How 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 than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the pre-AIA 37 CFR 1.47(b) applicant.”

The legal memorandum should be prepared by an attorney familiar with the relevant jurisdiction’s laws. Supporting facts should be provided through affidavits or declarations from individuals with firsthand knowledge. For non-U.S. jurisdictions, copies of relevant statutes or court decisions (in English) should be included.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• proprietary interest
• patent application
• legal memorandum

To learn more:

• 37 CFR 1.47(b)