Who can take action as an assignee in a patent application filed on or after September 16, 2012?

According to 37 CFR 3.71(b), the assignees who may conduct prosecution of a patent application as the applicant are:

  1. A single assignee who is the assignee of the entire right, title and interest in the application or patent, or
  2. All partial assignees, or all partial assignees and inventors who have not assigned their rights, who together own the entire right, title and interest in the application or patent.

The MPEP states: “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).”

Topics: MPEP 300 - Ownership and Assignment, Patent Law, Patent Procedure
Tags: international patent applications, joint patent ownership, non-applicant assignee, patent prosecution