How is the enforceability of patent arbitration awards determined?
The enforceability of patent arbitration awards is contingent upon proper notice being filed with the USPTO. According to 35 U.S.C. 294(e) and 37 CFR 1.335(c): ‘The award shall be unenforceable until the notice required by subsection (d) is received by the Director.’ This means that until the proper notice of the arbitration award is filed…
Read MoreHow is ownership established in continuing patent applications filed before September 16, 2012?
For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways: The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be…
Read MoreWhat are the requirements for submitting an assignment document electronically to the USPTO?
To submit an assignment document electronically to the USPTO, the following requirements must be met: The document must be submitted via the Electronic Patent Assignment System (EPAS) An identified application or patent number must be included One cover sheet must be completed online to record a single transaction The signature on the cover sheet must…
Read MoreWhat is the effect of recording a patent assignment?
Recording a patent assignment with the USPTO has specific legal effects. The MPEP states: ‘Recordation of the assignment provides legal notice to the public of the assignment.’ However, it’s important to note that: ‘It should be noted that recording of the assignment is merely a ministerial act; it is not an Office determination of the…
Read MoreHow does assignment work for division and continuation applications?
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…
Read MoreWhat is the Departmental Register and Secret Register for patent assignments?
The USPTO maintains two special registers for recording certain government interests in patents and patent applications, as outlined in 37 CFR 3.58: Departmental Register: This register records governmental interests required by Executive Order 9424. It is not open to public inspection but can be examined by authorized government representatives. However, governmental interests recorded on this…
Read MoreWhat defenses can be considered in patent arbitration proceedings?
In patent arbitration proceedings, the defenses provided under 35 U.S.C. 282 must be considered by the arbitrator if raised by any party. This is specified in 35 U.S.C. 294(b): ‘In any such arbitration proceeding, the defenses provided for under section 282 shall be considered by the arbitrator if raised by any party to the proceeding.’…
Read MoreHow can I correct a returned assignment document at the USPTO?
If your assignment document is returned by the USPTO Assignment Division, you can correct it as follows: The returned document will be stamped with the original receipt date. It will come with a letter specifying a time period for correction and resubmission. If resubmitted within this period, the original receipt date may be considered the…
Read MoreWhat are conflicting claims in patent applications and why are they significant?
MPEP 303 mentions conflicting claims as a situation where assignment information becomes crucial: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims…” (MPEP 303) Conflicting claims occur when two or more patent applications claim the same or overlapping subject matter. This is significant because: It…
Read MoreWhat are the contractor’s obligations regarding government license rights in patent applications?
According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations: Include the government license rights statement at the beginning of the patent application and any issued patents. Specify the contract under which the invention was made. Identify the Federal agency that awarded the contract. Acknowledge that the government…
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