What is a ‘chain of title’ in patent ownership?
A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers: Although a mere change of name does not constitute a change in legal entity, it is properly a link…
Read MoreDoes a change of business name constitute a change in legal entity for patent purposes?
No, a mere change of business name does not constitute a change in legal entity for patent purposes. However, it is still an important part of the ownership record. As stated in MPEP 314: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the…
Read MoreHow binding are arbitration awards in patent disputes?
Arbitration awards in patent disputes are binding between the parties involved in the arbitration but do not affect others. According to 35 U.S.C. 294(c): ‘An award by an arbitrator shall be final and binding between the parties to the arbitration but shall have no force or effect on any other person.’ However, if the patent…
Read MoreWho can sign the submission establishing ownership for an assignee organization?
For an assignee organization (e.g., corporation, partnership, university), the submission establishing ownership can be signed by: A person with apparent authority to sign on behalf of the organization, such as an officer (e.g., CEO, president, vice-president, secretary, treasurer). The MPEP states: “An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have…
Read MoreAre attorney’s liens against patents or patent applications recordable at the USPTO?
No, attorney’s liens against patents or patent applications are not accepted for recording at the USPTO. This is explicitly stated in the MPEP: “Documents that are not accepted for recording include attorney’s liens against patents or patent applications. See In re Refusal of Assignment Branch to Record Attorney’s Lien, 8 USPQ2d 1446 (Comm’r Pat. 1988).”…
Read MoreWho can sign the 37 CFR 3.73(c) statement establishing assignee ownership?
According to the MPEP, the 37 CFR 3.73(c) statement establishing assignee ownership can be signed by: A person in the organization having apparent authority to sign on behalf of the organization (e.g., an officer) Any person, if the statement sets forth that the person is authorized to act on behalf of the assignee A patent…
Read MoreWhat is an ‘assignment-statement’ and how is it used in patent applications?
An ‘assignment-statement’ is a relatively new concept in patent law, introduced for applications filed on or after September 16, 2012. The MPEP explains: ‘For applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (‘assignment-statement’),…
Read MoreHow is assignment information printed on a patent?
Assignment information printed on a patent follows these guidelines: Only the first appearing name of an assignee will be printed on the patent, even if multiple names for the same party are identified on the Fee(s) Transmittal form (PTOL-85B). This printing practice does not affect the recording of assignments with the USPTO’s Assignment Division. The…
Read MoreWhy are assignment documents not placed directly in patent application files?
Assignment documents are not placed directly in patent application files to ensure proper recording and maintenance of ownership records. MPEP 318 states: “Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.” This procedure serves several purposes: It centralizes the recording…
Read MoreWhat is the difference in assignment between division/continuation and substitute/CIP applications?
The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied: Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application…
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