How does an assignee establish ownership in a patent application?
An assignee establishes ownership in a patent application by filing a statement under 37 CFR 3.73(c). According to MPEP 325: “The statement under 37 CFR 3.73(c) must be filed in the application or patent where ownership must be established and must contain:(A) documentary evidence of a chain of title from the original owner to the…
Read MoreWhat happens if an assignee’s ownership changes during patent prosecution?
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…
Read MoreWhat is the purpose of Form PTO/AIA/96?
What is the purpose of Form PTO/AIA/96? Form PTO/AIA/96 is used to establish the right of an assignee to take action in a patent application filed on or after September 16, 2012. According to the MPEP 325: “Form PTO/AIA/96 may be used to establish the right of an assignee to take action in an application…
Read MoreCan multiple assignees take action in a patent application?
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…
Read MoreWhat is the effect of recording an assignment at the USPTO?
Recording an assignment at the USPTO does not determine its validity or effect on title. As stated in 37 CFR 3.54: “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,…
Read MoreWhat are the format requirements for submitting assignment documents electronically?
For electronic submissions of assignment documents, the USPTO requires: Either a copy of the original document or an extract of the original document Documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another prescribed format When printed to paper size of 21.6 by 27.9 cm (8 1/2 inches by 11…
Read MoreHow can I ensure my corrected assignment documents are considered timely submitted?
To ensure your corrected assignment documents are considered timely submitted, the USPTO provides two methods as outlined in MPEP 317.02: Use the certification procedure under 37 CFR 1.8 (see MPEP § 512) Use the “Priority Mail Express®” procedure under 37 CFR 1.10 (see MPEP § 513) The MPEP states: “The certification procedure under 37 CFR…
Read MoreWhat evidence is required to expunge an assignment record at the USPTO?
To expunge an assignment record at the USPTO, clear evidence must be provided that the document was submitted by mistake or is of improper character. The MPEP 323.01(d) states: ‘The USPTO will not expunge any assignment records that have been recorded absent a petition pursuant to 37 CFR 1.59.’ While the MPEP doesn’t provide specific…
Read MoreWhat evidence is needed to support a petition to expunge an improper assignment?
To support a petition to expunge an improperly recorded assignment, you should provide evidence that clearly demonstrates the assignment is incorrect. This may include: Affidavits or declarations from relevant parties Documentation showing true ownership Evidence of fraud or mistake in the recording MPEP 323.01(c) states: ‘The petition should be accompanied by clear and convincing evidence…
Read MoreAre there any exceptions to the USPTO’s English translation requirement for assignments?
Based on the information provided in MPEP 302.02, there are no exceptions to the USPTO’s English translation requirement for assignments. The MPEP states unequivocally: The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation. This requirement applies to all non-English assignment documents…
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