When can an assignee sign the reissue oath or declaration?
An assignee of the entire interest can sign the reissue oath or declaration in two specific scenarios: When the reissue application does not seek to enlarge the scope of the claims of the original patent. When the application for the original patent was filed under 37 CFR 1.46 by the assignee of the entire interest.…
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 should applicants notify the USPTO of changes in the real party in interest?
Applicants other than the inventor must notify the USPTO of any change in the real party in interest as follows: Notification should be made no later than payment of the issue fee Changes can be indicated in Box 3 of the PTOL-85B form If no notification is provided, the USPTO will presume no change has…
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 MoreWhen should documentary evidence of ownership be recorded for assignee applicants?
For assignee applicants or persons to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership should be recorded as follows: As provided for in part 3 of Chapter 37 CFR No later than the date the issue fee is paid in the application According to 37 CFR 1.46(b)(1): If…
Read MoreWhat must an applicant with sufficient proprietary interest submit with their patent application?
An applicant who shows sufficient proprietary interest in the matter must submit a petition with their patent application, including: The fee set forth in § 1.17(g) A showing that the person has sufficient proprietary interest in the matter A statement that making the application for patent by this person on behalf of and as agent…
Read MoreWhat is the significance of 37 CFR 1.46 in patent application prosecution?
37 CFR 1.46 is significant in patent application prosecution, particularly for applications filed on or after September 16, 2012. According to MPEP 106.01, this regulation allows the assignee of record of the entire interest to become the applicant and prosecute the application. The MPEP states: ‘…for applications filed on or after September 16, 2012, [the…
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