Who can file a patent application as the applicant under 37 CFR 1.46?
According to 37 CFR 1.46(a), the following parties can file a patent application as the applicant: 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 otherwise shows sufficient proprietary interest in the matter The regulation states: A…
Read MoreHow can an applicant demonstrate sufficient proprietary interest without an assignment or agreement to assign?
If an applicant in a pre-AIA 37 CFR 1.47(b) application doesn’t have an assignment or agreement to assign, they can demonstrate sufficient proprietary interest by: Submitting a legal memorandum Providing an affidavit or declaration of firsthand knowledge Including copies of relevant statutes or court decisions (if non-U.S.) MPEP 409.03(f) states: “A proprietary interest obtained other…
Read MoreHow does an applicant demonstrate a proprietary interest under pre-AIA 37 CFR 1.47(b)?
To file an application under pre-AIA 37 CFR 1.47(b), an applicant must demonstrate a proprietary interest in the subject matter of the application. The MPEP outlines three ways to establish this: Show that the invention has been assigned to the applicant Provide evidence that the inventor has agreed in writing to assign the invention to…
Read MoreWhat is the difference between an assignment and an agreement to assign in the context of MPEP 409.03(f)?
MPEP 409.03(f) distinguishes between an assignment and an agreement to assign in the context of proving proprietary interest for pre-AIA 37 CFR 1.47(b) applications. The key differences are: Assignment: A completed transfer of rights in the invention. Agreement to Assign: A promise to transfer rights in the future, often conditional. For an assignment, MPEP 409.03(f)…
Read MoreCan a patent be issued to an assignee if the assignment is not recorded?
Can a patent be issued to an assignee if the assignment is not recorded? Yes, a patent can be issued to an assignee even if the assignment is not recorded, provided certain conditions are met: The request for issuance of the patent to the assignee must be made under 37 CFR 3.81(b). The request must…
Read MoreWhat is the significance of ‘facts showing the right’ in proving proprietary interest?
What is the significance of ‘facts showing the right’ in proving proprietary interest? The phrase ‘facts showing the right’ is crucial in proving proprietary interest for patent applications. According to MPEP 409.03(f): ‘Facts showing the right or authority to make the petition must be proved in accordance with 37 CFR 1.46.’ This means that: Applicants…
Read MoreHow are patent applications handled when all inventors are unavailable or unwilling to sign?
When all inventors are unavailable or unwilling to sign a patent application, there are still options for filing. According to MPEP § 409.03(b) (for applications filed before September 16, 2012) and MPEP § 409.05 (for applications filed on or after September 16, 2012): An assignee or obligated assignee may file the application as the applicant…
Read MoreHow can a person with sufficient proprietary interest file a patent application?
A person who shows sufficient proprietary interest in an invention can file a patent application as the applicant. According to MPEP § 409.05, such a person must submit a petition including: The fee set forth in 37 CFR 1.17(g) A showing of sufficient proprietary interest in the matter A statement that making the application on…
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…
Read MoreWhat options are available if an inventor refuses to sign a patent application?
For applications filed on or after September 16, 2012: An assignee or obligated assignee may file the application as the applicant A person who shows sufficient proprietary interest may file the application on behalf of and as agent for the inventor The applicant may file a substitute statement in lieu of an inventor’s oath or…
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