MPEP - Chapter 0300 - Ownership and Assignment

Chapter 300 Ownership and Assignment

Ownership/Assignability of Patents andApplications

301

Accessibility of Assignment Records301.01 Recording of Assignment Documents302

Assignment Document Must Be Copyfor Recording

302.01

Translation of Assignment Document302.02 Identifying Patent or Application302.03 Foreign Assignee May DesignateDomestic Representative

302.04

Address of Assignee302.05 Fee for Recording302.06 Assignment Document Must BeAccompanied by a Cover Sheet

302.07

Mailing Address for SubmittingAssignment Documents

302.08

Facsimile Submission of AssignmentDocuments

302.09

Electronic Submission of AssignmentDocuments

302.10

Assignment Documents Not Endorsedon Pending Applications

303

[Reserved]304-305 Assignment of Division, Continuation,Substitute, and Continuation-in-Partin Relation to Parent Application

306

Assignment of an ApplicationClaiming the Benefits of a ProvisionalApplication

306.01

Issue to Non-Applicant Assignee307 Issue to Applicant308 Restrictions Upon Employees of U.S.Patent and Trademark Office

309

Government License Rights toContractor-Owned Inventions Made

310

Under Federally Sponsored Researchand DevelopmentFiling of Notice of Arbitration Awards311 [Reserved]312 Recording of Licenses, SecurityInterests, and Documents Other ThanAssignments

313

Certificates of Change of Name or ofMerger

314

Indexing Against a RecordedCertificate

315

[Reserved]316 Handling of Documents in theAssignment Division

317

Recording Date317.01

Correction of Unrecorded ReturnedDocuments and Cover Sheets

317.02

Effect of Recording317.03 Documents Not to be Placed in Files318 [Reserved]319 Title Reports320 [Reserved]321-322 Procedures for Correcting Errors inRecorded Assignment Document

323

Correction of Error in RecordedCover Sheet

323.01

Typographical Errors in CoverSheet

323.01(a)

Typographical Errors in RecordedAssignment Document

323.01(b)

Assignment or Change of NameImproperly Filed and Recorded

323.01(c)

by Another Person AgainstOwner’s Application or PatentExpungement of AssignmentRecords

323.01(d)

Establishing Right of Assignee To TakeAction in Application Filed BeforeSeptember 16, 2012

324

Establishing Right of Assignee To TakeAction in Application Filed On or AfterSeptember 16, 2012

325

301 Ownership/Assignability of Patents andApplications [R-07.2015]

35 U.S.C. 261 Ownership; assignment.

Subject to the provisions of this title, patents shall have theattributes of personal property. The Patent and Trademark Officeshall maintain a register of interests in patents and applicationsfor patents and shall record any document related thereto uponrequest, and may require a fee therefor.

Applications for patent, patents, or any interest therein, shall beassignable in law by an instrument in writing. The applicant,patentee, or his assigns or legal representatives may in likemanner grant and convey an exclusive right under his applicationfor patent, or patents, to the whole or any specified part of theUnited States.

A certificate of acknowledgment under the hand and officialseal of a person authorized to administer oaths within the UnitedStates, or, in a foreign country, of a diplomatic or consularofficer of the United States or an officer authorized to administeroaths whose authority is proved by a certificate of a diplomaticor consular officer of the United States, or apostille of an officialdesignated by a foreign country which, by treaty or convention,accords like effect to apostilles of designated officials in theUnited States, shall be prima facie evidence of the execution of

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an assignment, grant, or conveyance of a patent or applicationfor patent.

An interest that constitutes an assignment, grant, or conveyanceshall be void as against any subsequent purchaser or mortgageefor valuable consideration, without notice, unless it is recordedin the Patent and Trademark Office within three months fromits date or prior to the date of such subsequent purchase ormortgage.

35 U.S.C. 262 Joint owners.

In the absence of any agreement to the contrary, each of thejoint owners of a patent may make, use, offer to sell, or sell thepatented invention within the United States, or import thepatented invention into the United States, without the consentof and without accounting to the other owners.

37 CFR 3.1 Definitions.

For purposes of this part, the following definitions shall apply:

Application means a national application for patent, aninternational patent application that designates the United Statesof America, an international design application that designatesthe United States of America, or an application to register atrademark under section 1 or 44 of the Trademark Act, 15 U.S.C.1051 or 15 U.S.C. 1126, unless otherwise indicated.

Assignment means a transfer by a party of all or part of its right,title and interest in a patent, patent application, registered markor a mark for which an application to register has been filed.

Document means a document which a party requests to berecorded in the Office pursuant to § 3.11 and which affects someinterest in an application, patent, or registration.

Office means the United States Patent and Trademark Office.

Recorded document means a document which has been recordedin the Office pursuant to § 3.11.

Registration means a trademark registration issued by theOffice.

I. OWNERSHIP

Ownership of a patent gives the patent owner theright to exclude others from making, using, offeringfor sale, selling, or importing into the United Statesthe invention claimed in the patent. 35 U.S.C.154(a)(1). Ownership of the patent does not furnishthe owner with the right to make, use, offer for sale,sell, or import the claimed invention because theremay be other legal considerations precluding same

(e.g., existence of another patent owner with adominant patent, failure to obtain FDA approval ofthe patented invention, an injunction by a courtagainst making the product of the invention, or anational security related issue).

For applications filed on or after September 16,2012, the original applicant is presumed to be theinitial owner of an application for an original patent.See 37 CFR 3.73(a). For applications filed beforeSeptember 16, 2012, the ownership of the patent (orthe application for the patent) initially vests in thenamed inventors of the invention of the patent. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237,1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993). Apatent or patent application is assignable by aninstrument in writing, and the assignment of thepatent, or patent application, transfers to theassignee(s) an alienable (transferable) ownershipinterest in the patent or application. 35 U.S.C. 261.

II. ASSIGNMENT

“Assignment,” in general, is the act of transferringto another the ownership of one’s property, i.e., theinterest and rights to the property. In 37 CFR 3.1,assignment of patent rights is defined as “a transferby a party of all or part of its right, title and interestin a patent [or] patent application....” An assignmentof a patent, or patent application, is the transfer toanother of a party’s entire ownership interest or apercentage of that party’s ownership interest in thepatent or application. In order for an assignment totake place, the transfer to another must include theentirety of the bundle of rights that is associated withthe ownership interest, i.e., all of the bundle of rightsthat are inherent in the right, title and interest in thepatent or patent application.

III. LICENSING

As compared to assignment of patent rights, thelicensing of a patent transfers a bundle of rightswhich is less than the entire ownership interest, e.g.,rights that may be limited as to time, geographicalarea, or field of use. A patent license is, in effect, acontractual agreement that the patent owner will notsue the licensee for patent infringement if thelicensee makes, uses, offers for sale, sells, or importsthe claimed invention, as long as the licensee fulfills

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MANUAL OF PATENT EXAMINING PROCEDURE§ 301

its obligations and operates within the boundsdelineated by the license agreement.

An exclusive license may be granted by the patentowner to a licensee. The exclusive license preventsthe patent owner (or any other party to whom thepatent owner might wish to sell a license) fromcompeting with the exclusive licensee, as to thegeographic region, the length of time, and/or thefield of use, set forth in the license agreement.

A license is not an assignment of the patent. Evenif the license is an exclusive license, it is not anassignment of patent rights in the patent orapplication.

IV. INDIVIDUAL AND JOINT OWNERSHIP

Individual ownership - An individual entity mayown the entire right, title and interest of the patentproperty. This occurs where there is only oneinventor, and the inventor has not assigned the patentproperty. Alternatively, it occurs where all partieshaving ownership interest (all inventors andassignees) assign the patent property to one party.

Joint ownership - Multiple parties may together ownthe entire right, title and interest of the patentproperty. This occurs when any of the followingcases exist:

(A) Multiple partial assignees of the patentproperty;

(B) Multiple inventors who have not assignedtheir right, title and interest; or

(C) A combination of partial assignee(s), andinventor(s) who have not assigned their right, titleand interest.

Each individual inventor may only assign the interesthe or she holds; thus, assignment by one jointinventor renders the assignee a partial assignee. Apartial assignee likewise may only assign the interestit holds; thus, assignment by a partial assigneerenders a subsequent assignee a partial assignee. Allparties having any portion of the ownership in thepatent property must act together as a compositeentity in patent matters before the Office.

V. MAKING THE ASSIGNMENT OF RECORD

An assignment can be made of record in the UnitedStates Patent and Trademark Office (Office) in twodifferent ways, for two different purposes. Thedifferences are important to note:

(A) An assignment can be made of record in theassignment records of the Office as provided for in37 CFR Part 3. Recordation of the assignmentprovides legal notice to the public of the assignment.It should be noted that recording of the assignmentis merely a ministerial act; it is not an Officedetermination of the validity of the assignmentdocument or the effect of the assignment documenton the ownership of the patent property. See 37 CFR3.54 and MPEP § 317.03. For a patent to issue to anassignee, the assignment must have been recordedor filed for recordation in accordance with 37 CFR3.11. See 37 CFR 3.81(a).

(B) An assignment can be made of record in thefile of a patent application, patent, or other patentproceeding (e.g., reexamination proceeding). Thisstep may be necessary to permit the assignee to “takeaction” in the application, patent, or other patentproceeding under the conditions set forth in 37 CFR1.46 and 37 CFR 3.81(a) and MPEP § 325 (forapplications filed on or after September 16, 2012)or under the conditions set forth in pre-AIA 37 CFR3.73 and MPEP § 324 (for applications filed beforeSeptember 16, 2012). Recordation of an assignmentin the assignment records of the Office does not, byitself, permit the assignee to take action in theapplication, patent, or other patent proceeding.

Additionally, for applications filed under 35 U.S.C.111(a), 363, or 385 on or after September 16, 2012,an assignment may contain the statements requiredto be made in an oath or declaration(“assignment-statement”), and if the assignment ismade of record in the assignment records of theOffice, then the assignment may be utilized as theoath or declaration. See 35 U.S.C. 115(e), 37 CFR1.63(e), and MPEP §§ 302.07, 317, and MPEP §602.01(a).

301.01 Accessibility of Assignment Records[R-11.2013]

37 CFR 1.12 Assignment records open to public inspection.

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§ 301.01OWNERSHIP AND ASSIGNMENT

(a)(1) Separate assignment records are maintained inthe United States Patent and Trademark Office for patents andtrademarks. The assignment records, relating to original orreissue patents, including digests and indexes (for assignmentsrecorded on or after May 1, 1957), and published patentapplications are open to public inspection at the United StatesPatent and Trademark Office, and copies of patent assignmentrecords may be obtained upon request and payment of the feeset forth in § 1.19 of this chapter. See § 2.200 of this chapterregarding trademark assignment records.

(2) All records of assignments of patents recordedbefore May 1, 1957, are maintained by the National Archivesand Records Administration (NARA). The records are open topublic inspection. Certified and uncertified copies of thoseassignment records are provided by NARA upon request andpayment of the fees required by NARA.

(b) Assignment records, digests, and indexes relating toany pending or abandoned patent application, which is open tothe public pursuant to § 1.11 or for which copies or access maybe supplied pursuant to § 1.14, are available to the public. Copiesof any assignment records, digests, and indexes that are notavailable to the public shall be obtainable only upon writtenauthority of an inventor, the applicant, the assignee or anassignee of an undivided part interest, or a patent practitionerof record, or upon a showing that the person seeking suchinformation is a bona fide prospective or actual purchaser,mortgagee, or licensee of such application, unless it shall benecessary to the proper conduct of business before the Officeor as provided in this part.

(c) Any request by a member of the public seeking copiesof any assignment records of any pending or abandoned patentapplication preserved in confidence under § 1.14, or anyinformation with respect thereto, must:

(1) Be in the form of a petition including the fee setforth in § 1.17(g); or

(2) Include written authority granting access to themember of the public to the particular assignment records froman inventor, the applicant, the assignee or an assignee of anundivided part interest, or a patent practitioner of record.

(d) An order for a copy of an assignment or other documentshould identify the reel and frame number where the assignmentor document is recorded. If a document is identified withoutspecifying its correct reel and frame, an extra charge as set forthin § 1.21(j) will be made for the time consumed in making asearch for such assignment.

Assignment documents relating to patents, publishedpatent applications, registrations of trademarks, andapplications for registration of trademarks are opento public inspection. Records related to assignmentsof patents, and patent applications that have beenpublished as patent application publications areavailable on the USPTO website. To view therecorded assignment document itself, members ofthe public must place an order pursuant to 37 CFR1.12(d).

The Office will not open only certain parts of anassignment document to public inspection. If sucha document contains two or more items, any one ofwhich, if alone, would be open to such inspection,then the entire document will be open. Thus, if adocument covers either a trademark or a patent inaddition to one or more patent applications, it willbe available to the public ab initio; and if it coversa number of patent applications, it will be soavailable as soon as any one of them is published orpatented. Documents relating only to one or morepending applications for patent which have not beenpublished under 35 U.S.C. 122(b) will not be opento public inspection.

