What 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 MoreCan an applicant or assignee prevent the inventor from accessing the patent application file?
Yes, the applicant or assignee of record of the entire interest in an application can make a specific request to prevent the inventor from obtaining access to the application file. This request should be filed as a separate paper under 37 CFR 1.4(c) and directed to the Office of Petitions. If granted, the inventor will…
Read MoreCan the foreign priority application be filed by an assignee, legal representative or agent of the inventor?
Yes, the foreign application may have been filed by and in the name of the assignee or legal representative or agent of the inventor, as applicant. If the certified copy of the foreign application corresponds with the one identified in the U.S. application and no discrepancies appear, it may be assumed the U.S. application is…
Read MoreHow does an assignee establish ownership to take action in a patent application?
To establish ownership and take action in a patent application filed on or after September 16, 2012, an assignee who is not the original applicant must: File a request to change the applicant under 37 CFR 1.46(c)(2) File an application data sheet under 37 CFR 1.76 specifying the assignee as the applicant Submit a statement…
Read MoreWhat is required to establish ownership for an assignee to take action in a patent application filed before September 16, 2012?
To establish ownership for an assignee to take action in a patent application filed before September 16, 2012, the following is required: The assignee must submit documentary evidence of a chain of title from the original owner to the assignee, or a statement specifying where such evidence is recorded in the USPTO assignment records. A…
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