What is voluntary arbitration in patent disputes?
Voluntary arbitration in patent disputes is a process outlined in 35 U.S.C. 294 where parties can agree to settle disputes related to patent validity or infringement through arbitration. The law states: ‘A contract involving a patent or any right under a patent may contain a provision requiring arbitration of any dispute relating to patent validity…
Read MoreWhat types of documents can be recorded in the USPTO besides assignments?
In addition to assignments, the USPTO will record various other documents relating to interests in patent applications and patents upon request. These include: License agreements Security interest agreements Other documents affecting title to applications, patents, and registrations As stated in the MPEP, “Other documents affecting title to applications, patents, and registrations will be recorded as…
Read MoreDoes the USPTO determine the legal effect of recorded documents on patent ownership?
No, the USPTO does not determine the legal effect of recorded documents on patent ownership at the time of recordation. The MPEP clearly states: “The recordation of a document is not a determination of the effect of the document on the chain of title. The determination of what, if any, effect a document has on…
Read MoreWhat can I do if the USPTO refuses to record a document I believe should be recorded?
If the USPTO returns a document unrecorded and you believe it represents an unusual case that justifies recordation, you have the option to petition for its recordation. The MPEP provides the following guidance: “Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office…
Read MoreCan USPTO employees apply for patents while employed?
No, USPTO employees cannot apply for patents while employed. 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 applying for a patent…’ This restriction extends for one year after their employment at the USPTO ends.
Read MoreWhat is the recording date for a document at the USPTO Assignment Division?
The recording date for a document at the USPTO Assignment Division is determined as follows: It is the date when a document meeting all requirements is filed with the Office. Documents not complying with identification requirements (37 CFR 3.21) will not be recorded. Documents with other deficiencies (e.g., missing cover sheet or fee) will be…
Read MoreHow does the USPTO handle assignment records for division and continuation applications?
While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records…
Read MoreWhat is the role of the Assignment Division in patent document handling?
The Assignment Division plays a crucial role in handling patent assignment documents. According to MPEP 318: “Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.” The Assignment Division’s responsibilities include: Receiving assignment documents for patents and patent applications Recording these…
Read MoreWhat happens to documents submitted for recording at the USPTO Assignment Division?
Documents and cover sheets submitted for recording at the USPTO Assignment Division are examined for formal requirements. The process is as follows: Documents that meet the requirements are recorded. Documents that do not meet the requirements are returned to the sender with an explanation. If the sender disagrees with the rejection, they can petition the…
Read MoreWhat are the types of patent ownership?
The MPEP outlines two main types of patent ownership: Individual ownership: ‘An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property.’ Joint ownership: ‘Multiple parties may together own the entire right, title and…
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