Copies of assignment records relating to pending orabandoned patent applications which are open to thepublic pursuant to 37 CFR 1.11 or for which copiesor access may be supplied pursuant to 37 CFR 1.14are available to the public. For pending or abandonedapplications which are not open to the publicpursuant to 37 CFR 1.11 or for which copies oraccess may not be supplied pursuant to 37 CFR 1.14,information related thereto is only obtainable upona proper showing of written authority. Forapplications filed on or after September 16, 2012,the written authority must be from (A) an inventor,(B) the applicant, (C) the assignee or an assignee ofan undivided part interest, (D) a patent practitionerof record, or (E) a person with written authority from(A), (B), or (C) or (D). See 37 CFR 1.12. Forapplications filed prior to September 16, 2012, thewritten authority must be from the applicant orapplicant’s assignee or from the attorney or agentof either, or upon a showing that the person seekingsuch information is a bona fide prospective or actualpurchaser, mortgagee, or licensee of suchapplication. See pre-AIA 37 CFR 1.12.

If the application on which a patent was granted isa division, continuation, or continuation-in-part ofan earlier application, the assignment records of thatearlier application will be open to public inspectionbecause copies or access may be supplied to theearlier application pursuant to 37 CFR 1.14.

Assignment records relating to reissue applicationsare open to public inspection because reissueapplications are open to public inspection pursuantto 37 CFR 1.11(b).

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MANUAL OF PATENT EXAMINING PROCEDURE§ 301.01

Requests for abstracts of title for assignments ofpatents recorded after May 1, 1957, are provided bythe Certification Division upon request and paymentof fee required in 37 CFR 1.19. Requests for copiesof pre-1957 records for patents should be directedto the National Archives and Records Administration(NARA). Since these records are maintained byNARA, it is more expeditious to request copiesdirectly from NARA, rather than from the Office,which would then have to route the requests toNARA. Payment of the fees required by NARAshould accompany all requests for copies.

All assignment records from 1837 to April 30, 1957for patents are now maintained and are open forpublic inspection in the National Archives ResearchRoom located at the Washington National RecordsCenter Building, 4205 Suitland Road, Suitland,Maryland 20746. Assignment documents recordedbefore 1837 are maintained at the Civilian RecordsDivision of the National Archives at College Park,8601 Adelphi Road, College Park, MD 20740-6001.

302 Recording of Assignment Documents[R-07.2015]

37 CFR 3.11 Documents which will be recorded.

(a) Assignments of applications, patents, and registrations,and other documents relating to interests in patent applicationsand patents, accompanied by completed cover sheets as specifiedin § 3.28 and § 3.31, will be recorded in the Office. Otherdocuments, accompanied by completed cover sheets as specifiedin § 3.28 and § 3.31, affecting title to applications, patents, orregistrations, will be recorded as provided in this part or at thediscretion of the Director.

(b) Executive Order 9424 of February 18, 1944 (9 FR 1959,3 CFR 1943-1948 Comp., p. 303) requires the severaldepartments and other executive agencies of the Government,including Government-owned or Government-controlledcorporations, to forward promptly to the Director for recordingall licenses, assignments, or other interests of the Governmentin or under patents or patent applications. Assignments and otherdocuments affecting title to patents or patent applications anddocuments not affecting title to patents or patent applicationsrequired by Executive Order 9424 to be filed will be recordedas provided in this part.

(c) A joint research agreement or an excerpt of a jointresearch agreement will also be recorded as provided in thispart.

37 CFR 3.58 Governmental registers.

(a) The Office will maintain a Departmental Register torecord governmental interests required to be recorded byExecutive Order 9424. This Departmental Register will not be

open to public inspection but will be available for examinationand inspection by duly authorized representatives of theGovernment. Governmental interests recorded on theDepartmental Register will be available for public inspectionas provided in § 1.12.

(b) The Office will maintain a Secret Register to recordgovernmental interests required to be recorded by ExecutiveOrder 9424. Any instrument to be recorded will be placed onthis Secret Register at the request of the department or agencysubmitting the same. No information will be given concerningany instrument in such record or register, and no examinationor inspection thereof or of the index thereto will be permitted,except on the written authority of the head of the department oragency which submitted the instrument and requested secrecy,and the approval of such authority by the Director. No instrumentor record other than the one specified may be examined, andthe examination must take place in the presence of a designatedofficial of the Patent and Trademark Office. When thedepartment or agency which submitted an instrument no longerrequires secrecy with respect to that instrument, it must berecorded anew in the Departmental Register.

37 CFR Part 3 sets forth Office rules on recordingassignments and other documents relating to interestsin patent applications and patents and the rights ofan assignee.

37 CFR 3.11(c) provides that the Office will recorda joint research agreement or an excerpt of a jointresearch agreement.

302.01 Assignment Document Must Be Copyfor Recording [R-08.2012]

37 CFR 3.24 Requirements for documents and cover sheetsrelating to patents and patent applications.

(a) For electronic submissions: Either a copy of theoriginal document or an extract of the original document maybe submitted for recording. All documents must be submittedas digitized images in Tagged Image File Format (TIFF) oranother form as prescribed by the Director. When printed to apaper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches)or 21.0 by 29.7 cm (DIN size A4), the document must be legibleand a 2.5 cm (one-inch) margin must be present on all sides.

(b) For paper or facsimile submissions: Either a copy ofthe original document or an extract of the original documentmust be submitted for recording. Only one side of each pagemay be used. The paper size must be either 21.6 by 27.9 cm (81/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), andin either case, a 2.5 cm (one-inch) margin must be present onall sides. For paper submissions, the paper used should beflexible, strong white, non-shiny, and durable. The Office willnot return recorded documents, so original documents must notbe submitted for recording.

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The United States Patent and Trademark Office willaccept and record only a copy of an originalassignment or other document. See MPEP § 317.The document submitted for recordation will not bereturned to the submitter. If the copy submitted forrecordation is illegible, the recorded document willbe illegible. Accordingly, applicants and patentowners should ensure that only a legible copy issubmitted for recordation.

302.02 Translation of Assignment Document[R-08.2012]

37 CFR 3.26 English language requirement.

The Office will accept and record non-English languagedocuments only if accompanied by an English translation signedby the individual making the translation.

The assignment document, if not in the Englishlanguage, will not be recorded unless accompaniedby an English translation signed by the translator.

302.03 Identifying Patent or Application[R-07.2015]

37 CFR 3.21 Identification of patents and patent applications.

An assignment relating to a patent must identify the patent bythe patent number. An assignment relating to a national patentapplication must identify the national patent application by theapplication number (consisting of the series code and the serialnumber; e.g., 07/123,456). An assignment relating to aninternational patent application which designates the UnitedStates of America must identify the international application bythe international application number; e.g., PCT/US2012/012345.An assignment relating to an international design applicationwhich designates the United States of America must identifythe international design application by the internationalregistration number or by the U.S. application number assignedto the international design application. If an assignment of apatent application filed under § 1.53(b) of this chapter isexecuted concurrently with, or subsequent to, the execution ofthe patent application, but before the patent application is filed,it must identify the patent application by the name of eachinventor and the title of the invention so that there can be nomistake as to the patent application intended. If an assignmentof a provisional application under § 1.53(c) of this chapter isexecuted before the provisional application is filed, it mustidentify the provisional application by the name of each inventorand the title of the invention so that there can be no mistake asto the provisional application intended.

The patent or patent application to which anassignment relates must be identified by patentnumber or application number unless the assignmentis executed concurrently with or subsequent to theexecution of the application but before theapplication is filed. Then, the application must beidentified by the name(s) of the inventors, and thetitle of the invention. If an assignment of aprovisional application is executed before theprovisional application is filed, it must identify theprovisional application by name(s) of the inventorsand the title of the invention.

The Office makes every effort to provide applicantswith the application numbers for newly filed patentapplications as soon as possible. It is suggested,however, that an assignment be written to allow entryof the identifying number after the execution of theassignment. An example of acceptable wording is:

“I hereby authorize and request my attorney, (Insertname), of (Insert address), to insert here inparentheses (Application number , filed ) the filingdate and application number of said application whenknown.”

302.04 Foreign Assignee May DesignateDomestic Representative [R-11.2013]

35 U.S.C. 293 Nonresident patentee; service and notice.

Every patentee not residing in the United States may file in thePatent and Trademark Office a written designation stating thename and address of a person residing within the United Stateson whom may be served process or notice of proceedingsaffecting the patent or rights thereunder. If the person designatedcannot be found at the address given in the last designation, orif no person has been designated, the United States District Courtfor the Eastern District of Virginia shall have jurisdiction andsummons shall be served by publication or otherwise as thecourt directs. The court shall have the same jurisdiction to takeany action respecting the patent or rights thereunder that it wouldhave if the patentee were personally within the jurisdiction ofthe court.

37 CFR 3.61 Domestic representative.

If the assignee of a patent, patent application, trademarkapplication or trademark registration is not domiciled in theUnited States, the assignee may designate a domesticrepresentative in a document filed in the United States Patentand Trademark Office. The designation should state the nameand address of a person residing within the United States on

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whom may be served process or notice of proceedings affectingthe application, patent or registration or rights thereunder.

An assignee of a patent or patent application who isnot domiciled in the United States may, by writtendocument signed by such assignee, designate adomestic representative. The designation of domesticrepresentative should always be a paper separatefrom any assignment document, in order that thepaper of designation can be retained in theappropriate application or patent file. Also, thereshould be a separate paper of designation ofrepresentative for each patent or application, so thata designation paper can be placed in each file. Thedesignation of a domestic representative should bedirected to the Office of Public Records forprocessing.

302.05 Address of Assignee [R-08.2012]

The address of the assignee may be recited in theassignment document and must be given in therequired cover sheet. See MPEP § 302.07.

302.06 Fee for Recording [R-08.2012]

37 CFR 3.41 Recording fees.

(a) All requests to record documents must be accompaniedby the appropriate fee. Except as provided in paragraph (b) ofthis section, a fee is required for each application, patent andregistration against which the document is recorded as identifiedin the cover sheet. The recording fee is set in § 1.21(h) of thischapter for patents and in § 2.6(b)(6) of this chapter fortrademarks.

(b) No fee is required for each patent application and patentagainst which a document required by Executive Order 9424 isto be filed if:

(1) The document does not affect title and is soidentified in the cover sheet (see § 3.31(c)(2)); and

(2) The document and cover sheet are either: Faxed orelectronically submitted as prescribed by the Director, or mailedto the Office in compliance with § 3.27.

The recording fee set forth in 37 CFR 1.21(h) ischarged for each patent application and patentidentified in the required cover sheet except asprovided in 37 CFR 3.41(b).

302.07 Assignment Document Must BeAccompanied by a Cover Sheet [R-07.2015]

37 CFR 3.28 Requests for recording.

Each document submitted to the Office for recording mustinclude a single cover sheet (as specified in § 3.31) referringeither to those patent applications and patents, or to thosetrademark applications and registrations, against which thedocument is to be recorded. If a document to be recordedincludes interests in, or transactions involving, both patents andtrademarks, then separate patent and trademark cover sheets,each accompanied by a copy of the document to be recorded,must be submitted. If a document to be recorded is notaccompanied by a completed cover sheet, the document and theincomplete cover sheet will be returned pursuant to § 3.51 forproper completion, in which case the document and a completedcover sheet should be resubmitted.

37 CFR 3.31 Cover sheet content.

(a) Each patent or trademark cover sheet required by § 3.28must contain:

(1) The name of the party conveying the interest;

(2) The name and address of the party receiving theinterest;

(3) A description of the interest conveyed or transactionto be recorded;

(4) Identification of the interests involved:

(i) For trademark assignments and trademark namechanges: Each trademark registration number and each trademarkapplication number, if known, against which the Office is torecord the document. If the trademark application number is notknown, a copy of the application or a reproduction of thetrademark must be submitted, along with an estimate of the datethat the Office received the application; or

(ii) For any other document affecting title to atrademark or patent application, registration or patent: Eachtrademark or patent application number or each trademarkregistration number or patent against which the document is tobe recorded, or an indication that the document is filed togetherwith a patent application;

(5) The name and address of the party to whomcorrespondence concerning the request to record the documentshould be mailed;

(6) The date the document was executed;

(7) The signature of the party submitting the document.For an assignment document or name change filed electronically,the person who signs the cover sheet must either:

(i) Place a symbol comprised of letters, numbers,and/or punctuation marks between forward slash marks (e.g./Thomas O’Malley III/) in the signature block on the electronicsubmission; or

(ii) Sign the cover sheet using some other form ofelectronic signature specified by the Director.

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(8) For trademark assignments, the entity andcitizenship of the party receiving the interest. In addition, if theparty receiving the interest is a domestic partnership or domesticjoint venture, the cover sheet must set forth the names, legalentities, and national citizenship (or the state or country oforganization) of all general partners or active members thatcompose the partnership or joint venture.

(b) A cover sheet should not refer to both patents andtrademarks, since any information, including information aboutpending patent applications, submitted with a request forrecordation of a document against a trademark application ortrademark registration will become public record uponrecordation.

(c) Each patent cover sheet required by § 3.28 seeking torecord a governmental interest as provided by § 3.11(b) must:

(1) Indicate that the document relates to a Governmentinterest; and

(2) Indicate, if applicable, that the document to berecorded is not a document affecting title (see § 3.41(b)).

(d) Each trademark cover sheet required by § 3.28 seekingto record a document against a trademark application orregistration should include, in addition to the serial number orregistration number of the trademark, identification of thetrademark or a description of the trademark, against which theOffice is to record the document.

