How does the September 16, 2012 date affect assignment for applications claiming benefit of a provisional application?
The September 16, 2012 date is significant for assignment procedures in applications claiming the benefit of a provisional application. For applications filed on or after this date, the assignment rules are more flexible:
- If the application includes new subject matter not in the provisional application, new assignment papers are not required if the assignee is the original applicant in the later application.
- For applications filed before this date, new assignment papers are always required if there’s new subject matter, regardless of who the assignee is.
This change aligns with the implementation of the America Invents Act. As stated in MPEP § 306.01: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.
To learn more: