Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.
The "title report" is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made. For example, a title report is requested by the Reexamination Preprocessing Staff when a request for reexamination is filed. Title reports may not be ordered by applicants or attorneys.
Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report. See MPEP § 303. Examiners may obtain a title report using the PALM Intranet (select "General Information," insert the appropriate application number, select "Search," select "Assignments"). The screen resulting from the search may be printed to yield the copy of the title report.
NOTE: The public can request a certified abstract of title. The fee for this service is set forth at 37 CFR 1.19(b) (4). See MPEP § 301.01 for a discussion of which assignment records are publicly available.
An error in a recorded assignment document will be corrected by Assignment Division provided a "corrective document" is submitted. The "corrective document" must include the following:
· (A) A copy of the original assignment document with the corrections made therein. The corrections must be initialed and dated by the party conveying the interest; and
· (B) A new Recordation Form Cover Sheet (form PTO-1595) (See MPEP § 302.07).
The new recordation form cover sheet must identify the submission as a "corrective document" submission and indicate the reel and frame number where the incorrectly recorded assignment document appears. The original cover sheet should be submitted with the corrective document. The corrective document will be recorded and given a new reel and frame number and recording date. The recording fee set forth in 37 CFR 1.21(h) is required for each patent application and patent against which the corrective document is being recorded. See MPEP § 302.06.
Corrections may be made on the original assignment document, for example, by lining out an incorrect patent or application number in a merger or change of name (see MPEP § 314).
Office policy regarding recordation of assignment documents is directed toward maintaining a complete history of claimed interests in property and, therefore, recorded assignment documents will not be expunged even if subsequently found to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm’r Pat. 1992). Once a document is recorded with the Assignment Services Division, the Assignment Services Division will not remove the papers from the record relating to that application or patent. See MPEP § 323.01(d).
· (a) An error in a cover sheet recorded pursuant to § 3.11 will be corrected only if:
· (1) The error is apparent when the cover sheet is compared with the recorded document to which it pertains and
· (2) A corrected cover sheet is filed for recordation.
· (b) The corrected cover sheet must be accompanied by a copy of the document originally submitted for recording and by the recording fee as set forth in § 3.41.
Any alleged error in a recorded cover sheet will only be corrected if the error is apparent from a comparison with the recorded assignment document. The corrected cover sheet should be directed to Assignment Division.
During the recording process, the Assignment Services Division will check to see that a cover sheet is complete and record the data exactly as it appears on the cover sheet. The Assignment Services Division does not compare the cover sheet with the assignment document (or other document affecting title). Once the document is recorded, the Office will issue a notice of recordation.
The party recording the document should carefully review the notice of recordation.
Typographical errors made by the Office will be corrected promptly and without charge upon written request directed to the Assignment Services Division. For any other error, the party recording the document is responsible for filing the papers and paying the recordation fees necessary to correct the error, using the procedures set forth in MPEP §§ 323.01(a) through 323.01(c).
A party who wishes to correct a typographical error on a recorded cover sheet must submit the following to the Assignment Services Division:
· (A) a copy of the originally recorded assignment document (or other document affecting title);
· (B) a corrected cover sheet; and
· (C) the required fee for each application or patent to be corrected (37 CFR 3.41 ).
See 37 CFR 3.34. The party requesting correction should also submit a copy of the original cover sheet, to facilitate comparison of the corrected cover sheet with the originally recorded document.
The party filing the corrected cover sheet should check the box titled "Other" in the area of the sheet requesting "Nature of Conveyance," and indicate that the submission is to correct an error in a cover sheet previously recorded. The party should also identify the reel and frame numbers (if known), and the nature of the correction (e.g., "correction to the spelling of assignor’s name" or "correction of application number or patent number" ). The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature. If the error is typographical in nature, the Assignment Services Division will record the corrected cover sheet and correct the Assignment Historical Database.
If the original cover sheet contains a typographical error that does not affect title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will correct the Assignment Historical Database and permit the recording party to keep the original date of recordation.
If the original cover sheet contains a typographical error that affects title to the application or patent against which the assignment or name change is recorded, the recording party will not be entitled to keep the original date of recordation. Rather, the Assignment Services Division will correct its automated records and change the date of recordation to the date the corrected cover sheet was received in the Office.