(e) Each patent or trademark cover sheet required by § 3.28should contain the number of applications, patents orregistrations identified in the cover sheet and the total fee.

(f) Each trademark cover sheet should include thecitizenship of the party conveying the interest.

(g) The cover sheet required by § 3.28 seeking to record ajoint research agreement or an excerpt of a joint researchagreement as provided by § 3.11(c) must:

(1) Identify the document as a “joint researchagreement” (in the space provided for the description of theinterest conveyed or transaction to be recorded if using anOffice-provided form);

(2) Indicate the name of the owner of the applicationor patent (in the space provided for the name and address of theparty receiving the interest if using an Office-provided form);

(3) Indicate the name of each other party to the jointresearch agreement party (in the space provided for the nameof the party conveying the interest if using an Office-providedform); and

(4) Indicate the date the joint research agreement wasexecuted.

(h) The assignment cover sheet required by § 3.28 for apatent application or patent will be satisfied by the Patent LawTreaty Model International Request for Recordation of Changein Applicant or Owner Form, Patent Law Treaty ModelInternational Request for Recordation of a License/ Cancellationof the Recordation of a License Form, Patent Law Treaty ModelCertificate of Transfer Form or Patent Law Treaty ModelInternational Request for Recordation of a Security Interest/Cancellation of the Recordation of a Security Interest Form, asapplicable, except where the assignment is also an oath or

declaration under § 1.63 of this chapter. An assignment coversheet required by § 3.28 must contain a conspicuous indicationof an intent to utilize the assignment as an oath or declarationunder § 1.63 of this chapter.

Each assignment document submitted to the Officefor recording must be accompanied by a cover sheetas required by 37 CFR 3.28. The cover sheet forpatents or patent applications must contain:

(A) The name of the party conveying theinterest;

(B) The name and address of the party receivingthe interest;

(C) A description of the interest conveyed ortransaction to be recorded;

(D) Each patent application number or patentnumber against which the document is to berecorded, or an indication that the document is filedtogether with a patent application;

(E) The name and address of the party to whomcorrespondence concerning the request to record thedocument should be mailed;

(F) The date the document was executed; and

(G) The signature of the party submitting thedocument.

For applications filed on or after September 16,2012, if the assignment document is also intendedto serve as the required oath or declaration, the coversheet must also contain a conspicuous indication ofan intent to utilize the assignment as the requiredoath or declaration under 37 CFR 1.63. See 37 CFR3.31(h).

If the document submitted for recordation is a jointresearch agreement or an excerpt of a joint researchagreement, the cover sheet must clearly identify thedocument as a “joint research agreement” (in thespace provided for the description of the interestconveyed if using Form PTO-1595). The date thejoint research agreement was executed must also beidentified. The cover sheet must also identify thename(s) of the owner(s) of the application or patent(in the space provided for the name and address ofthe party receiving the interest if using FormPTO-1595). The name(s) of every other party(ies)to the joint research agreement must also beidentified (in the space provided for the name of the

300-8Rev. 07.2015, October 2015


party conveying the interest if using FormPTO-1595).

Each patent cover sheet should contain the numberof patent applications or patents identified in thecover sheet and the total fee.

Examples of the type of descriptions of the interestconveyed or transaction to be recorded that can beidentified are:

(A) assignment;

(B) security agreement;

(C) merger;

(D) change of name;

(E) license;

(F) foreclosure;

(G) lien;

(H) contract; and

(I) joint research agreement.

Cover sheets required by 37 CFR 3.28 seeking torecord a governmental interest must also (1) indicatethat the document relates to a governmental interestand (2) indicate, if applicable, that the document tobe recorded is not a document affecting title.

A patent cover sheet may not refer to trademarkapplications or registrations.

Form PTO-1595, Recordation Form Cover Sheet,may be used as the cover sheet for recordingdocuments relating to patent(s) and/or patentapplication(s) in the Office.

Rev. 07.2015, October 2015300-9


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Rev. 07.2015, October 2015300-11


300-12Rev. 07.2015, October 2015


302.08 Mailing Address for SubmittingAssignment Documents [R-08.2012]

37 CFR 3.27 Mailing address for submitting documents tobe recorded.

Documents and cover sheets submitted by mail for recordationshould be addressed to Mail Stop Assignment RecordationServices, Director of the United States Patent and TrademarkOffice, P.O. Box 1450, Alexandria, Virginia 22313-1450, unlessthey are filed together with new applications.

37 CFR 3.27 sets out how documents submitted forrecording should be addressed to the Office. In orderto ensure prompt and proper processing, documentsand their cover sheets should be addressed to theMail Stop Assignment Recordation Services,Director of the U.S. Patent and Trademark Office,P.O. Box 1450, Alexandria, VA 22313-1450, unlessthey are filed together with new applications.Requests for recording documents which accompanynew applications should be addressed to theCommissioner for Patents, P.O. Box 1450,Alexandria, VA 22313-1450.

302.09 Facsimile Submission of AssignmentDocuments [R-11.2013]

Assignments and other documents affecting titlemay be submitted to the Office via facsimile (fax).See the USPTO website or MPEP § 1730 for thefacsimile number. This process allows customers tosubmit their documents directly into the automatedPatent and Trademark Assignment System andreceive the resulting recordation notice at their faxmachine. The customer’s fax machine should beconnected to a dedicated line because recordationnotices will be returned automatically to the sendingfax number through the Patent and TrademarkAssignment System. If the Office system is unableto complete transmission of the recordation notice,the notice will be printed and mailed to the senderby U.S. Postal Service first class mail. Recordeddocuments will not be returned with the “Notice ofRecordation.”

Any assignment-related document for patent matterssubmitted by facsimile must include:

(A) an identified application or patent number;

(B) one cover sheet to record a singletransaction; and

(C) payment of the recordation fee by a creditcard (use of the Credit Card form, PTO-2038 (seeMPEP § 509), is required for the credit cardinformation to be kept separate from the assignmentrecords) or a USPTO Deposit Account.

The following documents cannot be submitted viafacsimile:

(A) Assignments submitted concurrently withnewly filed patent applications;

(B) Documents with two or more cover sheets(e.g., a single document with one cover sheet torecord an assignment, and a separate cover sheet torecord separately a license relating to the sameproperty); and

(C) Requests for “at cost” recordation services.

The date of receipt accorded to an assignmentdocument sent to the Office by facsimiletransmission is the date the complete transmissionis received in the Office. See MPEP § 502.01. Thebenefits of a certificate of transmission under 37CFR 1.8 are available.

If a document submitted by fax is determined not tobe recordable, the entire document, with itsassociated cover sheet, and the Office “Notice ofNon-Recordation” will be transmitted via fax backto the sender. Once corrections are made, the initialsubmission, amended, may then be resubmitted bymailing the corrected submission to the address setforth in 37 CFR 3.27. Timely resubmission willprovide the sender with the benefit of the initialreceipt date as the recordation date in accordancewith 37 CFR 3.51.

The Patent and Trademark Assignment Systemassigns reel and frame numbers and superimposesrecordation stampings on the processed and storedelectronic images. Accordingly, copies of allrecorded documents will have the reel and framenumbers and recordation stampings.

302.10 Electronic Submission of AssignmentDocuments [R-07.2015]

37 CFR 3.31 Cover sheet content.

(a) *****

Rev. 07.2015, October 2015300-13


(7) The signature of the party submitting thedocument. For an assignment document or name change filedelectronically, the person who signs the cover sheet must either:

(i) Place a symbol comprised of letters,numbers, and/or punctuation marks between forward slash marks(e.g. /Thomas O’ Malley III/) in the signature block on theelectronic submission; or

(ii) Sign the cover sheet using some other formof electronic signature specified by the Director.

*****

37 CFR 1.4 Nature of correspondence and signaturerequirements.

*****

(d) *****

(2) S-signature. An S-signature is a signatureinserted between forward slash marks, but not a handwrittensignature as defined by paragraph (d)(1) of this section. AnS-signature includes any signature made by electronic ormechanical means, and any other mode of making or applyinga signature other than a handwritten signature as provided forin paragraph (d)(1) of this section. Correspondence being filedin the Office in paper, by facsimile transmission as provided in§ 1.6(d), or via the Office electronic filing system as anattachment as provided in § 1.6(a)(4), for a patent application,patent, or a reexamination or supplemental examinationproceeding may be S-signature signed instead of beingpersonally signed (i.e., with a handwritten signature) as providedfor in paragraph (d)(1) of this section. The requirements for anS-signature under this paragraph (d)(2) of this section are asfollows.

(i) The S-signature must consist only of letters,or Arabic numerals, or both, with appropriate spaces andcommas, periods, apostrophes, or hyphens for punctuation, andthe person signing the correspondence must insert his or herown S-signature with a first single forward slash mark before,and a second single forward slash mark after, the S-signature(e.g., /Dr. James T. Jones, Jr./); and

(ii) A patent practitioner (§ 1.32(a)(1)), signingpursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/herregistration number either as part of the S-signature, orimmediately below or adjacent to the S-signature. The number(#) character may be used only as part of the S-signature whenappearing before a practitioner’s registration number; otherwisethe number character may not be used in an S-signature.

(iii) The signer’s name must be:

(A) Presented in printed or typed formpreferably immediately below or adjacent the S-signature, and

(B) Reasonably specific enough so thatthe identity of the signer can be readily recognized.

(3) Electronically submitted correspondence.Correspondence permitted via the Office electronic filing systemmay be signed by a graphic representation of a handwrittensignature as provided for in paragraph (d)(1) of this section ora graphic representation of an S-signature as provided for in

paragraph (d)(2) of this section when it is submitted via theOffice electronic filing system.

(4) Certifications—

(i) Certification as to the paper presented. Thepresentation to the Office (whether by signing, filing, submitting,or later advocating) of any paper by a party, whether apractitioner or non-practitioner, constitutes a certification under§ 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of thissubchapter by a party, whether a practitioner or non-practitioner,may result in the imposition of sanctions under § 11.18(c) ofthis subchapter. Any practitioner violating § 11.18(b) of thissubchapter may also be subject to disciplinary action. See §11.18(d) of this subchapter.

(ii) Certification as to the signature. Theperson inserting a signature under paragraph (d)(2) or (d)(3) ofthis section in a document submitted to the Office certifies thatthe inserted signature appearing in the document is his or herown signature. A person submitting a document signed byanother under paragraph (d)(2) or (d)(3) of this section isobligated to have a reasonable basis to believe that the personwhose signature is present on the document was actually insertedby that person, and should retain evidence of authenticity of thesignature. Violations of the certification as to the signature ofanother or a person’s own signature as set forth in this paragraphmay result in the imposition of sanctions under § 11.18(c) and(d) of this chapter.

(5) Forms. The Office provides forms for thepublic to use in certain situations to assist in the filing ofcorrespondence for a certain purpose and to meet certainrequirements for patent applications and proceedings. Use ofthe forms for purposes for which they were not designed isprohibited. No changes to certification statements on the Officeforms (e.g., oath or declaration forms, terminal disclaimerforms, petition forms, and nonpublication request forms) maybe made. The existing text of a form, other than a certificationstatement, may be modified, deleted, or added to, if all textidentifying the form as an Office form is removed. Thepresentation to the Office (whether by signing, filing, submitting,or later advocating) of any Office form with text identifying theform as an Office form by a party, whether a practitioner ornon-practitioner, constitutes a certification under § 11.18(b) ofthis chapter that the existing text and any certification statementson the form have not been altered other than permitted byEFS-Web customization.

*****

Assignments and other documents affecting titlemay be submitted to the Office via the Office’sElectronic Patent Assignment System (EPAS). Seethe USPTO website at http://epas.uspto.gov foradditional information regarding EPAS.

Any assignment related document submitted byEPAS must include:

(A) an identified application or patent number;

300-14Rev. 07.2015, October 2015


http://epas.uspto.gov

(B) one cover sheet to record a single transactionwhich cover sheet is to be completed on-line; and

(C) payment of the recordation fee by a creditcard (use of the Credit Card form, PTO-2038 (seeMPEP § 509), is required for the credit cardinformation to be kept separate from the assignmentrecords), electronic fund transfer (EFT) or a USPTODeposit Account.

For an assignment document filed electronically, thesignature of the person who signs the cover sheetmust comply with 37 CFR 3.31(a)(7) or 37 CFR1.4(d)(2).

The date of receipt accorded to an assignmentdocument sent to the Office by EPAS is the date thecomplete transmission is received in the Office.

If a document submitted by EPAS is determined notto be recordable, the entire document, with itsassociated cover sheet, and the Office "Notice ofNon-Recordation" will be transmitted via fax backto the sender. Once corrections are made, the initialsubmission, as amended, may then be resubmittedby mailing the corrected submission to the addressset forth in 37 CFR 3.27. Timely submission willprovide the sender with the benefit of the initialreceipt date as the recordation date in accordancewith 37 CFR 3.51.

The Patent and Trademark Assignment Systemassigns reel and frame numbers and superimposesrecordation stampings on the processed and storedelectronic images. Accordingly, copies of allrecorded documents will have the reel and framenumbers and recordation stampings.

303 Assignment Documents Not Endorsedon Pending Applications [R-08.2012]

Certified copies of patent applications as filed donot include an indication of assignment documents.Applicants desiring an indication of assignmentdocuments of record should request separatelycertified copies of assignment documents and submitthe fees required by 37 CFR 1.19.

