Do substitute and continuation-in-part applications require new assignments?
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only…
Read MoreWhere should assignment documents be forwarded for recording?
MPEP 318 provides clear guidance on where assignment documents should be forwarded for recording. According to the manual: “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 means that when submitting assignment documents, they should be sent to the…
Read MoreCan patent professionals suggest content for reserved MPEP sections like 312?
While the USPTO is responsible for the content and updates of the MPEP, patent professionals can indirectly influence its content. The USPTO often seeks public input on proposed rule changes and updates to examination procedures. Professionals can participate in these public comment periods or engage with professional organizations that provide feedback to the USPTO. However,…
Read MoreWhat information must be included in an application filed by someone other than the inventor?
When an application is filed by someone other than the inventor under 35 U.S.C. 111, it must contain specific information as outlined in 37 CFR 1.46(b): An application data sheet under § 1.76 In the applicant information section (§ 1.76(b)(7)), specify: The assignee Person to whom the inventor is under an obligation to assign the…
Read MoreHow can an assignment be made of record with the USPTO?
The MPEP outlines two ways to make an assignment of record with the USPTO: Recording in the USPTO assignment records: ‘An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3. Recordation of the assignment provides legal notice to the public of the assignment.’…
Read MoreWhat is the process for recording a name change with the USPTO for patent matters?
While the MPEP section provided does not specifically address name changes, the process for recording a name change for patent matters with the USPTO is similar to recording other documents affecting title. Here are the general steps: Prepare a document evidencing the name change (e.g., a certificate of name change or merger document) Complete a…
Read MoreWhy are there restrictions on USPTO employees regarding patents?
The restrictions on USPTO employees regarding patents are in place to prevent conflicts of interest and maintain the integrity of the patent system. These rules, outlined in 35 U.S.C. 4 and MPEP 309, serve several purposes: Prevent employees from using insider knowledge for personal gain Ensure fair and unbiased examination of patent applications Maintain public…
Read MoreWhat is the purpose of a title report in patent reexamination?
Title reports play a specific role in patent reexamination procedures. The MPEP mentions: For example, a title report is requested by the Reexamination Preprocessing Staff when a request for reexamination is filed. This suggests that title reports are used to verify the current owner of a patent when a reexamination is initiated, ensuring that the…
Read MoreHow can the public access patent ownership information?
While the public cannot request title reports directly, they can obtain patent ownership information through other means. The MPEP notes: The public can request a certified abstract of title. The fee for this service is set forth at 37 CFR 1.19(b)(4). Additionally, some assignment records are publicly available. For more information on accessible records, refer…
Read MoreWhat is the purpose of including the government license rights statement in patent applications?
The purpose of including the government license rights statement in patent applications is to: Acknowledge the government’s support in the development of the invention Inform the public and potential licensees of the government’s rights in the invention Ensure compliance with federal regulations regarding inventions made with government support Facilitate the government’s ability to exercise its…
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