If there is an error in the recorded assignment document (or other document affecting title) rather than in the cover sheet, the party responsible for an erroneous document (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it. If an assignor is not available to correct an original document or execute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction. The affidavit or declaration must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41 ). See In re Abacab International Computers Ltd., 21 USPQ2d 1078 (Comm’r Pat. 1987).
When the owner of an application or registration discovers that another party has improperly recorded an assignment or name change against the owner’s application or patent, the owner must correct the error by having a corrected cover sheet filed with the Assignment Services Division.
The owner should contact the party who recorded the papers with the erroneous information and request that such party record corrective papers. However, if the party cannot be located or is unwilling to file corrective papers, then the true owner must record the necessary papers with the Assignment Services Division to correct the error.
Specifically, the owner should submit the following to the Assignment Services Division:
· (A) a completed cover sheet identifying the application or patent against which the assignment was improperly recorded;
· (B) an affidavit or declaration (1) identifying itself as the correct owner, (2) stating that the previously recorded document was submitted with erroneous information, and (3) providing the reel and frame number of the previously recorded document; and
· (C) the required fee (37 CFR 3.41 ) for each application or patent to be corrected.
The affidavit or declaration should include a summary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the application, or patent at issue.
On the corrected cover sheet, the owner should check the box titled "Other" in the area of the cover sheet requesting the "Nature of Conveyance," and indicate that the submission is to correct an error made in a previously recorded document that erroneously affects the identified application(s), or patent(s). The party should also write the name of the correct owner in both the box requesting the name of the conveying party and the box requesting the name and address of the receiving party; this is to make it clear that ownership never changed and that any assignment or name change recorded against the application(s) or patent(s) was erroneous.
Petitions to correct, modify or "expunge" assignment records are rarely granted and will not result in the removal of a document from the assignment records. Such petitions are granted only if the petitioner can prove that:
· (A) the normal corrective procedures outlined in MPEP § 323.01(a) through § 323.01(c) will not provide the petitioner with adequate relief; and
· (B) the integrity of the assignment records will not be affected by granting the petition.
Assignment records are recognized as distinct from application file records. Even if a petition to "expunge" a document is granted with respect to a particular application or patent, the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number, and the image will appear when someone views that reel and frame number. The Office will, however, delete the links to the application or patent that was the subject of the petition, so that no information about the recorded document will appear when someone searches for that application or patent number in the Assignment Historical Database. A redacted version of the "expunged" document must be recorded and will appear in the assignment records instead of the "expunged" document upon the granting of the petition. An additional assignment of the "correct" document may be recorded in addition to the redacted version where the redacted version is incomplete or the original document was not correct.
[Editor Note: See MPEP § 325 for establishing the right of assignee to take action in an application filed on or after September 16, 2012.]
[Editor Note: Not applicable to applications filed under 35 U.S.C. 111(a), 363 or 385 on or after September 16, 2012. See 37 CFR 3.71 for the rule otherwise applicable.]
· (a) Patents — conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may, after becoming of record pursuant to paragraph (c) of this section, conduct prosecution of a national patent application or a reexamination proceeding to the exclusion of either the inventive entity, or the assignee(s) previously entitled to conduct prosecution.
· (b) Patents — assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:
· (1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or
· (2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined.
· (c) Patents — Becoming of record. An assignee becomes of record either in a national patent application or a reexamination proceeding by filing a statement in compliance with § 3.73(b) that is signed by a party who is authorized to act on behalf of the assignee.
· (d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
[Editor Note: Not applicable to applications filed under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012. See 37 CFR 3.73 for the rule otherwise applicable.]
· (a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
· (b)
· (1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
· (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
· (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
· (2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
· (i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
· (ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
· (c) For patent matters only:
· (1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
· (2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.
The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances. The owner or assignee can sign a reply to an Office action (pre-AIA 37 CFR 1.33(b)(3) and (4) ), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a terminal disclaimer (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102). The owner or assignee can file an application under pre-AIA 37 CFR 1.47(b) (MPEP § 409.03(b)), appoint its own registered patent practitioner to prosecute an application (pre-AIA 37 CFR 1.32 and MPEP § 402.07), and grant a power to inspect an application (MPEP § 104). The owner or assignee consents to the filing of a reissue application (MPEP § 1410.01), and to the correction of inventorship (MPEP § 602.01(c) or MPEP § 1481).