When the assignment condition of an application issignificant, such as when applications of differentinventors contain conflicting claims or there is a

question as to who should direct prosecution, it isnecessary for the examiner to obtain assignmentinformation from PALM. See MPEP § 320.

304-305 [Reserved]

306 Assignment of Division, Continuation,Substitute, and Continuation-in-Part inRelation to Parent Application [R-07.2015]

In the case of a division or continuation application,a prior assignment recorded against the originalapplication is applied (effective) to the division orcontinuation application because the assignmentrecorded against the original application gives theassignee rights to the subject matter common to bothapplications. Although the assignment recordedagainst an original application is applied to thedivision or continuation application, the Office’sassignment records will only reflect an assignmentof a division or continuation application (or any otherapplication) if a request for recordation incompliance with 37 CFR 3.28, accompanied by therequired fee (37 CFR 3.41), is filed.

In the case of a substitute or continuation-in-partapplication, a prior assignment of the originalapplication is not applied (effective) to the substituteor continuation-in-part application because theassignment recorded against the original applicationgives the assignee rights to only the subject mattercommon to both applications. Substitute orcontinuation-in-part applications require therecordation of a new assignment if they are to beissued to an assignee, unless the substitute orcontinuation-in-part application is filed on or afterSeptember 16, 2012, and the assignee is the originalapplicant therein. See 37 CFR 3.81. See also MPEP§ 307 and § 308.

306.01 Assignment of an ApplicationClaiming the Benefits of a ProvisionalApplication [R-07.2015]

If an application which claims the benefit of theearlier filing date of a provisional application under35 U.S.C. 119(e) includes only subject matter whichformed a part of the provisional application, an

Rev. 07.2015, October 2015300-15


assignment recorded against the provisionalapplication will be effective in the later application,similar to the practice with respect to continuationsand divisions filed under 35 U.S.C. 120. See MPEP§ 306. If an application claiming the benefit of theearlier filing date of a provisional applicationincludes subject matter that is not common withsubject matter of the provisional application, newassignment papers must be recorded for theapplication claiming the benefit of the provisionalapplication, unless the later application is filed onor after September 16, 2012 and the assignee is theoriginal applicant therein. This is similar to thepractice with respect to continuations-in-part filedunder 35 U.S.C. 120. See MPEP § 306, § 307, and§ 308.

307 Issue to Non-Applicant Assignee[R-11.2013]

35 U.S.C. 152 Issue of patent to assignee.

Patents may be granted to the assignee of the inventor of recordin the Patent and Trademark Office, upon the application madeand the specification sworn to by the inventor, except asotherwise provided in this title.

37 CFR 3.81 Issue of patent to assignee.

(a) With payment of the issue fee: An application may issuein the name of the assignee consistent with the application’sassignment where a request for such issuance is submitted withpayment of the issue fee, provided the assignment has beenpreviously recorded in the Office. If the assignment has not beenpreviously recorded, the request must state that the documenthas been filed for recordation as set forth in § 3.11.

(b) After payment of the issue fee: Any request for issuanceof an application in the name of the assignee submitted after thedate of payment of the issue fee, and any request for a patent tobe corrected to state the name of the assignee, must state thatthe assignment was submitted for recordation as set forth in §3.11 before issuance of the patent, and must include a requestfor a certificate of correction under § 1.323 of this chapter(accompanied by the fee set forth in § 1.20(a)) and theprocessing fee set forth in § 1.17 (i) of this chapter.

(c) Partial assignees.

(1) If one or more assignee, together with one or moreinventor, holds the entire right, title, and interest in theapplication, the patent may issue in the names of the assigneeand the inventor.

(2) If multiple assignees hold the entire right, title, andinterest to the exclusion of all the inventors, the patent may issuein the names of the multiple assignees.

Normally, for a patent to issue to an assignee (otherthan an assignee who is the applicant in anapplication filed on or after September 16, 2012), arequest for issuance of the application in the nameof the assignee must be filed in the United StatesPatent and Trademark Office (Office) at a date notlater than the day on which the issue fee is paid. Sucha request must indicate that the assignment has beenpreviously recorded in the Office. If the assignmenthas not been previously recorded in the Office, therequest must state that the document has been filedfor recordation as set forth in 37 CFR 3.11. See 37CFR 3.81(a). See MPEP § 308 for informationregarding issuance of a patent to an assignee who isthe applicant in an application filed on or afterSeptember 16, 2012.

If a request for issuance to an assignee pursuant to37 CFR 3.81(b) is submitted after the day on whichthe issue fee is paid, the request under 37 CFR3.81(b) must include a request for a certificate ofcorrection under 37 CFR 1.323 (accompanied by thefee set forth in 37 CFR 1.20(a)) and the processingfee set forth in 37 CFR 1.17(i). The request under37 CFR 3.81(b) must state that the assignment wassubmitted for recordation as set forth in 37 CFR 3.11before issuance of the patent. The Office will issuea certificate of correction to reflect that the patentissued to the assignee provided the requirements of37 CFR 3.81(b) and 37 CFR 1.323 are compliedwith.

Only the first appearing name of an assignee will beprinted on the patent where multiple names for thesame party are identified on the Fee(s) Transmittalform, PTOL-85B. Such multiple names may occurwhen both a legal name and an “also known as” or“doing business as” name is also included. Thisprinting practice will not, however, affect theexisting practice of recording assignments with theOffice in the Assignment Division. The assigneeentry on form PTOL-85B should still be completedto indicate the assignment data as recorded in theOffice. For example, the assignment filed in theOffice and, therefore, the PTOL-85B assignee entrymight read “Smith Company doing business as(d.b.a.) Jones Company.” The assignee entry on theprinted patent will read “Smith Company.”

300-16Rev. 07.2015, October 2015


Unless an assignee’s name and address are identifiedin item 3 of the Fee(s) Transmittal form PTOL-85B,the patent will issue to the applicant. Assignmentdata printed on the patent will be based solely on theinformation so supplied. Assignment informationprinted on a patent is not updated after a patent isissued, and may not be reflective of the assignmentrecorded in the Office subsequent to the issuance ofthe patent. Detailed assignment information can befound by performing an assignment search on theUSPTO website and by inspecting the recordedassignment documents.

A request for a certificate of correction under37 CFR 1.323 (see MPEP §§ 1481 and 1485) arisingfrom incomplete or erroneous assignee’s namefurnished, or a missing assignee’s name, in item 3of PTOL-85B will not be granted unless a requestunder 37 CFR 3.81(b) has been granted and theassignment was submitted for recordation as set forthin 37 CFR 3.11 before the patent issued. Any suchrequest under 37 CFR 3.81(b) should be directed tothe Office of Petitions and should include:

(A) the processing fee required by 37 CFR1.17(i);

(B) a request for issuance of the application inthe name of the assignee, or a request that a patentbe corrected to state the name of the assignee;

(C) a statement that the assignment wassubmitted for recordation as set forth in 37 CFR 3.11before the issuance of the patent; and

(D) a request for a certificate of correction under37 CFR 1.323 accompanied by the fee set forth in37 CFR 1.20(a).

308 Issue to Applicant [R-07.2015]

[Editor Note: This MPEP section is only applicableto applications filed on or after September 16, 2012.]

35 U.S.C. 118 Filing by other than inventor.

[Editor Note: Applicable to any patent application filed on orafter September 16, 2012. See pre-AIA 35 U.S.C. 118 for thelaw otherwise applicable.]

A person to whom the inventor has assigned or is under anobligation to assign the invention may make an application forpatent. A person who otherwise shows sufficient proprietaryinterest in the matter may make an application for patent onbehalf of and as agent for the inventor on proof of the pertinent

facts and a showing that such action is appropriate to preservethe rights of the parties. If the Director grants a patent on anapplication filed under this section by a person other than theinventor, the patent shall be granted to the real party in interestand upon such notice to the inventor as the Director considersto be sufficient.

37 CFR 1.46 Application for patent by an assignee, obligatedassignee, or a person who otherwise shows sufficientproprietary interest in the matter.

[Editor Note: Applicable only to patent applications filed under35 U.S.C. 111(a), 363,or 385 on or after September 16, 2012.See pre-Hague 37 CFR 1.46 or pre-AIA 37 CFR 1.46 for therule otherwise applicable.]

*****

(b) If an application under 35 U.S.C. 111 is made by aperson other than the inventor under paragraph (a) of this section,the application must contain an application data sheet under §1.76 specifying in the applicant information section (§1.76(b)(7)) the assignee, person to whom the inventor is underan obligation to assign the invention, or person who otherwiseshows sufficient proprietary interest in the matter. If anapplication entering the national stage under 35 U.S.C. 371, ora nonprovisional international design application, is applied forby a person other than the inventor under paragraph (a) of thissection, the assignee, person to whom the inventor is under anobligation to assign the invention, or person who otherwiseshows sufficient proprietary interest in the matter must havebeen identified as the applicant for the United States in theinternational stage of the international application or as theapplicant in the publication of the international registration underHague Agreement Article 10(3).

(1) If the applicant is the assignee or a person to whomthe inventor is under an obligation to assign the invention,documentary evidence of ownership (e.g., assignment for anassignee, employment agreement for a person to whom theinventor is under an obligation to assign the invention) shouldbe recorded as provided for in part 3 of this chapter no later thanthe date the issue fee is paid in the application.

(2) If the applicant is a person who otherwise showssufficient proprietary interest in the matter, such applicant mustsubmit a petition including:

(i) The fee set forth in § 1.17(g);

(ii) A showing that such person has sufficientproprietary interest in the matter; and

(iii) A statement that making the application forpatent by a person who otherwise shows sufficient proprietaryinterest in the matter on behalf of and as agent for the inventoris appropriate to preserve the rights of the parties.

*****

(e) If a patent is granted on an application filed under thissection by a person other than the inventor, the patent shall begranted to the real party in interest. Otherwise, the patent maybe issued to the assignee or jointly to the inventor and theassignee as provided in § 3.81. Where a real party in interesthas filed an application under § 1.46, the applicant shall notify

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§ 308OWNERSHIP AND ASSIGNMENT

the Office of any change in the real party in interest no laterthan payment of the issue fee. The Office will treat the absenceof such a notice as an indication that there has been no changein the real party in interest.

35 U.S.C. 118 and 37 CFR 1.46(e) provide thatwhere the Director grants a patent on an applicationfiled under 35 U.S.C. 118 by a person other than theinventor, the Office must grant the patent to the realparty in interest. Therefore, the Office is requiringapplicants other than the inventor to notify the Officeof any change in the real party in interest in a replyto a notice of allowance. Absent any suchnotification, the Office will presume no change hasoccurred and will grant the patent to the real partyin interest of record.

Applicants other than the inventor can notify theOffice of a change in the real party in interest byproviding the real party in interest in Box 3 of thePTOL-85B. See MPEP § 307.

Applicants other than the inventor should record thedocumentary evidence of ownership (e.g.,assignment for an assignee, employment agreementfor a person to whom the inventor is under anobligation to assign the invention) before paymentof the issue fee.

309 Restrictions Upon Employees of U.S.Patent and Trademark Office [R-07.2015]

35 U.S.C. 4 Restrictions on officers and employees as tointerests in patents.

Officers and employees of the Patent and Trademark Officeshall be incapable, during the period of their appointments andfor one year thereafter, of applying for a patent and of acquiring,directly or indirectly, except by inheritance or bequest, anypatent or any right or interest in any patent, issued or to be issuedby the Office. In patents applied for thereafter they shall not beentitled to any priority date earlier than one year after thetermination of their appointment.

See MPEP § 1701 for additional restrictions onOffice employees.

310 Government License Rights toContractor-Owned Inventions Made Under

Federally Sponsored Research andDevelopment [R-07.2015]

Where a Government contractor retains U.S.domestic patent rights, the contractor is under anobligation by virtue of 35 U.S.C. 202(c)(6) to includethe following statement at the beginning of theapplication and any patents issued thereon:

“This invention was made with government supportunder (identify the contract) awarded by (identifythe Federal agency). The government has certainrights in the invention.”

If reference is made in the first sentence(s) of thespecification following the title to relatedapplications, the above “Government LicenseRights” statement should follow immediately as thesecond paragraph of the specification. If there is nosuch reference to related applications, the“Government License Rights” statement shouldappear as the first paragraph of the specification.See 37 CFR 1.77(b)(1)-(3).

311 Filing of Notice of Arbitration Awards[R-11.2013]

35 U.S.C. 294 Voluntary arbitration.

(a) A contract involving a patent or any right under a patentmay contain a provision requiring arbitration of any disputerelating to patent validity or infringement arising under thecontract. In the absence of such a provision, the parties to anexisting patent validity or infringement dispute may agree inwriting to settle such dispute by arbitration. Any such provisionor agreement shall be valid, irrevocable, and enforceable, exceptfor any grounds that exist at law or in equity for revocation ofa contract.

(b) Arbitration of such disputes, awards by arbitrators, andconfirmation of awards shall be governed by title 9, to the extentsuch title is not inconsistent with this section. In any sucharbitration proceeding, the defenses provided for under section282 shall be considered by the arbitrator if raised by any partyto the proceeding.

