What rights does patent ownership provide?
Patent ownership gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. This is stated in 35 U.S.C. 154(a)(1). However, ownership does not necessarily give the owner the right to make, use, sell or import the invention,…
Read MoreWhat is joint ownership of a patent?
Joint ownership of a patent occurs when multiple parties together own the entire right, title, and interest of the patent property. This can happen in several scenarios: Multiple partial assignees of the patent property Multiple inventors who have not assigned their rights A combination of partial assignee(s) and inventor(s) who have not assigned their rights…
Read MoreHow do USPTO examiners obtain title reports?
USPTO examiners have a specific internal process for obtaining title reports when needed. The MPEP outlines this process: Examiners may obtain a title report using the PALM Intranet (select “General Information,” insert the appropriate application number, select “Search,” select “Assignments”). The screen resulting from the search may be printed to yield the copy of the…
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 MoreAre there exceptions to the patent ownership restrictions for USPTO employees?
Yes, there are two exceptions to the patent ownership restrictions for USPTO employees: Inheritance Bequest 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… acquiring, directly or indirectly, except by inheritance or bequest, any patent…
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…
Read MoreHow is ownership established when there are multiple assignees for a patent application?
When there are multiple assignees for a patent application, patent, or reexamination proceeding, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b) to take action before the USPTO. The process is as follows: Each partial assignee must submit their own pre-AIA 37 CFR 3.73(b) statement. In each submission, the extent of the…
Read MoreHow is ownership established in continuing patent applications filed before September 16, 2012?
For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways: The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application. A newly executed statement under pre-AIA 37 CFR 3.73(b) can be…
Read MoreWhat is a ‘chain of title’ in patent ownership?
A ‘chain of title’ in patent ownership refers to the documented history of a patent’s ownership from its original assignment to its current owner. MPEP 314 mentions this concept in relation to name changes and mergers: Although a mere change of name does not constitute a change in legal entity, it is properly a link…
Read MoreDoes a change of business name constitute a change in legal entity for patent purposes?
No, a mere change of business name does not constitute a change in legal entity for patent purposes. However, it is still an important part of the ownership record. As stated in MPEP 314: Although a mere change of name does not constitute a change in legal entity, it is properly a link in the…
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