either: Specifies the percentage of their ownership interest, accounting for the entire right, title, and interest in the application…
Read MoreWhat actions can a patent owner or assignee take in a patent application?
According to MPEP 325, a patent owner or assignee who has become the applicant can take various actions in a patent application. These include: Signing a reply to an Office action (37 CFR 1.33(b)(3)) Requesting a continued prosecution application (CPA) under 37 CFR 1.53(d) Filing a disclaimer under 37 CFR 1.321 Submitting a Fee(s) Transmittal…
Read MoreWhat happens if there are conflicting ownership claims in a patent application?
When multiple parties submit conflicting ownership claims for a patent application, the USPTO has a process to determine which party, if any, will control the prosecution. According to MPEP 325 and 37 CFR 3.73(c)(3): “Where two or more purported assignees file conflicting 37 CFR 3.73(c) statements in an application or other Office proceeding, the Director…
Read MoreWho can sign documents on behalf of an assignee organization?
When an assignee is an organization (e.g., corporation, partnership, university), specific individuals are authorized to sign documents on its behalf. According to MPEP 325, the following persons can sign submissions under 37 CFR 3.73(c): A person with apparent authority to sign on behalf of the organization. This typically includes officers such as the CEO, president,…
Read MoreWhat are the requirements for an assignee to take action in a patent application filed on or after September 16, 2012?
For an assignee to take action in a patent application filed on or after September 16, 2012, the following requirements must be met: The assignee must be of the entire right, title, and interest in the application. A statement under 37 CFR 3.73(c) must be filed in the application. The statement must identify the assignee…
Read MoreWhat is the difference between an assignment and a 37 CFR 3.73(c) statement?
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.…
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