(c) An award by an arbitrator shall be final and bindingbetween the parties to the arbitration but shall have no force oreffect on any other person. The parties to an arbitration mayagree that in the event a patent which is the subject matter of anaward is subsequently determined to be invalid or unenforceablein a judgment rendered by a court of competent jurisdictionfrom which no appeal can or has been taken, such award maybe modified by any court of competent jurisdiction uponapplication by any party to the arbitration. Any suchmodification shall govern the rights and obligations betweensuch parties from the date of such modification.

300-18Rev. 07.2015, October 2015


(d) When an award is made by an arbitrator, the patentee,his assignee or licensee shall give notice thereof in writing tothe Director. There shall be a separate notice prepared for eachpatent involved in such proceeding. Such notice shall set forththe names and addresses of the parties, the name of the inventor,and the name of the patent owner, shall designate the numberof the patent, and shall contain a copy of the award. If an awardis modified by a court, the party requesting such modificationshall give notice of such modification to the Director. TheDirector shall, upon receipt of either notice, enter the same inthe record of the prosecution of such patent. If the requirednotice is not filed with the Director, any party to the proceedingmay provide such notice to the Director.

(e) The award shall be unenforceable until the noticerequired by subsection (d) is received by the Director.

37 CFR 1.335 Filing of notice of arbitration awards.

(a) Written notice of any award by an arbitrator pursuantto 35 U.S.C. 294 must be filed in the Patent and TrademarkOffice by the patentee, or the patentee’s assignee or licensee. Ifthe award involves more than one patent a separate notice mustbe filed for placement in the file of each patent. The notice mustset forth the patent number, the names of the inventor and patentowner, and the names and addresses of the parties to thearbitration. The notice must also include a copy of the award.

(b) If an award by an arbitrator pursuant to 35 U.S.C. 294is modified by a court, the party requesting the modificationmust file in the Patent and Trademark Office, a notice of themodification for placement in the file of each patent to whichthe modification applies. The notice must set forth the patentnumber, the names of the inventor and patent owner, and thenames and addresses of the parties to the arbitration. The noticemust also include a copy of the court’s order modifying theaward.

(c) Any award by an arbitrator pursuant to 35 U.S.C. 294shall be unenforceable until any notices required by paragraph(a) or (b) of this section are filed in the Patent and TrademarkOffice. If any required notice is not filed by the party designatedin paragraph (a) or (b) of this section, any party to the arbitrationproceeding may file such a notice.

The written notices required by this section shouldbe directed to the attention of the Office of theSolicitor. The Office of the Solicitor will beresponsible for processing such notices.

312 [Reserved]

313 Recording of Licenses, Security Interests,and Documents Other Than Assignments[R-07.2015]

In addition to assignments and documents requiredto be recorded by Executive Order 9424, uponrequest, assignments of applications, patents, andregistrations, and other documents relating tointerests in patent applications and patents will berecorded in the Office. See 35 U.S.C. 261 and 37CFR 3.11. Other documents affecting title toapplications, patents, and registrations will berecorded as provided in 37 CFR Part 3 or at thediscretion of the Director. 37 CFR 3.11(a).

In addition to documents that constitute a transferor change of title, other documents relating tointerests in patents or applications will generally berecorded. Typical of these documents which areaccepted for recording are license agreements andagreements which convey a security interest. Suchdocuments are recorded in the public interest in orderto give third parties notification of equitable interestsor other matters relevant to the ownership of a patentor application. Documents that are not accepted forrecording include attorney's liens against patents orpatent applications. See In re Refusal of AssignmentBranch to Record Attorney's Lien, 8 USPQ2d 1446(Comm'r Pat. 1988).

Any document returned unrecorded, which thesender nevertheless believes represents an unusualcase which justifies recordation, may be submittedto the Office of Petitions with a petition under 37CFR 1.181 requesting recordation of the document.

The recordation of a document is not a determinationof the effect of the document on the chain of title.The determination of what, if any, effect a documenthas on title will be made by the Office at such timesas ownership must be established to permit actionto be taken by the purported assignee in connectionwith a patent or an application. See MPEP § 324 and§ 325.

Rev. 07.2015, October 2015300-19


314 Certificates of Change of Name or ofMerger [R-08.2012]

Certificates issued by appropriate authoritiesshowing a change of name of a business or a mergerof businesses are recordable. Although a merechange of name does not constitute a change in legalentity, it is properly a link in the chain of title.Documents of merger are also proper links in thechain of title. They may represent a change of entityas well as a change of name.

315 Indexing Against a Recorded Certificate[R-11.2013]

The Office does not process requests for “indexing”or “cross-referencing” additional patent numbers orapplication numbers against a document, other thanan assignment, previously recorded in theAssignment Division. Such requests do not complywith 37 CFR 3.11, 3.28, and 3.31, which require thateach request for recordation include the documentto be recorded and a cover sheet.

Therefore, even where a document has already beenrecorded in the Assignment Division in connectionwith a patent or patent application, a party thatwishes recordation of that document with respect toadditional patents and/or patent applications mustsubmit the following to the Assignment Division:

(A) a copy of the original document (which mayconsist of the previously recorded papers on whichthe Assignment Division has stamped the reel andframe numbers at which they are recorded, or a copyof such papers);

(B) a completed cover sheet (see 37 CFR 3.31and MPEP § 302.07); and

(C) the appropriate recording fee (see 37 CFR1.21(h) and 3.41).

The Office will assign a new recording date to thatsubmission, update the assignment database, andinclude the cover sheet and document as part of theofficial record.

316 [Reserved]

317 Handling of Documents in theAssignment Division [R-11.2013]

All documents and cover sheets submitted forrecording are examined for formal requirements inthe Assignment Division in order to separatedocuments which are recordable from those whichare not recordable.

Documents and cover sheets that are considered notto be recordable are returned to the sender by theAssignment Division with an explanation. If thesender disagrees or believes that the documentrepresents an unusual case which justifiesrecordation, the sender may present the question tothe Director by way of petition under 37 CFR 1.181,filed with the Office of Petitions.

After an assignment and cover sheet have beenrecorded, notification will be sent to the name andaddress indicated on the cover sheet to receivecorrespondence, showing the reel and frame number.

317.01 Recording Date [R-08.2012]

37 CFR 3.51 Recording date.

The date of recording of a document is the date the documentmeeting the requirements for recording set forth in this part isfiled in the Office. A document which does not comply with theidentification requirements of § 3.21 will not be recorded.Documents not meeting the other requirements for recording,for example, a document submitted without a completed coversheet or without the required fee, will be returned for correctionto the sender where a correspondence address is available. Thereturned papers, stamped with the original date of receipt by theOffice, will be accompanied by a letter which will indicate thatif the returned papers are corrected and resubmitted to the Officewithin the time specified in the letter, the Office will considerthe original date of filing of the papers as the date of recordingof the document. The procedure set forth in § 1.8 or § 1.10 ofthis chapter may be used for resubmissions of returned papersto have the benefit of the date of deposit in the United StatesPostal Service. If the returned papers are not corrected andresubmitted within the specified period, the date of filing of thecorrected papers will be considered to be the date of recordingof the document. The specified period to resubmit the returnedpapers will not be extended.

300-20Rev. 07.2015, October 2015


The date of recording of a document is the date thedocument meeting the requirements for recordingset forth in the regulations is filed in the Office. Adocument which does not comply with theidentification requirements of 37 CFR 3.21 will notbe recorded. Documents not meeting the otherrequirements for recording, for example, a documentsubmitted without a completed cover sheet orwithout the required fee, will be returned forcorrection to the sender when a correspondenceaddress is available.

317.02 Correction of Unrecorded ReturnedDocuments and Cover Sheets [R-07.2015]

Assignment documents and cover sheets, or copiesof the same, which are returned by AssignmentDivision will be stamped with the original date ofreceipt by the Office and will be accompanied by aletter which will indicate that if the returned papersare corrected and resubmitted to the Office withinthe time specified in the letter, the Office willconsider the original date of receipt of the papers asthe date of recording of the document. See 37 CFR3.51. The certification procedure under 37 CFR 1.8

(see MPEP § 512) or the “Priority Mail Express®”procedure under 37 CFR 1.10 (see MPEP § 513)may be used for resubmissions of returned papersto obtain the benefit of the date of deposit in theUnited States Postal Service to establish that thepapers were returned within the time periodspecified. If the returned papers are not correctedand resubmitted within the specified period, the dateof receipt of the corrected papers will be consideredto be the date of recording of the document. Thespecified period to resubmit the returned papers willnot be extended.

317.03 Effect of Recording [R-11.2013]

37 CFR 3.54 Effect of recording.

The recording of a document pursuant to § 3.11 is not adetermination by the Office of the validity of the document orthe effect that document has on the title to an application, apatent, or a registration. When necessary, the Office willdetermine what effect a document has, including whether a partyhas the authority to take an action in a matter pending beforethe Office.

37 CFR 3.56 Conditional assignments.

Assignments which are made conditional on the performanceof certain acts or events, such as the payment of money or othercondition subsequent, if recorded in the Office, are regarded asabsolute assignments for Office purposes until canceled withthe written consent of all parties or by the decree of a court ofcompetent jurisdiction. The Office does not determine whethersuch conditions have been fulfilled.

The recording of a document is not a determinationby the Office of the validity of the document or theeffect that document has on the title to an applicationor patent. When necessary, the Office will determinewhat effect a document has, including whether aparty has the authority to take an action in a matterpending before the Office. See MPEP §§ 324 and325.

37 CFR 3.56 provides that an assignment, which atthe time of its execution is conditional on a givenact or event, will be treated by the Office as anabsolute assignment. This rule serves as notificationas to how a conditional assignment will be treatedby the Office in any proceeding requiring adetermination of the owner of an application, patent,or registration. Since the Office will not determinewhether a condition has been fulfilled, the Officewill treat the submission of such an assignment forrecordation as signifying that the act or event hasoccurred. A security agreement that does not conveythe right, title, and interest of a patent property isnot a conditional assignment.

318 Documents Not to be Placed in Files[R-08.2012]

Assignment documents submitted for recordingshould not be placed directly in application or patentfiles, but should be forwarded to AssignmentDivision for recording.

319 [Reserved]

320 Title Reports [R-08.2012]

The “title report” is a form which can be used undercertain circumstances by the Assignment Division

Rev. 07.2015, October 2015300-21


to report to someone within the Office the name ofthe owner of an application or patent as shown bythe Assignment Division records on the date the titlereport is made. For example, a title report isrequested by the Reexamination Preprocessing Staffwhen a request for reexamination is filed. Titlereports may not be ordered by applicants orattorneys.

Information as to the title is not normally requiredby the examiner to examine an application. It is onlyin limited circumstances when the ownershipbecomes an issue and an examiner needs a titlereport. See MPEP § 303. Examiners may obtain atitle report using the PALM Intranet (select “GeneralInformation,” insert the appropriate applicationnumber, select “Search,” select “Assignments”). Thescreen resulting from the search may be printed toyield the copy of the title report.

NOTE: The public can request a certified abstractof title. The fee for this service is set forth at 37 CFR1.19(b)(4). See MPEP § 301.01 for a discussion ofwhich assignment records are publicly available.

321-322 [Reserved]

323 Procedures for Correcting Errors inRecorded Assignment Document [R-08.2012]

An error in a recorded assignment document will becorrected by Assignment Division provided a“corrective document” is submitted. The “correctivedocument” must include the following:

(A) A copy of the original assignment documentwith the corrections made therein. The correctionsmust be initialed and dated by the party conveyingthe interest; and

(B) A new Recordation Form Cover Sheet (formPTO-1595) (See MPEP § 302.07).

The new recordation form cover sheet must identifythe submission as a “corrective document”submission and indicate the reel and frame numberwhere the incorrectly recorded assignment documentappears. The original cover sheet should besubmitted with the corrective document. Thecorrective document will be recorded and given a

new reel and frame number and recording date. Therecording fee set forth in 37 CFR 1.21(h) is requiredfor each patent application and patent against whichthe corrective document is being recorded. SeeMPEP § 302.06.

Corrections may be made on the original assignmentdocument, for example, by lining out an incorrectpatent or application number in a merger or changeof name (see MPEP § 314).

Office policy regarding recordation of assignmentdocuments is directed toward maintaining a completehistory of claimed interests in property and,therefore, recorded assignment documents will notbe expunged even if subsequently found to beinvalid. See In re Ratny, 24 USPQ2d 1713 (Comm’rPat. 1992). Once a document is recorded with theAssignment Services Division, the AssignmentServices Division will not remove the papers fromthe record relating to that application or patent. SeeMPEP § 323.01(d).

323.01 Correction of Error in RecordedCover Sheet [R-08.2012]

37 CFR 3.34 Correction of cover sheet errors.

(a) An error in a cover sheet recorded pursuant to § 3.11will be corrected only if:

(1) The error is apparent when the cover sheet iscompared 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 acopy of the document originally submitted for recording and bythe recording fee as set forth in § 3.41.

Any alleged error in a recorded cover sheet will onlybe corrected if the error is apparent from acomparison with the recorded assignment document.The corrected cover sheet should be directed toAssignment Division.

During the recording process, the AssignmentServices Division will check to see that a cover sheetis complete and record the data exactly as it appearson the cover sheet. The Assignment ServicesDivision does not compare the cover sheet with theassignment document (or other document affecting

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MANUAL OF PATENT EXAMINING PROCEDURE§ 321-322

title). Once the document is recorded, the Office willissue a notice of recordation.

