What actions can a patent owner or assignee take in a patent application?
According to MPEP 325, a patent owner or assignee who has become the applicant can take various actions in a patent application. These include:
- Signing a reply to an Office action (37 CFR 1.33(b)(3))
- Requesting a continued prosecution application (CPA) under 37 CFR 1.53(d)
- Filing a disclaimer under 37 CFR 1.321
- Submitting a Fee(s) Transmittal (PTOL-85B)
- Requesting the status of an application
- Filing an application under 37 CFR 1.46
- Appointing a registered patent practitioner to prosecute the application
- Granting a power to inspect the application
- Consenting to the filing of a reissue application
- Consenting to the correction of inventorship
The MPEP notes: “As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102).”
It’s important to note that for juristic entities (e.g., corporations), many actions must be signed by a patent practitioner after September 16, 2012.
For more information on continued prosecution application, visit: continued prosecution application.