How do USPTO examiners obtain title reports?
USPTO examiners have a specific internal process for obtaining title reports when needed. The MPEP outlines this process: Examiners may obtain a title report using the PALM Intranet (select “General Information,” insert the appropriate application number, select “Search,” select “Assignments”). The screen resulting from the search may be printed to yield the copy of the…
Read MoreHow can I submit a patent assignment document to the USPTO?
There are three main ways to submit a patent assignment document to the USPTO: Mail: Documents can be mailed to the address specified in 37 CFR 3.27: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. Fax: Documents can be submitted via facsimile, as…
Read MoreHow does an assignee establish ownership to take action in a patent application?
To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must: File a request to change the applicant under 37 CFR 1.46(c)(2) File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant Submit a statement…
Read MoreHow should a joint research agreement be recorded with the USPTO?
To record a joint research agreement with the USPTO, follow these steps based on 37 CFR 3.11(c) and 37 CFR 3.31(g): Prepare either a copy of the joint research agreement or an excerpt of it. Complete a cover sheet that includes: Identification of the document as a “joint research agreement” in the space for describing…
Read MoreWhere should the government license rights statement be placed in a patent application?
The placement of the government license rights statement in a patent application depends on whether there are references to related applications: If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification. If there are…
Read MoreWhat is the government license rights statement required for contractor-owned inventions?
The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is: ‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’ This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at…
Read MoreHow should a foreign assignee designate a domestic representative for patent matters?
According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it: Prepare a written document signed by the assignee. State the name and address of a person residing within the…
Read MoreAre there exceptions to the patent ownership restrictions for USPTO employees?
Yes, there are two exceptions to the patent ownership restrictions for USPTO employees: Inheritance Bequest According to 35 U.S.C. 4: ‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of… acquiring, directly or indirectly, except by inheritance or bequest, any patent…
Read MoreWhat is required to establish ownership for an assignee to take action in a patent application filed before September 16, 2012?
To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required: The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records. A…
Read MoreHow is ownership established when there are multiple assignees for a patent application?
When there are multiple assignees for a patent application, patent, or reexamination proceeding, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b) to take action before the USPTO. The process is as follows: Each partial assignee must submit their own pre-AIA 37 CFR 3.73(b) statement. In each submission, the extent of the…
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