The party recording the document should carefullyreview the notice of recordation.

Typographical errors made by the Office will becorrected promptly and without charge upon writtenrequest directed to the Assignment Services Division.For any other error, the party recording the documentis responsible for filing the papers and paying therecordation fees necessary to correct the error, usingthe procedures set forth in MPEP §§ 323.01(a)through 323.01(c).

323.01(a) Typographical Errors in CoverSheet [R-08.2012]

A party who wishes to correct a typographical erroron a recorded cover sheet must submit the followingto the Assignment Services Division:

(A) a copy of the originally recorded assignmentdocument (or other document affecting title);

(B) a corrected cover sheet; and

(C) the required fee for each application orpatent to be corrected (37 CFR 3.41).

See 37 CFR 3.34. The party requesting correctionshould also submit a copy of the original cover sheet,to facilitate comparison of the corrected cover sheetwith the originally recorded document.

The party filing the corrected cover sheet shouldcheck the box titled “Other” in the area of the sheetrequesting “Nature of Conveyance,” and indicatethat the submission is to correct an error in a coversheet previously recorded. The party should alsoidentify the reel and frame numbers (if known), andthe nature of the correction (e.g., “correction to thespelling of assignor’s name” or “correction ofapplication number or patent number”). The Officewill then compare the corrected cover sheet with theoriginal cover sheet and the originally recordedassignment document (or other document affectingtitle) to determine whether the correction istypographical in nature. If the error is typographicalin nature, the Assignment Services Division will

record the corrected cover sheet and correct theAssignment Historical Database.

I. TYPOGRAPHICAL ERRORS IN COVER SHEETTHAT DO NOT AFFECT TITLE TO APPLICATIONOR PATENT

If the original cover sheet contains a typographicalerror that does not affect title to the application orpatent against which the original assignment or namechange is recorded, the Assignment ServicesDivision will correct the Assignment HistoricalDatabase and permit the recording party to keep theoriginal date of recordation.

II. TYPOGRAPHICAL ERRORS IN COVER SHEETTHAT DO AFFECT TITLE TO APPLICATION ORPATENT

If the original cover sheet contains a typographicalerror that affects title to the application or patentagainst which the assignment or name change isrecorded, the recording party will not be entitled tokeep the original date of recordation. Rather, theAssignment Services Division will correct itsautomated records and change the date of recordationto the date the corrected cover sheet was receivedin the Office.

323.01(b) Typographical Errors in RecordedAssignment Document [R-08.2012]

If there is an error in the recorded assignmentdocument (or other document affecting title) ratherthan in the cover sheet, the party responsible for anerroneous document (e.g., the assignor) must eithercreate and record a new document or makecorrections to the original document and re-recordit. If an assignor is not available to correct an originaldocument or execute a new one, the assignee maysubmit an affidavit or declaration in which theassignee identifies the error and requests correction.The affidavit or declaration must be accompaniedby a copy of the originally recorded papers, a coversheet, and the required fee for each application orpatent to be corrected (37 CFR 3.41). See In reAbacab International Computers Ltd., 21 USPQ2d1078 (Comm’r Pat. 1987).

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§ 323.01(b)OWNERSHIP AND ASSIGNMENT

323.01(c) Assignment or Change of NameImproperly Filed and Recorded by AnotherPerson Against Owner’s Application orPatent [R-07.2015]

When the owner of an application or registrationdiscovers that another party has improperly recordedan assignment or name change against the owner’sapplication or patent, the owner must correct theerror by having a corrected cover sheet filed withthe Assignment Services Division.

The owner should contact the party who recordedthe papers with the erroneous information andrequest that such party record corrective papers.However, if the party cannot be located or isunwilling to file corrective papers, then the trueowner must record the necessary papers with theAssignment Services Division to correct the error.

Specifically, the owner should submit the followingto the Assignment Services Division:

(A) a completed cover sheet identifying theapplication or patent against which the assignmentwas improperly recorded;

(B) an affidavit or declaration (1) identifyingitself as the correct owner, (2) stating that thepreviously recorded document was submitted witherroneous information, and (3) providing the reeland frame number of the previously recordeddocument; and

(C) the required fee (37 CFR 3.41) for eachapplication or patent to be corrected.

The affidavit or declaration should include asummary of the true chain of title to make it clearthat the chain of title for the application or patentidentified should not be considered altered by theincorrect assignment or name change, and astatement that the original applicant or patentee orlast 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 checkthe box titled “Other” in the area of the cover sheetrequesting the “Nature of Conveyance,” and indicatethat the submission is to correct an error made in apreviously recorded document that erroneously

affects the identified application(s), or patent(s). Theparty should also write the name of the correct ownerin both the box requesting the name of the conveyingparty and the box requesting the name and addressof the receiving party; this is to make it clear thatownership never changed and that any assignmentor name change recorded against the application(s)or patent(s) was erroneous.

323.01(d) Expungement of AssignmentRecords [R-07.2015]

Petitions to correct, modify or “expunge” assignmentrecords are rarely granted and will not result in theremoval of a document from the assignment records.Such petitions are granted only if the petitioner canprove that:

(A) the normal corrective procedures outlinedin MPEP § 323.01(a) through § 323.01(c) will notprovide the petitioner with adequate relief; and

(B) the integrity of the assignment records willnot be affected by granting the petition.

Assignment records are recognized as distinct fromapplication file records. Even if a petition to“expunge” a document is granted with respect to aparticular application or patent, the image of therecorded document will remain in the records of theAssignment Services Division at the same reel andframe number, and the image will appear whensomeone views that reel and frame number. TheOffice will, however, delete the links to theapplication or patent that was the subject of thepetition, so that no information about the recordeddocument will appear when someone searches forthat application or patent number in the AssignmentHistorical Database. A redacted version of the"expunged" document must be recorded and willappear in the assignment records instead of the"expunged" document upon the granting of thepetition. An additional assignment of the “correct”document may be recorded in addition to theredacted version where the redacted version isincomplete or the original document was not correct.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 323.01(c)

324 Establishing Right of Assignee To TakeAction in Application Filed Before September16, 2012 [R-07.2015]

[Editor Note: See MPEP § 325 for establishing theright of assignee to take action in an applicationfiled on or after September 16, 2012.]

37 CFR 3.71 (pre-AIA) Prosecution by assignee.

[Editor Note: Not applicable to applications filed under 35U.S.C. 111(a), 363 or 385 on or after September 16, 2012. See37 CFR 3.71 for the rule otherwise applicable.]

(a) Patents — conducting of prosecution. One or moreassignees as defined in paragraph (b) of this section may, afterbecoming of record pursuant to paragraph (c) of this section,conduct prosecution of a national patent application or areexamination proceeding to the exclusion of either the inventiveentity, or the assignee(s) previously entitled to conductprosecution.

(b) Patents — assignee(s) who can prosecute. Theassignee(s) who may conduct either the prosecution of a nationalapplication 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 reexaminedwho is of record, or

(2) Partial assignee(s) together or with inventor(s).All partial assignees, or all partial assignees and inventors whohave not assigned their right, title and interest in the applicationor 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 theentire right, title and interest in the application or patent beingreexamined.

(c) Patents — Becoming of record. An assignee becomesof record either in a national patent application or areexamination proceeding by filing a statement in compliancewith § 3.73(b) that is signed by a party who is authorized to acton behalf of the assignee.

(d) Trademarks. The assignee of a trademark applicationor registration may prosecute a trademark application, submitdocuments to maintain a trademark registration, or file papersagainst a third party in reliance on the assignee’s trademarkapplication or registration, to the exclusion of the originalapplicant or previous assignee. The assignee must establishownership in compliance with § 3.73(b).

37 CFR 3.73 (pre-AIA) Establishing right of assignee to takeaction.

[Editor Note: Not applicable to applications filed under 35U.S.C. 111(a), 363, or 385 on or after September 16, 2012. See37 CFR 3.73 for the rule otherwise applicable.]

(a) The inventor is presumed to be the owner of a patentapplication, and any patent that may issue therefrom, unlessthere is an assignment. The original applicant is presumed to be

the owner of a trademark application or registration, unless thereis an assignment.

(b)(1) In order to request or take action in a patent ortrademark matter, the assignee must establish its ownership ofthe patent or trademark property of paragraph (a) of this sectionto the satisfaction of the Director. The establishment ofownership by the assignee may be combined with the paper thatrequests or takes the action. Ownership is established bysubmitting to the Office a signed statement identifying theassignee, accompanied by either:

(i) Documentary evidence of a chain of title fromthe original owner to the assignee (e.g., copy of an executedassignment). For trademark matters only, the documentssubmitted to establish ownership may be required to be recordedpursuant to § 3.11 in the assignment records of the Office as acondition to permitting the assignee to take action in a matterpending before the Office. For patent matters only, thesubmission of the documentary evidence must be accompaniedby a statement affirming that the documentary evidence of thechain of title from the original owner to the assignee was orconcurrently is being submitted for recordation pursuant to §3.11; or

(ii) A statement specifying where documentaryevidence of a chain of title from the original owner to theassignee is recorded in the assignment records of the Office(e.g., reel and frame number).

(2) The submission establishing ownership must showthat the person signing the submission is a person authorized toact on behalf of the assignee by:

(i) Including a statement that the person signingthe submission is authorized to act on behalf of the assignee; or

(ii) Being signed by a person having apparentauthority to sign on behalf of the assignee, e.g., an officer of theassignee.

(c) For patent matters only:

(1) Establishment of ownership by the assignee mustbe submitted prior to, or at the same time as, the paper requestingor taking action is submitted.

(2) If the submission under this section is by anassignee of less than the entire right, title and interest, suchassignee must indicate the extent (by percentage) of itsownership interest, or the Office may refuse to accept thesubmission as an establishment of ownership.

The owner or assignee (other than a juristic entity)of a patent property based on an application filedbefore September 16, 2012, can take action in apatent application or patent proceeding in numerousinstances. The owner or assignee can sign a reply toan Office action (pre-AIA 37 CFR 1.33(b)(3) and(4)), a request for a continued prosecutionapplication under 37 CFR 1.53(d) (MPEP §201.06(d)), a terminal disclaimer (MPEP § 1490),Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or

Rev. 07.2015, October 2015300-25


a request for status of an application (MPEP § 102).The owner or assignee can file an application underpre-AIA 37 CFR 1.47(b) (MPEP § 409.03(b)),appoint its own registered patent practitioner toprosecute an application (pre-AIA 37 CFR 1.32 andMPEP § 402.07), and grant a power to inspect anapplication (MPEP § 104). The owner or assigneeconsents 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 assigneewho is a juristic entity must be represented by apatent practitioner. See 37 CFR 1.31. Juristic entitiesmay 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 toestablish ownership, powers of attorney under 37CFR 1.32 (MPEP § 402) and powers to inspect under37 CFR 1.14 (MPEP § 104). However, any otherpaper submitted on behalf of a juristic entity on orafter September 16, 2012, must be signed by a patentpractitioner.

See subsection VI below for a discussion of whenownership must be established to take action in apatent matter, and subsection VII below for adiscussion of when ownership need not beestablished to sign certain papers.

I. THE ASSIGNEE/OWNER THAT CAN TAKEACTION IN PATENT MATTERS

The provisions of pre-AIA 37 CFR 3.71(b)(1) and(2)identify the owner or assignee that can take actionin patent matters, e.g., the assignee which mayconduct the prosecution of a U.S. nationalapplication for a patent (35 U.S.C. 111(a)), or anyother patent proceeding (e.g., a reexaminationproceeding, an interference proceeding). A nationalpatent application is owned by one of the followingindividual or composite entities:

(A) the inventor(s);

(B) an assignee or multiple assignees of theinventor(s); or

(C) some combination of the assignee(s), andinventor(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 mustbe established as the assignee by satisfying therequirements of that subsection, in order to berecognized as an owner or part owner, for purposesof taking action in patent matters before the Office.

As discussed in subsection II below, all partieshaving any portion of the ownership must join in“taking action” (i.e., act together as a compositeentity) in order to be entitled to conduct theprosecution in patent matters.

A. Individual and Partial Assignees

If there is a single assignee of the entire right, titleand interest in the patent application, pre-AIA 37CFR 3.71(b)(1) provides that the single assignee(i.e., individual assignee) may act alone to conductthe prosecution of an application or other patentproceeding (upon complying with pre-AIA 37 CFR3.73(b)).

If there is no assignee of the entire right, title andinterest of the patent application, then twopossibilities exist:

(A) The application has not been assigned, andownership resides solely in the inventor(s) (i.e., theapplicant(s)). In this situation, pre-AIA 37 CFR 3.71does not apply, since there is no assignee, and thecombination of all inventors is needed to conductthe prosecution of an application.

(B) The application has been assigned by at leastone of the inventors, and there is thus at least one“partial assignee.” As defined in pre-AIA 37 CFR3.71(b)(2), a partial assignee is any assignee ofrecord who has less than the entire right, title andinterest in the application. The application is ownedby the combination of all partial assignees and allinventors who have not assigned away their right,title and interest in the application.

