How is an arbitration award enforced in patent cases?
Enforcement of arbitration awards in patent cases requires specific steps as outlined in 35 U.S.C. 294(d) and 37 CFR 1.335. Key points include: The patentee, assignee, or licensee must file a written notice of the award with the USPTO Director. The notice must include details about the patent, parties involved, and a copy of the…
Read MoreHow does the USPTO process notices of arbitration awards?
The USPTO has a specific process for handling notices of arbitration awards related to patents. According to the Manual of Patent Examining Procedure (MPEP) Section 311: “The written notices required by this section should be directed to the attention of the Office of the Solicitor. The Office of the Solicitor will be responsible for processing…
Read MoreHow are returned assignment documents handled by the USPTO?
The USPTO handles returned assignment documents as follows: Documents are stamped with the original receipt date. A letter accompanies returned documents explaining the correction needed. If corrected and resubmitted within the specified time, the original receipt date is considered the recording date. Resubmissions can use the certification procedure under 37 CFR 1.8 or the ‘Priority…
Read MoreWhat is the effect of recording a document at the USPTO?
Recording a document at the USPTO has the following effects: It does not determine the validity of the document or its effect on title. The Office may determine a document’s effect when necessary for Office proceedings. Conditional assignments are treated as absolute assignments until canceled. Recording provides protection against subsequent purchasers without notice. 37 CFR…
Read MoreWhat happens to conditional assignments at the USPTO?
What happens to conditional assignments at the USPTO? Conditional assignments are treated differently by the USPTO’s Assignment Division. The MPEP 317 states: “Conditional assignments are returned to the sender by the Assignment Division.” This means that if an assignment includes conditions that must be met before it becomes effective, the USPTO will not record it.…
Read MoreHow are patent assignment documents filed and stored at the USPTO?
How are patent assignment documents filed and stored at the USPTO? The USPTO has a specific process for filing and storing patent assignment documents. According to MPEP 317: “All recorded assignments are scanned and stored in an electronic database.” This means that once an assignment is recorded, it is digitized for easy access and long-term…
Read MoreHow does the USPTO handle discrepancies in title reports?
When discrepancies are found in title reports, the USPTO takes specific actions to address them. The MPEP 320 states: If there are discrepancies between the title report and the instrument(s) recorded in the USPTO or the file contents, the title report is returned to the paralegal with an explanation of the discrepancy. The paralegal then…
Read MoreWhat is the process for establishing ownership in a patent application filed before September 16, 2012?
To establish ownership in a patent application filed before September 16, 2012, an assignee must submit evidence to the USPTO as per pre-AIA 37 CFR 3.73(b). This can be done by either: Submitting documentary evidence of a chain of title from the original owner to the assignee, along with a statement affirming that this evidence…
Read MoreWhat is the difference between pre-AIA and AIA patent ownership rules?
The America Invents Act (AIA) brought significant changes to patent law, including rules regarding patent ownership. The key differences between pre-AIA (before September 16, 2012) and AIA (on or after September 16, 2012) patent ownership rules are: Applicability: Pre-AIA rules apply to applications filed before September 16, 2012, while AIA rules apply to applications filed…
Read MoreHow can an assignee establish the right to take action in a pre-AIA application?
How can an assignee establish the right to take action in a pre-AIA application? For pre-AIA applications (filed before September 16, 2012), an assignee can establish the right to take action by: Filing papers in the USPTO demonstrating the chain of title from the inventor to the assignee, or Specifying in the papers requesting or…
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