Effective September 16, 2012, an owner or assignee who is a juristic entity must be represented by a patent practitioner. See 37 CFR 1.31. Juristic entities may sign small entity assertions under 37 CFR 1.27 (MPEP § 509.03), disclaimers under 37 CFR 1.321 (MPEP § 1490), submissions under 37 CFR 3.73 to establish ownership, powers of attorney under 37 CFR 1.32 (MPEP § 402) and powers to inspect under 37 CFR 1.14 (MPEP § 104). However, any other paper submitted on behalf of a juristic entity on or after September 16, 2012, must be signed by a patent practitioner.
See subsection VI below for a discussion of when ownership must be established to take action in a patent matter, and subsection VII below for a discussion of when ownership need not be established to sign certain papers.
The provisions of pre-AIA 37 CFR 3.71(b)(1) and(2) identify the owner or assignee that can take action in patent matters, e.g., the assignee which may conduct the prosecution of a U.S. national application for a patent (35 U.S.C. 111(a) ), or any other patent proceeding (e.g., a reexamination proceeding, an interference proceeding). A national patent application is owned by one of the following individual or composite entities:
· (A) the inventor(s);
· (B) an assignee or multiple assignees of the inventor(s); or
· (C) some combination of the assignee(s), and inventor(s) who have not assigned away their right, title and interest in the application.
Pursuant to pre-AIA 37 CFR 3.73(b), a party must be established as the assignee by satisfying the requirements of that subsection, in order to be recognized as an owner or part owner, for purposes of taking action in patent matters before the Office.
As discussed in subsection II below, all parties having any portion of the ownership must join in "taking action" (i.e., act together as a composite entity) in order to be entitled to conduct the prosecution in patent matters.
If there is a single assignee of the entire right, title and interest in the patent application, pre-AIA 37 CFR 3.71(b)(1) provides that the single assignee (i.e., individual assignee) may act alone to conduct the prosecution of an application or other patent proceeding (upon complying with pre-AIA 37 CFR 3.73(b)).
If there is no assignee of the entire right, title and interest of the patent application, then two possibilities exist:
· (A) The application has not been assigned, and ownership resides solely in the inventor(s) (i.e., the applicant(s)). In this situation, pre-AIA 37 CFR 3.71 does not apply, since there is no assignee, and the combination of all inventors is needed to conduct the prosecution of an application.
· (B) The application has been assigned by at least one of the inventors, and there is thus at least one "partial assignee." As defined in pre-AIA 37 CFR 3.71(b)(2), a partial assignee is any assignee of record who has less than the entire right, title and interest in the application. The application is owned by the combination of all partial assignees and all inventors who have not assigned away their right, title and interest in the application.
Where at least one inventor retains an ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application, unless one or more inventors have refused to join in the filing of the application and a petition under pre-AIA 37 CFR 1.47 has been granted. If a petition under pre-AIA 37 CFR 1.47 has been granted, then the assignee need only be the assignee of the entire interest of the pre-AIA 37 CFR 1.47 applicant to sign a power of attorney. See pre-AIA 37 CFR 1.32(b)(4). Where an applicant retains an ownership interest, the combination of all partial assignees and the applicant with the ownership interest is needed to conduct the prosecution of an application.
Where a reissue application is filed to correct inventorship in the patent by the deletion of the name of inventor X and inventor X has not assigned his/her rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the filing of the reissue application, even though inventor X is being deleted and need not sign the reissue oath or declaration. If inventor X has assigned his/her rights to the patent, then inventor X’s assignee must consent to the filing of the reissue application.
Inventors A and B invent a process and file their application, signing the declaration for the patent application. Inventors A and B together may conduct prosecution of the application. Inventor A then assigns all his/her rights in the application to Corporation X. As soon as Corporation X (now a partial assignee as per pre-AIA 37 CFR 3.71(b)(2 )) is made of record in the application as a partial assignee (by filing a statement pursuant to pre-AIA 37 CFR 3.73(b) stating Corporation X is an assignee of an undivided interest in the entirety of the application), Corporation X and Inventor B together may conduct prosecution of the application. Corporation X and Inventor B then both assign their rights in the application to Corporation Y. As soon as Corporation Y (now an assignee of the entire right, title and interest) is made of record in the application as the assignee (by filing a statement pursuant to pre-AIA 37 CFR 3.73(b) stating it is assignee of the entire right, title and interest), Corporation Y is then the sole (one hundred percent) owner and thus may, by itself, conduct prosecution of the application.