Where at least one inventor retains an ownershipinterest together with the partial assignee(s), thecombination of all partial assignees and inventorsretaining ownership interest is needed to conductthe prosecution of an application, unless one or moreinventors have refused to join in the filing of theapplication and a petition under pre-AIA 37 CFR1.47 has been granted. If a petition under pre-AIA

300-26Rev. 07.2015, October 2015


37 CFR 1.47 has been granted, then the assigneeneed only be the assignee of the entire interest of thepre-AIA 37 CFR 1.47 applicant to sign a power ofattorney. See pre-AIA 37 CFR 1.32(b)(4). Wherean applicant retains an ownership interest, thecombination of all partial assignees and the applicantwith the ownership interest is needed to conduct theprosecution of an application.

Where a reissue application is filed to correctinventorship in the patent by the deletion of the nameof inventor X and inventor X has not assigned his/herrights to the patent, inventor X has an ownershipinterest in the patent. Inventor X must consent to thefiling of the reissue application, even though inventorX is being deleted and need not sign the reissue oathor declaration. If inventor X has assigned his/herrights to the patent, then inventor X’s assignee mustconsent to the filing of the reissue application.

B. Example

Inventors A and B invent a process and file theirapplication, signing the declaration for the patentapplication. Inventors A and B together may conductprosecution of the application. Inventor A thenassigns all his/her rights in the application toCorporation X. As soon as Corporation X (now apartial assignee as per pre-AIA 37 CFR 3.71(b)(2))is made of record in the application as a partialassignee (by filing a statement pursuant to pre-AIA37 CFR 3.73(b) stating Corporation X is an assigneeof an undivided interest in the entirety of theapplication), Corporation X and Inventor B togethermay conduct prosecution of the application.Corporation X and Inventor B then both assign theirrights in the application to Corporation Y. As soonas Corporation Y (now an assignee of the entireright, title and interest) is made of record in theapplication as the assignee (by filing a statementpursuant to pre-AIA 37 CFR 3.73(b) stating it isassignee of the entire right, title and interest),Corporation Y is then the sole (one hundred percent)owner and thus may, by itself, conduct prosecutionof the application.

II. ESTABLISHING OWNERSHIP

When an assignee first seeks to take action in amatter before the Office with respect to a patent

application filed before September 16, 2012, or awith respect to a patent or a reexaminationproceeding relating to a patent that issued from anapplication that was filed before September 16, 2012,the assignee must establish its ownership of theproperty to the satisfaction of the Director. Pre-AIA37 CFR 3.73(b). The assignee’s ownership may beestablished under pre-AIA 37 CFR 3.73(b) bysubmitting to the Office, in the Office file related tothe matter in which action is sought to be taken:

(A) documentary evidence of a chain of titlefrom the original owner to the assignee (e.g., copyof an executed assignment submitted for recording)and a statement affirming that the documentaryevidence of the chain of title from the original ownerto the assignee was, or concurrently is, submittedfor recordation pursuant to 37 CFR 3.11; or

(B) a statement specifying, by reel and framenumber, where such evidence is recorded in theOffice.

Documents submitted to establish ownership arerequired to be recorded, or submitted for recordationpursuant to 37 CFR 3.11, as a condition to permittingthe assignee to take action in a matter pending beforethe Office.

The action taken by the assignee, and the pre-AIA37 CFR 3.73(b) submission establishing that theassignee is the appropriate assignee to take suchaction, can be combined in one paper.

The establishment of ownership by the assignee mustbe submitted prior to, or at the same time as, thepaper requesting or taking action is submitted.Pre-AIA 37 CFR 3.73(c). If the submissionestablishing ownership is not present, the actionsought to be taken will not be given effect. If thesubmission establishing ownership is submitted ata later date, that date will be the date of the requestfor action or the date of the assignee’s action taken.

The submission establishing ownership by theassignee must be signed by a party who is authorizedto act on behalf of the assignee. See discussionbelow. Once pre-AIA 37 CFR 3.73(b) is compliedwith by an assignee, that assignee may continue totake action in that application, patent, orreexamination proceeding without filing a pre-AIA

Rev. 07.2015, October 2015300-27


37 CFR 3.73(b) submission each time, provided thatownership has not changed.

The submission establishing ownership by theassignee pursuant to pre-AIA 37 CFR 3.73(b) isgenerally referred to as the “statement under 37 CFR3.73(b)” or the “37 CFR 3.73(b) statement.” Aduplicate copy of the pre-AIA 37 CFR 3.73(b)statement is not required and should not besubmitted. See 37 CFR 1.4(b) and MPEP § 502.04.

III. CONTINUING APPLICATIONS

When an assignee files a continuation or divisionalapplication under 37 CFR 1.53(b) before September16, 2012, the application papers must:

(A) contain a copy of a statement filed underpre-AIA 37 CFR 3.73(b) in the parent application;or

(B) contain a newly executed statement underpre-AIA 37 CFR 3.73(b).

When a continuation-in-part application is filedbefore September 16, 2012 by an assignee, a newlyexecuted statement under pre-AIA 37 CFR 3.73(b)must be filed. When in a design application, acontinued prosecution application (CPA) under37 CFR 1.53(d) is filed, the statement filed under37 CFR 3.73(b) in the parent application will serveas the statement for the CPA.

IV. REQUESTS FOR CONTINUED EXAMINATION

Where a Request for Continued Examination of anapplication is filed under 37 CFR 1.114, theapplication is not considered to be abandoned; ratherthe finality of the Office action is withdrawn and theprosecution continues. Thus, the statement underpre-AIA 37 CFR 3.73(b) in the application willcontinue to serve as the statement establishingownership.

V. PARTY WHO MUST SIGN

The submission establishing ownership must besigned by a party authorized to act on behalf of theassignee. The submission under pre-AIA 37 CFR3.73(b) may be signed on behalf of the assignee inthe following manner if the assignee is an

organization (e.g., corporation, partnership,university, government agency, etc.):

(A) The submission may be signed by a personin the organization having apparent authority to signon behalf of the organization. Pre-AIA 37 CFR3.73(b)(2)(ii). An officer (chief executive officer,president, vice-president, secretary, or treasurer) ispresumed to have authority to sign on behalf of theorganization. The signature of the chairman of theboard of directors is acceptable, but not the signatureof an individual director. Modifications of thesebasic titles are acceptable, such as vice-president forsales, executive vice-president, assistant treasurer,vice-chairman of the board of directors. In foreigncountries, a person who holds the title “Manager”or “Director” is normally an officer and is presumedto have the authority to sign on behalf of theorganization. A person having a title (administrator,general counsel) that does not clearly set forth thatperson as an officer of the assignee is not presumedto have authority to sign the submission on behalfof the assignee. A power of attorney (pre-AIA 37CFR 1.32(b)(4)) to a patent practitioner to prosecutea patent application executed by the applicant or theassignee of the entire interest does not make thatpractitioner an official of an assignee or empowerthe practitioner to sign the submission on behalf ofthe assignee.

(B) The submission may be signed by anyperson, if the submission sets forth that the personsigning is authorized (or empowered) to act on behalfof the assignee, i.e., to sign the submission on behalfof the assignee. Pre-AIA 37 CFR 3.73(b)(2)(i).

(C) The submission may be signed by a personempowered by an organizational resolution (e.g.,corporate resolution, partnership resolution) to signthe submission on behalf of the assignee, if a copyof the resolution is, or was previously, submitted inthe record.

Where a submission does not comply with (A), (B),or (C) above, evidence of the person’s authority tosign will be required.

VI. WHEN OWNERSHIP MUST BE ESTABLISHED

Examples of situations where ownership must beestablished under pre-AIA 37 CFR 3.73(b) are whenthe assignee: signs a request for status of an

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application or gives a power to inspect an application(MPEP §§ 102 and 104); appoints its own registeredattorney or agent to prosecute an application(pre-AIA 37 CFR 3.71 and MPEP § 402.07); signsa disclaimer under 37 CFR 1.321 (MPEP § 1490);consents to the filing of a reissue application (MPEP§ 1410.01); consents to the correction of inventorshipin a patent (MPEP § 1481); or signs a Fee(s)Transmittal (PTOL-85B) (MPEP § 1306). EffectiveSeptember 16, 2012, a juristic entity (e.g.,organizational assignee) must be represented by apatent practitioner. See 37 CFR 1.31.

VII. WHEN OWNERSHIP NEED NOT BEESTABLISHED

Examples of situations where ownership need notbe established under pre-AIA 37 CFR 3.73(b) arewhen the assignee: signs a small entity statement(MPEP § 509.03); signs a statement of commonownership of two inventions (MPEP § 706.02(l)(2));signs a NASA or DOE property rights statement(MPEP § 151); signs an affidavit under 37 CFR1.131(a) where the inventor is unavailable (MPEP§ 715.04); signs a certificate under 37 CFR 1.8(MPEP § 512); or files a request for reexaminationof a patent under 37 CFR 1.510 (MPEP § 2210).

VIII. MULTIPLE ASSIGNEES

When an assignee seeks to take action in a matterbefore the Office with respect to a patent application,patent, or reexamination proceeding and the right,title, and interest therein is held by more than oneassignee, each partial assignee must provide asubmission under pre-AIA 37 CFR 3.73(b). In eachsubmission, the extent of each assignee’s interest

must be set forth so that the Office can determinewhether it has obtained action by the entirety of theright, title and interest holders (owners). Pre-AIA37 CFR 3.73(c)(2). If the extent of the partialassignee’s ownership interest is not set forth in thesubmission under pre-AIA 37 CFR 3.73(b), theOffice may refuse to accept the submission as anestablishment of ownership interest.

IX. CONFLICTING PRE-AIA 37 CFR 3.73(b)STATEMENTS

Where there are two or more conflicting pre-AIA37 CFR 3.73(b) statements in an application or otherOffice proceeding, the statement with the latest dateof submission to the Office will normally control asto establishment of the assignee. If, however, theownership established as controlling is contested onthe record by another party who has submitted aconflicting pre-AIA 37 CFR 3.73(b) statement, thenthe application or other proceeding shall beforwarded by the Office official in charge of theapplication or other proceeding to the Office ofPatent Legal Administration for resolving anyprocedural issues. Generally, where there are two ormore conflicting pre-AIA 37 CFR 3.73(b) statementsin an application, the ownership entity that filed thatapplication will be permitted to conduct theprosecution, and the other party that submitted apre-AIA 37 CFR 3.73(b) statement to establish itsownership may wish to consider filing its ownapplication.

X. FORMS

Form PTO/SB/96 may be used to establishownership under pre-AIA 37 CFR 3.73(b).

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325 Establishing Right of Assignee To TakeAction in Application Filed On or AfterSeptember 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 324 for establishing theright of assignee to take action in an applicationfiled before September 16, 2012.]

37 CFR 3.71 Prosecution by assignee.

[Editor Note: Applicable to patent applications under 35 U.S.C.111(a), 363, or 385 on or after September 16, 2012. See pre-AIA37 CFR 3.71 for the rule otherwise applicable.]

(a) Patents—conducting of prosecution. One or moreassignees as defined in paragraph (b) of this section may conductprosecution of a national patent application as the applicantunder § 1.46 of this title, or conduct prosecution of asupplemental examination or reexamination proceeding, to theexclusion of the inventor or previous applicant or patent owner.Conflicts between purported assignees are handled in accordancewith § 3.73(c)(3).

(b) Patents—assignee(s) who can prosecute. Theassignee(s) who may conduct either the prosecution of a nationalapplication for patent as the applicant under § 1.46 of this titleor a supplemental examination or reexamination proceedingare:

(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 whohave not assigned their right, title and interest in the applicationor patent, who together own the entire right, title and interest inthe application or patent. A partial assignee is any assignee ofrecord having less than the entire right, title and interest in theapplication or patent. The word "assignee" as used in this chaptermeans with respect to patent matters the single assignee of theentire right, title and interest in the application or patent if thereis such a single assignee, or all of the partial assignees, or all ofthe partial assignee and inventors who have not assigned theirinterest in the application or patent, who together own the entireright, title and interest in the application or patent.

(c) Patents—Becoming of record. An assignee becomesof record as the applicant in a national patent application under§ 1.46 of this title, and in a supplemental examination orreexamination proceeding, by filing a statement in compliancewith § 3.73(c) that is signed by a party who is authorized to acton behalf of the assignee.

(d) Trademarks. The assignee of a trademark applicationor registration may prosecute a trademark application, submitdocuments to maintain a trademark registration, or file papersagainst a third party in reliance on the assignee’s trademarkapplication or registration, to the exclusion of the originalapplicant or previous assignee. The assignee must establishownership in compliance with § 3.73(b).

37 CFR 3.73 Establishing right of assignee to take action.

[Editor Note: Applicable to patent applications filed under 35U.S.C. 111(a), 363 or 385 on or after September 16, 2012. Seepre-AIA 37 CFR 3.73 for the rule otherwise applicable.]

