Who can sign a submission establishing ownership for a pre-AIA patent application?
For pre-AIA patent applications (filed before September 16, 2012), the submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. According to MPEP 324, this can be done in several ways: A person with apparent authority in the organization, such as an officer (e.g., CEO, president, vice-president, secretary,…
Read MoreWhat actions can an assignee take in a pre-AIA patent application?
An assignee of a pre-AIA patent application (filed before September 16, 2012) can take various actions once they have established ownership. According to MPEP 324, these actions include: Signing a reply to an Office action Requesting a continued prosecution application (CPA) Signing a terminal disclaimer Submitting a Fee(s) Transmittal form Requesting status of an application…
Read MoreHow does ownership work for partial assignees in pre-AIA patent applications?
For pre-AIA patent applications (filed before September 16, 2012), partial assignees have specific rights and requirements when it comes to patent ownership and prosecution. According to MPEP 324: A partial assignee is any assignee of record having less than the entire right, title and interest in the application. Where at least one inventor retains an…
Read MoreWhat is considered proper documentary evidence for establishing assignee rights in pre-AIA patent applications?
For patent applications filed before September 16, 2012 (pre-AIA), proper documentary evidence for establishing assignee rights typically includes: An assignment document recorded in the USPTO A statement under 37 CFR 3.73(b) signed by a party authorized to act on behalf of the assignee According to MPEP 324: The submission establishing ownership must show that the…
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 MoreWhen must ownership be established for an assignee to take action in a patent matter?
Ownership must be established under pre-AIA 37 CFR 3.73(b) when the assignee: Signs a request for status of an application Gives a power to inspect an application Appoints its own registered attorney or agent to prosecute an application Signs a disclaimer under 37 CFR 1.321 Consents to the filing of a reissue application Consents to…
Read MoreHow does the AIA impact power of attorney for applications filed before September 16, 2012?
How does the AIA impact power of attorney for applications filed before September 16, 2012? The America Invents Act (AIA) does not significantly change the power of attorney requirements for applications filed before September 16, 2012. As stated in MPEP 402.02(b): For applications filed before September 16, 2012, all parties having the right to prosecute…
Read MoreCan a non-inventor appoint a power of attorney in a pre-September 16, 2012 application?
Can a non-inventor appoint a power of attorney in a pre-September 16, 2012 application? Yes, under certain circumstances, a non-inventor can appoint a power of attorney in applications filed before September 16, 2012. The MPEP 402.02(b) states: If no power of attorney is on file, then a party who is not an inventor, but who…
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