How can an applicant demonstrate proprietary interest when filing under pre-AIA 37 CFR 1.47(b)?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When filing under pre-AIA 37 CFR 1.47(b), the applicant must prove proprietary interest in the invention. MPEP 409.03(f) outlines three ways to demonstrate this:

1. Show the invention has been assigned to the applicant
2. Prove the inventor agreed in writing to assign the invention to the applicant
3. Otherwise demonstrate sufficient proprietary interest

To prove assignment, submit:

• A copy of the assignment document
• A statement under pre-AIA 37 CFR 3.73(b) by the assignee

For an agreement to assign, provide a copy of the agreement. For other proprietary interest, submit a legal memorandum explaining how a court would likely award title to the applicant.

The MPEP states: If the application has been assigned, a copy of the assignment (in the English language) must be submitted. The assignment must clearly indicate that the invention described in the pre-AIA 37 CFR 1.47(b) application was assigned to the pre-AIA 37 CFR 1.47(b) applicant.