Who can take action as an assignee in a patent application filed on or after September 16, 2012?
According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are: A single assignee who is the assignee of the entire right, title and interest in the application or patent, or All partial assignees, or all partial assignees and inventors who have not assigned their rights, who…
Read MoreCan a request for issuance to an assignee be submitted after the issue fee is paid?
Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply: The request must state that the assignment was submitted for recordation before patent issuance. It must include a request for a certificate of correction under 37 CFR 1.323. The appropriate fees must be paid,…
Read MoreWhat happens if the assignee’s name is not provided on the Fee(s) Transmittal form?
If the assignee’s name and address are not identified in item 3 of the Fee(s) Transmittal form (PTOL-85B), the following occurs: The patent will issue to the applicant instead of the assignee. Assignment data printed on the patent will be based solely on the information supplied on the PTOL-85B form. As stated in the MPEP:…
Read MoreTo whom is a patent granted when filed by someone other than the inventor?
When a patent is granted on an application filed by someone other than the inventor, it is issued to the real party in interest. This is stipulated in both 35 U.S.C. 118 and 37 CFR 1.46(e): 35 U.S.C. 118 states: If the Director grants a patent on an application filed under this section by a…
Read MoreHow long do patent restrictions apply to former USPTO employees?
Patent restrictions for former USPTO employees extend for one year after their employment ends. 35 U.S.C. 4 states: ‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance…
Read MoreWhat is patent ownership according to 35 U.S.C. 261?
According to 35 U.S.C. 261, patents have the attributes of personal property and are assignable by an instrument in writing. Specifically, the statute states: ‘Subject to the provisions of this title, patents shall have the attributes of personal property. […] Applications for patent, patents, or any interest therein, shall be assignable in law by an…
Read MoreWhen is it necessary for a patent examiner to obtain assignment information from PALM?
MPEP 303 outlines specific situations where a patent examiner needs to obtain assignment information from the Patent Application Locator and Monitoring (PALM) system: “When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a question as to who should direct prosecution, it is…
Read MoreWhat is the process for issuing a patent to a non-applicant assignee?
The process for issuing a patent to a non-applicant assignee involves the following steps: A request for issuance to the assignee must be submitted with the payment of the issue fee. The assignment must have been previously recorded in the USPTO or filed for recordation. If the request is submitted after the issue fee payment,…
Read MoreWhat is the difference between patent assignment and licensing?
Patent assignment and licensing are two different ways of transferring patent rights. The MPEP defines assignment as: ‘Assignment of patent rights is defined as ‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….” In contrast, licensing is described as: ‘As compared to assignment…
Read MoreWhat is the difference between an assignment and a license in patent law?
The MPEP distinguishes between assignments and licenses in patent law: Assignment: ‘An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application.’ License: ‘As compared to assignment of patent rights, the licensing of a…
Read More