Can 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…

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What 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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How does the USPTO verify an assignee’s right to inspect a patent application?

The USPTO verifies an assignee’s right to inspect a patent application through documentation. As per MPEP 106.01, the assignee must provide either a copy of the assignment recorded in the USPTO or other evidence of ownership. This documentation is necessary to establish the assignee’s legal right to access the confidential information contained in the patent…

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What are the differences in assignee rights for applications filed before and after September 16, 2012?

The MPEP 106.01 highlights a key difference in assignee rights for patent applications filed before and after September 16, 2012: For applications filed before September 16, 2012: The assignee of record of the entire interest can intervene in the prosecution of an application or interference to the exclusion of the applicant. For applications filed on…

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Can an assignee of a part interest in a patent application prevent other parties from accessing the application?

No, an assignee of a part interest in a patent application cannot prevent other parties from accessing the application. According to MPEP 106, the assignee of a part interest may not control prosecution of the application to the exclusion of the inventor or other assignees. This means that all parties with an interest in the…

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How does the America Invents Act (AIA) affect assignee rights in patent applications?

The America Invents Act (AIA) significantly affected assignee rights in patent applications, particularly for those filed on or after September 16, 2012. MPEP 106.01 highlights one key change: ‘…for applications filed on or after September 16, 2012, [the assignee] can prosecute the application after becoming the applicant under 37 CFR 1.46.’ This change allows assignees…

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