What actions can a patent owner or assignee take in a patent application?
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.
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.