What are the fees for recording a patent assignment?
The fees for recording a patent assignment depend on the submission method: Electronic submission via EPAS (Electronic Patent Assignment System): $0 Paper or facsimile submission: See current fee schedule As stated in MPEP 302.06: “If the request to record a document is submitted electronically, the fee is set forth in 37 CFR 1.21(h)(1), currently at…
Read MoreWhat is the difference in assignment between division/continuation and substitute/CIP applications?
The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied: Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application…
Read MoreCan a request for issuance to an assignee be submitted after the issue fee is paid?
Yes, a request for issuance to an assignee can be submitted after the issue fee is paid, but additional requirements apply: The request must state that the assignment was submitted for recordation before patent issuance. It must include a request for a certificate of correction under 37 CFR 1.323. The appropriate fees must be paid,…
Read MoreWhat is patent ownership according to 35 U.S.C. 261?
According to 35 U.S.C. 261, patents have the attributes of personal property and are assignable by an instrument in writing. Specifically, the statute states: ‘Subject to the provisions of this title, patents shall have the attributes of personal property. […] Applications for patent, patents, or any interest therein, shall be assignable in law by an…
Read MoreWhat is the process for issuing a patent to a non-applicant assignee?
The process for issuing a patent to a non-applicant assignee involves the following steps: A request for issuance to the assignee must be submitted with the payment of the issue fee. The assignment must have been previously recorded in the USPTO or filed for recordation. If the request is submitted after the issue fee payment,…
Read MoreWhat is the difference between patent assignment and licensing?
Patent assignment and licensing are two different ways of transferring patent rights. The MPEP defines assignment as: ‘Assignment of patent rights is defined as ‘a transfer by a party of all or part of its right, title and interest in a patent [or] patent application….” In contrast, licensing is described as: ‘As compared to assignment…
Read MoreWhat is the difference between an assignment and a license in patent law?
The MPEP distinguishes between assignments and licenses in patent law: Assignment: ‘An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application.’ License: ‘As compared to assignment of patent rights, the licensing of a…
Read MoreWhat is the recording date for a document at the USPTO Assignment Division?
The recording date for a document at the USPTO Assignment Division is determined as follows: It is the date when a document meeting all requirements is filed with the Office. Documents not complying with identification requirements (37 CFR 3.21) will not be recorded. Documents with other deficiencies (e.g., missing cover sheet or fee) will be…
Read MoreWhat happens to documents submitted for recording at the USPTO Assignment Division?
Documents and cover sheets submitted for recording at the USPTO Assignment Division are examined for formal requirements. The process is as follows: Documents that meet the requirements are recorded. Documents that do not meet the requirements are returned to the sender with an explanation. If the sender disagrees with the rejection, they can petition the…
Read MoreDo substitute and continuation-in-part applications require new assignments?
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only…
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