How can I make a patent assignment of record with the USPTO?
There are two ways to make a patent assignment of record with the USPTO: Record the assignment in the USPTO’s assignment records as provided in 37 CFR Part 3. This provides legal notice to the public but does not determine the validity or effect of the assignment. Make the assignment of record in the file…
Read MoreHow can I submit a patent assignment document to the USPTO?
There are three main ways to submit a patent assignment document to the USPTO: Mail: Documents can be mailed to the address specified in 37 CFR 3.27: Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. Fax: Documents can be submitted via facsimile, as…
Read MoreHow should a foreign assignee designate a domestic representative for patent matters?
According to 35 U.S.C. 293 and 37 CFR 3.61, a foreign assignee of a patent or patent application who is not domiciled in the United States may designate a domestic representative. Here’s how to do it: Prepare a written document signed by the assignee. State the name and address of a person residing within the…
Read MoreHow does assignment work for division and continuation applications?
For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications. However, it’s important to note that while the assignment is effective for the…
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 MoreWhat happens if the assignment is not recorded before the issue fee payment?
If the assignment has not been recorded before the issue fee payment, the following applies: The request for issuance to the assignee must state that the assignment document has been filed for recordation. This statement should be made in accordance with 37 CFR 3.11. As stated in 37 CFR 3.81(a): If the assignment has not…
Read MoreHow do I fill out the cover sheet when correcting an erroneous assignment or name change?
When submitting a corrected cover sheet to address an erroneous assignment or name change, follow these instructions from MPEP 323.01(c): Check the box titled ‘Other’ in the ‘Nature of Conveyance’ section. Indicate that the submission is to correct an error in a previously recorded document that erroneously affects the identified application(s) or patent(s). Write the…
Read MoreWhat happens if a faxed assignment document is not recordable by the USPTO?
If the USPTO determines that a faxed assignment document is not recordable, there’s a specific process outlined in MPEP 302.09: The entire document, including the cover sheet, is returned to the sender via fax. A ‘Notice of Non-Recordation’ is included with the returned document. The sender can make corrections and resubmit the document. Resubmission must…
Read MoreHow does a foreign assignee designate a domestic representative?
To designate a domestic representative, a foreign assignee must follow these steps: Prepare a written document signed by the assignee Clearly label the document as ‘Designation of Domestic Representative’ Submit the designation as a separate paper from any assignment document Ensure the document is signed in accordance with 37 CFR 1.33(b) As stated in MPEP…
Read MoreWhat happens if I accidentally submit an original assignment document to the USPTO?
What happens if I accidentally submit an original assignment document to the USPTO? If you accidentally submit an original assignment document to the USPTO, you will not be able to retrieve it. The MPEP 302.01 clearly states: ‘The USPTO will not return documents filed for recording.’ To avoid this situation: Always submit copies of assignment…
Read More