When an assignee first seeks to take action in a matter before the Office with respect to a patent application filed before September 16, 2012, or a with respect to a patent or a reexamination proceeding relating to a patent that issued from an application that was filed before September 16, 2012, the assignee must establish its ownership of the property to the satisfaction of the Director. Pre-AIA 37 CFR 3.73(b). The assignee’s ownership may be established under pre-AIA 37 CFR 3.73(b) by submitting to the Office, in the Office file related to the matter in which action is sought to be taken:
· (A) documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment submitted for recording) and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is, submitted for recordation pursuant to 37 CFR 3.11; or
· (B) a statement specifying, by reel and frame number, where such evidence is recorded in the Office.
Documents submitted to establish ownership are required to be recorded, or submitted for recordation pursuant to 37 CFR 3.11, as a condition to permitting the assignee to take action in a matter pending before the Office. 35 U.S.C. 261 requires transfer of ownership by an assignment to be in writing. See Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 859 (E.D. Va. 2016).
The action taken by the assignee, and the pre-AIA 37 CFR 3.73(b) submission establishing that the assignee is the appropriate assignee to take such action, can be combined in one paper.
The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. Pre-AIA 37 CFR 3.73(c). If the submission establishing ownership is not present, the action sought to be taken will not be given effect. If the submission establishing ownership is submitted at a later date, that date will be the date of the request for action or the date of the assignee’s action taken.
The submission establishing ownership by the assignee must be signed by a party who is authorized to act on behalf of the assignee. See discussion below. Once pre-AIA 37 CFR 3.73(b) is complied with by an assignee, that assignee may continue to take action in that application, patent, or reexamination proceeding without filing a pre-AIA 37 CFR 3.73(b) submission each time, provided that ownership has not changed.
The submission establishing ownership by the assignee pursuant to pre-AIA 37 CFR 3.73(b) is generally referred to as the "statement under 37 CFR 3.73(b) " or the "37 CFR 3.73(b) statement." A duplicate copy of the pre-AIA 37 CFR 3.73(b) statement is not required and should not be submitted. See 37 CFR 1.4(b) and MPEP § 502.04.
When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must:
· (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or
· (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).
When a continuation-in-part application is filed before September 16, 2012 by an assignee, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed. When in a design application, a continued prosecution application (CPA) under 37 CFR 1.53 (d) is filed, the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.
Where a Request for Continued Examination of an application is filed under 37 CFR 1.114, the application is not considered to be abandoned; rather the finality of the Office action is withdrawn and the prosecution continues. Thus, the statement under pre-AIA 37 CFR 3.73(b) in the application will continue to serve as the statement establishing ownership.
The submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. The submission under pre-AIA 37 CFR 3.73(b) may be signed on behalf of the assignee in the following manner if the assignee is an organization (e.g., corporation, partnership, university, government agency, etc.):
· (A) The submission may be signed by a person in the organization having apparent authority to sign on behalf of the organization. Pre-AIA 37 CFR 3.73(b)(2)(ii). An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director. Modifications of these basic titles are acceptable, such as vice-president for sales, executive vice-president, assistant treasurer, vice-chairman of the board of directors. In foreign countries, a person who holds the title "Manager" or "Director" is normally an officer and is presumed to have the authority to sign on behalf of the organization. A person having a title (administrator, general counsel) that does not clearly set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee. The Office recommends that when a person with such a title is authorized to act on behalf of the assignee, the submission should clearly indicate that person's authority (see paragraph (B), below). A power of attorney (pre-AIA 37 CFR 1.32(b)(4) ) to a patent practitioner to prosecute a patent application executed by the applicant or the assignee of the entire interest does not make that practitioner an official of an assignee or empower the practitioner to sign the submission on behalf of the assignee.
· (B) The submission may be signed by any person, if the submission sets forth that the person signing is authorized (or empowered) to act on behalf of the assignee, i.e., to sign the submission on behalf of the assignee. Pre-AIA 37 CFR 3.73(b)(2)(i).
· (C) The submission may be signed by a person empowered by an organizational resolution (e.g., corporate resolution, partnership resolution) to sign the submission on behalf of the assignee, if a copy of the resolution is, or was previously, submitted in the record.
Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required.
