Can an assignee control access to a patent application?
Yes, an assignee of record of the entire interest in a patent application can control access to it. According to MPEP 106, “The applicant or assignee of record of the entire interest in an application may file an application or intervene in the prosecution of the application, appointing an attorney or agent of his or…
Read MoreCan a patent be issued to an assignee if the assignment is not recorded?
Can a patent be issued to an assignee if the assignment is not recorded? Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met: The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b). The request must…
Read MoreWhat is the process for establishing ownership in a patent application filed before September 16, 2012?
To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either: Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence…
Read MoreWho can sign a submission establishing ownership for a pre-AIA patent application?
For pre-AIA patent applications (filed before September 16, 2012), the submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. According to MPEP 324, this can be done in several ways: A person with apparent authority in the organization, such as an officer (e.g., CEO, president, vice-president, secretary,…
Read MoreWhat actions can an assignee take in a pre-AIA patent application?
An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include: Signing a reply to an Office action Requesting a continued prosecution application (CPA) Signing a terminal disclaimer Submitting a Fee(s) Transmittal form Requesting status of an application…
Read MoreHow does an assignee establish the right to take action in a patent application filed before September 16, 2012?
To establish the right to take action in a patent application filed before September 16, 2012, an assignee must meet the following requirements: The assignee must be of the entire right, title, and interest in the application. A proper documentary evidence of chain of title from the original owner to the assignee must be submitted.…
Read MoreWhat is considered proper documentary evidence for establishing assignee rights in pre-AIA patent applications?
For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes: An assignment document recorded in the USPTO A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee According to MPEP 324: The submission establishing ownership must show that the…
Read MoreCan an assignee take action in a patent application if the assignment is not yet recorded in the USPTO?
Generally, an assignee cannot take action in a patent application if the assignment is not yet recorded in the USPTO. However, there is a specific provision for situations where the assignment has been executed but not yet recorded. According to MPEP 324: If an assignment has not been recorded in the Office, the assignee may…
Read MoreHow can an assignee establish the right to take action in a pre-AIA application?
How can an assignee establish the right to take action in a pre-AIA application? For pre-AIA applications (filed before September 16, 2012), an assignee can establish the right to take action by: Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or Specifying in the papers requesting or…
Read MoreWhat is the purpose of Form PTO/AIA/96?
What is the purpose of Form PTO/AIA/96? Form PTO/AIA/96 is used to establish the right of an assignee to take action in a patent application filed on or after September 16, 2012. According to the MPEP 325: “Form PTO/AIA/96 may be used to establish the right of an assignee to take action in an application…
Read More