How 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 ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application.

This means that if there are multiple partial assignees or a combination of partial assignees and inventors, they must act together to prosecute the application. Additionally, when establishing ownership:

• Each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b).
• The extent of each assignee’s interest must be clearly stated.
• The Office must be able to determine if it has obtained action by all of the right, title, and interest holders.

If the extent of ownership is not clear, the USPTO may refuse to accept the submission as an establishment of ownership interest.

For more information on joint ownership, visit: joint ownership.

For more information on partial assignees, visit: partial assignees.

For more information on pre-AIA applications, visit: pre-AIA applications.