What is the significance of pre-AIA 35 U.S.C. 118 in relation to proprietary interest in patent applications?

Pre-AIA 35 U.S.C. 118 is significant in determining what constitutes a valid assignment or sufficient proprietary interest for filing a patent application. According to MPEP 409.03(f):

“An assignment to a pre-AIA 37 CFR 1.47(b) applicant for the sole purpose of obtaining a filing date for a pre-AIA 37 CFR 1.47(b) application is not considered an assignment within the meaning of pre-AIA 35 U.S.C. 118 and pre-AIA 37 CFR 1.47(b).”

This means that a mere pro forma assignment created solely to comply with filing requirements is not sufficient to establish proprietary interest under pre-AIA 35 U.S.C. 118. The assignment or proprietary interest must be substantive and reflect a genuine transfer of rights or interest in the invention.

When demonstrating proprietary interest, applicants must show that their claim to the invention would be recognized under applicable law, not just that they have fulfilled a procedural requirement.

To learn more:

• pre-AIA
• 35 U.S.C. 118
• proprietary interest
• patent application
• assignment

To learn more:

• 35 U.S.C. 118