What are the contractor’s obligations regarding government license rights in patent applications?
According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations: Include the government license rights statement at the beginning of the patent application and any issued patents. Specify the contract under which the invention was made. Identify the Federal agency that awarded the contract. Acknowledge that the government…
Read MoreAre attorney’s liens against patents or patent applications recordable at the USPTO?
No, attorney’s liens against patents or patent applications are not accepted for recording at the USPTO. This is explicitly stated in the MPEP: “Documents that are not accepted for recording include attorney’s liens against patents or patent applications. See In re Refusal of Assignment Branch to Record Attorney’s Lien, 8 USPQ2d 1446 (Comm’r Pat. 1988).”…
Read MoreWho can take action as an assignee in a patent application filed on or after September 16, 2012?
According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are: A single assignee who is the assignee of the entire right, title and interest in the application or patent, or All partial assignees, or all partial assignees and inventors who have not assigned their rights, who…
Read MoreHow can an applicant obtain information about assignment documents for a patent application?
According to MPEP 303, applicants who want information about assignment documents must take specific steps: Request separately certified copies of assignment documents Submit the fees required by 37 CFR 1.19 The MPEP states: “Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required…
Read MoreHow does MPEP 310 relate to the Bayh-Dole Act?
MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected: The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding. It requires contractors to disclose these inventions and include a statement in patent applications about government support.…
Read MoreCan USPTO employees apply for patents while employed?
No, USPTO employees cannot apply for patents while employed. According to 35 U.S.C. 4: ‘Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent…’ This restriction extends for one year after their employment at the USPTO ends.
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 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…
Read MoreWhat are the priority date rules for patents filed by former USPTO employees?
Former USPTO employees face restrictions on priority dates for patents they file after leaving the office. According to 35 U.S.C. 4: ‘In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.’ This means that for any patent application filed by a…
Read MoreWho can file a patent application under 35 U.S.C. 118?
According to 35 U.S.C. 118, the following parties can file a patent application: A person to whom the inventor has assigned the invention A person to whom the inventor is under an obligation to assign the invention A person who shows sufficient proprietary interest in the matter, acting as an agent for the inventor The…
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