Examples of situations where ownership must be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a request for status of an application or gives a power to inspect an application (MPEP §§ 102 and 104); appoints its own registered attorney or agent to prosecute an application (pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship in a patent (MPEP § 1481); or signs a Fee(s) Transmittal (PTOL-85B) (MPEP § 1306). Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner. See 37 CFR 1.31.
Examples of situations where ownership need not be established under pre-AIA 37 CFR 3.73(b) are when the assignee: signs a small entity statement (MPEP § 509.03); signs a statement of common ownership of two inventions (MPEP § 2146.02); signs a NASA or DOE property rights statement (MPEP § 151); signs an affidavit under 37 CFR 1.131(a) where the inventor is unavailable (MPEP § 715.04); signs a certificate under 37 CFR 1.8 (MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 (MPEP § 2210).
When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under pre-AIA 37 CFR 3.73(b). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners). Pre-AIA 37 CFR 3.73(c)(2). If the extent of the partial assignee’s ownership interest is not set forth in the submission under pre-AIA 37 CFR 3.73(b), the Office may refuse to accept the submission as an establishment of ownership interest.
Where there are two or more conflicting pre-AIA 37 CFR 3.73(b) statements in an application or other Office proceeding, the statement with the latest date of submission to the Office will normally control as to establishment of the assignee. If, however, the ownership established as controlling is contested on the record by another party who has submitted a conflicting pre-AIA 37 CFR 3.73(b) statement, then the application or other proceeding shall be forwarded by the Office official in charge of the application or other proceeding to the Office of Patent Legal Administration for resolving any procedural issues. Generally, where there are two or more conflicting pre-AIA 37 CFR 3.73(b) statements in an application, the ownership entity that filed that application will be permitted to conduct the prosecution, and the other party that submitted a pre-AIA 37 CFR 3.73(b) statement to establish its ownership may wish to consider filing its own application.
Form PTO/SB/96 may be used to establish ownership under pre-AIA 37 CFR 3.73(b).
[Editor Note: See MPEP § 324 for establishing the right of assignee to take action in an application filed before September 16, 2012.]
[Editor Note: Applicable to patent applications under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012. See pre-AIA 37 CFR 3.71 for the rule otherwise applicable.]
· (a) Patents—conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may conduct prosecution of a national patent application as the applicant under § 1.46 of this title, or conduct prosecution of a supplemental examination or reexamination proceeding, to the exclusion of the inventor or previous applicant or patent owner. Conflicts between purported assignees are handled in accordance with § 3.73(c)(3).
· (b) Patents—assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent as the applicant under § 1.46 of this title or a supplemental examination or reexamination proceeding are:
· (1) A single assignee. An assignee of the entire right, title and interest in the application or patent, or
· (2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent, who together own the entire right, title and interest in the application or patent. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent. The word "assignee" as used in this chapter means with respect to patent matters the single assignee of the entire right, title and interest in the application or patent if there is such a single assignee, or all of the partial assignees, or all of the partial assignee and inventors who have not assigned their interest in the application or patent, who together own the entire right, title and interest in the application or patent.
· (c) Patents—Becoming of record. An assignee becomes of record as the applicant in a national patent application under § 1.46 of this title, and in a supplemental examination or reexamination proceeding, by filing a statement in compliance with § 3.73(c) that is signed by a party who is authorized to act on behalf of the assignee.
· (d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a), 363 or 385 on or after September 16, 2012. See pre-AIA 37 CFR 3.73 for the rule otherwise applicable.]
· (a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
· (b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
· (1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
· (2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
· (c)
· (1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
· (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
· (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
· (2) If the submission is by an assignee of less than the entire right, title and interest (e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:
· (i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
· (ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties own the entire right, title and interest.
· (3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application.
· (d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
· (1) Including a statement that the person signing the submission is authorized to act on behalf of the assignee;
· (2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
· (3) For patent matters only, being signed by a practitioner of record.
The owner or assignee of a patent property can take action in a patent application as the applicant. However, an owner or assignee that is a juristic entity must be represented by a patent practitioner. See 37 CFR 1.31 and 1.33(b)(3).
An assignee who is not the original applicant must become the applicant under 37 CFR 1.46(a) in order to request or take action in a patent application. A request to change the applicant under 37 CFR 1.46(c)(2) must be filed and must be accompanied by an application data sheet under 37 CFR 1.76 spe