(a) The original applicant is presumed to be the owner ofan application for an original patent, and any patent that mayissue therefrom, unless there is an assignment. The originalapplicant is presumed to be the owner of a trademark applicationor 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 trademarkproperty of paragraph (a) of this section to the satisfaction ofthe Director. The establishment of ownership by the assigneemay be combined with the paper that requests or takes the action.Ownership is established by submitting to the Office a signedstatement identifying the assignee, accompanied by either:

(1) Documentary evidence of a chain of title from theoriginal owner to the assignee (e.g., copy of an executedassignment). The documents submitted to establish ownershipmay be required to be recorded pursuant to § 3.11 in theassignment records of the Office as a condition to permittingthe assignee to take action in a matter pending before the Office;or

(2) A statement specifying where documentaryevidence of a chain of title from the original owner to theassignee 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 patentmatter, an assignee who is not the original applicant mustestablish its ownership of the patent property of paragraph (a)of this section to the satisfaction of the Director. Theestablishment of ownership by the assignee may be combinedwith the paper that requests or takes the action. Ownership isestablished by submitting to the Office a signed statementidentifying the assignee, accompanied by either:

(i) Documentary evidence of a chain of title fromthe original owner to the assignee (e.g., copy of an executedassignment). The submission of the documentary evidence mustbe accompanied by a statement affirming that the documentaryevidence of the chain of title from the original owner to theassignee was or concurrently is being submitted for recordationpursuant to § 3.11; or

(ii) A statement specifying where documentaryevidence of a chain of title from the original owner to theassignee 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 theentire right, title and interest (e.g., more than one assignee exists)the Office may refuse to accept the submission as anestablishment of ownership unless:

(i) Each assignee establishes the extent (bypercentage) of its ownership interest, so as to account for theentire right, title and interest in the application or patent by allparties including inventors; or

(ii) Each assignee submits a statement identifyingthe parties including inventors who together own the entire right,title and interest and stating that all the identified parties ownthe entire right, title and interest.

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(3) If two or more purported assignees file conflictingstatements under paragraph (c)(1) of this section, the Directorwill determine which, if any, purported assignee will bepermitted 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 thesubmission is a person authorized to act on behalf of the assigneeby:

(1) Including a statement that the person signing thesubmission is authorized to act on behalf of the assignee;

(2) Being signed by a person having apparent authorityto sign on behalf of the assignee; or

(3) For patent matters only, being signed by apractitioner of record.

The owner or assignee of a patent property can takeaction in a patent application as the applicant.However, an owner or assignee that is a juristicentity 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 mustbecome the applicant under 37 CFR 1.46(a) in orderto request or take action in a patent application. Arequest to change the applicant under 37 CFR1.46(c)(2) must be filed and must be accompaniedby an application data sheet under 37 CFR 1.76specifying the applicant in the applicant informationsection and comply with 37 CFR 3.71 and 37 CFR3.73.

As the applicant, the owner or assignee that is not ajuristic entity can sign a reply to an Office action(37 CFR 1.33(b)(3)), a request for a continuedprosecution application under 37 CFR 1.53(d)(MPEP § 201.06(d)), a disclaimer under 37 CFR1.321 (MPEP § 1490), Fee(s) Transmittal(PTOL-85B) (MPEP § 1306), or a request for statusof an application (MPEP § 102). The owner orassignee can file an application under 37 CFR 1.46,appoint its own registered patent practitioner toprosecute an application (37 CFR 1.32), and granta power to inspect an application (MPEP § 104).The owner or assignee can consent to the filing of areissue application (MPEP § 1410.01), and to thecorrection of inventorship (MPEP § 602.01(c) orMPEP § 1481).

Effective September 16, 2012, juristic entities maysign 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 toestablish ownership, powers of attorney under 37CFR 1.32 (MPEP § 402) and powers to inspect under37 CFR 1.14 (MPEP § 104). However, any otherpaper submitted on behalf of a juristic entity on orafter September 16, 2012, must be signed by a patentpractitioner.

See subsection VI below for a discussion of whenownership must be established to take action in apatent matter, and subsection VII below for adiscussion of when ownership need not beestablished to sign certain papers.

I. THE ASSIGNEE/OWNER THAT CAN TAKEACTION IN PATENT MATTERS

The original applicant is presumed to be the ownerof an application for an original patent, and anypatent that may issue therefrom, unless there is anassignment. 37 CFR 3.73(a).

The provisions of 37 CFR 3.71(b) provide that theassignee(s) who may conduct either the prosecutionof a national application for patent as the applicantunder 37 CFR 1.46 or a supplemental examinationor reexamination proceeding are:

(1) a single assignee who is the assignee of theentire right, title and interest in the application orpatent, or

(2) all partial assignees, or all partial assigneesand inventors who have not assigned their right, titleand interest in the application or patent, who togetherown the entire right, title and interest in theapplication or patent.

As discussed in subsection II below, all partieshaving any portion of the ownership must join in“taking action” (i.e., act together as a compositeentity) in order to be entitled to conduct theprosecution in patent matters. For a discussion ofthe applicant for patent, see MPEP § 409 et seq. and§ 605 et seq.

A. Individual and Partial Assignees

If there is a single assignee of the entire right, titleand interest in the patent application, 37 CFR3.71(b)(1) provides that the single assignee (i.e.,

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individual assignee) may act alone to conduct theprosecution of an application or other patentproceeding. If the assignee is not already theapplicant under 37 CFR 1.46 in the patentapplication, then the assignee must file a request tochange the applicant under 37 CFR 1.46(c)(2).

If there is no assignee of the entire right, title andinterest of the patent application, then either:

(1) The application has not been assigned, 37CFR 3.71 is not applicable, and the prosecution mustbe conducted by the applicant. The word "applicant"refers to the inventor or all of the joint inventors, orto the person applying for a patent as provided in 37CFR 1.43, 1.45, or 1.46. See MPEP § 409 et seq.and § 605 et seq.

(2) The application has been assigned by at leastone of the inventors, and there is thus at least one“partial assignee.” As defined in 37 CFR 3.71(b)(2),a partial assignee is any assignee of record who hasless than the entire right, title and interest in theapplication. The application is owned by thecombination of all partial assignees and all inventorswho have not assigned away their right, title andinterest in the application.

Where at least one inventor retains an ownershipinterest together with the partial assignee(s), thecombination of all partial assignees and inventorsretaining ownership interest is needed to conductthe prosecution of an application, unless one or moreinventors have refused to join in the filing of theapplication and a petition under 37 CFR 1.46(b)(2)has been granted.

Where a reissue application is filed to correctinventorship in the patent by the deletion of the nameof inventor X and inventor X has not assigned his/herrights to the patent, inventor X has an ownershipinterest in the patent. Inventor X must consent to thefiling of the reissue application, even though inventorX is being deleted; however, inventor X need notsign the reissue oath or declaration. If inventor Xhas assigned his/her rights to the patent, theninventor X’s assignee must consent to the filing ofthe reissue application.

B. Example

Inventors A and B invent a process and file a patentapplication as the applicant, naming both inventors.Inventors A and B together may conduct prosecutionof the application.

Inventor A then assigns all his/her rights in theapplication to Corporation X. Corporation X andInventor B together may conduct prosecution of theapplication only if Corporation X (now a partialassignee as per 37 CFR 3.71(b)(2)) is made of recordin the application as a partial assignee and theapplicant is changed under 37 CFR 1.46(c)(2) toCorporation X and Inventor B. Pursuant to 37 CFR1.46(c)(2), an application data sheet must be filedspecifying the applicant (i.e., Corporation X andInventor B) in the applicant information section, anda statement pursuant to 37 CFR 3.73(c) must be filedestablishing that Corporation X is an assignee of anundivided interest in the entirety of the application.

Corporation X and Inventor B then both assign theirrights in the application to Corporation Y.Corporation Y is then the sole (one hundred percent)owner and may, by itself, conduct prosecution of theapplication after Corporation Y (now an assignee ofthe entire right, title and interest) is made of recordin the application as the applicant (by filing a requestto change the applicant under 37 CFR 1.46(c)(2), anapplication data sheet pursuant to 37 CFR 1.76specifying the applicant as Corporation Y, and astatement pursuant to 37 CFR 3.73(c) establishingthat Corporation Y is assignee of the entire right,title and interest).

II. ESTABLISHING OWNERSHIP

An assignee who is not the original applicant mustbecome the applicant under 37 CFR 1.46 in order torequest or take action in a patent application. Whenan assignee who is not the original applicant firstseeks to take action in a matter before the Officewith respect to a patent application filed on or afterSeptember 16, 2012, the assignee must establish itsownership of the property to the satisfaction of theDirector. 37 CFR 3.73(c). The assignee must alsofile a request to change the applicant under 37 CFR1.46(c)(2) and an application data sheet under 37CFR 1.76 specifying the applicant in the application

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information section. When an assignee who was notthe original applicant or patent owner first seeks totake action in a matter before the Office with respectto a reissue patent application, patent, reexaminationproceeding or supplemental examination proceedingfor a patent that issued from an application filed onor after September 16, 2012, the assignee mustestablish its ownership of the property to thesatisfaction of the Director. 37 CFR 3.73(c).

The statement establishing assignee’s ownershipunder 37 CFR 3.73(c) must be filed in the Officefile related to the matter in which action is soughtto be taken, and must contain:

(A) documentary evidence of a chain of titlefrom the original owner to the assignee (e.g., copyof an executed assignment submitted for recording)and a statement affirming that the documentaryevidence of the chain of title from the original ownerto the assignee was, or concurrently is, submittedfor recordation pursuant to 37 CFR 3.11; or

(B) a statement specifying, by reel and framenumber, where such evidence is recorded in theOffice.

Documents submitted to establish ownership arerequired to be recorded, or submitted for recordationpursuant to 37 CFR 3.11, as a condition to permittingthe assignee to take action in a matter pending beforethe Office.

The action taken by the assignee, and the 37 CFR3.73(c) submission establishing that the assignee isthe appropriate assignee to take such action, can becombined in one paper.

The establishment of ownership by the assignee (andthe request for change of applicant under 37 CFR1.46(c)(2)) must be submitted prior to, or at the sametime as, the paper requesting or taking action issubmitted. 37 CFR 3.73(c). If the submissionestablishing ownership and the request for changeof applicant are not present, the action sought to betaken will not be given effect. If the submissionestablishing ownership is submitted at a later date,that date will be the date of the request for action orthe date of the assignee’s action taken.

The submission establishing ownership by theassignee must be signed by a party who is authorizedto act on behalf of the assignee or a patentpractitioner of record. See discussion below. Once37 CFR 3.73(c) is complied with by an assignee,that assignee may continue to take action in thatapplication, patent, or reexamination proceedingwithout filing a 37 CFR 3.73(c) submission eachtime, provided that ownership has not changed.

Where there is more than one assignee (i.e., partialassignees) or a combination of partial assignees andinventors who have not assigned away their right,title and interest in the application, each owner mustsubmit a statement under 37 CFR 3.73(c) that either:

(A) Specifies (by percentage) the extent of itsownership interest, so as to account for the entireright, title and interest in the application or patentby all parties. 37 CFR 3.73(c)(2)(i); or

(B) Identifies the parties including inventorswho together own the entire right, title and interestand state that all the identified parties own the entireright, title and interest. 37 CFR 3.73(c)(2)(ii).

The submission establishing ownership by theassignee pursuant to 37 CFR 3.73(c) is generallyreferred to as the “statement under 37 CFR 3.73(c)”or the “37 CFR 3.73(c) statement.” A duplicate copyof the 37 CFR 3.73(c) statement is not required andshould not be submitted. See 37 CFR 1.4(b)andMPEP § 502.04.

III. CONTINUING APPLICATIONS

When an assignee files a continuing applicationunder 37 CFR 1.53(b), the application papers must:

(A) contain a copy of a statement filed underpre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c)in the parent application; or

(B) contain a newly executed statement under37 CFR 3.73(c).

When a CPA under 37 CFR 1.53(d) is filed in adesign application, the statement filed under pre-AIA37 CFR 3.73(b) or under 37 CFR 3.73(c) in theparent application will serve as the statement for theCPA.

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IV. REQUESTS FOR CONTINUED EXAMINATION

Where a Request for Continued Examination (RCE)of an application is filed under 37 CFR 1.114, theapplication is not considered to be abandoned; ratherthe finality of the Office action is withdrawn and theprosecution continues. Thus, the statement underpre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c)in the application will continue to serve as thestatement establishing ownership.

V. PARTY WHO MUST SIGN

The submission establishing ownership must besigned by a party authorized to act on behalf of theassignee. The submission under 37 CFR 3.73(c) maybe signed on behalf of the assignee in the followingmanner if the assignee is an organization (e.g.,corporation, partnership, university, governmentagency, etc.):

(A) The submission may be signed by a personin the organization having apparent authority to signon behalf of the organization. 37 CFR 3.73(d)(2).An officer (chief executive officer, president,vice-president, secretary, or treasurer) is presumedto have authority to sign on behalf of theorganization. The signature of the chairman of theboard of directors is acceptable, but not the signatureof an individual director. Modifications of thesebasic titles are acceptable, such as vice-president forsales, executive vice-president, assistant treasurer,vice-chairman of the board of directors. In foreigncountries, a person who holds the title “Manager”or “Director” is normally an officer and is presumedto have the authority to sign on behalf of theorganization. A person having a title (administrator,general counsel) that does not clearly set forth thatperson as an officer of the assignee is not presumedto have authority to sign the submission on behalfof the assignee. A power of attorney (37 CFR1.32(b)(4)) to a patent practitioner to prosecute apatent application executed by the applicant or theassignee of the entire interest does not make thatpractitioner an official of an assignee or empowerthe practitioner to sign the submission on behalf ofthe assignee.

(B) The submission may be signed by anyperson, if the submission sets forth that the personsigning is authorized (or empowered) to act on behalf

of the assignee, i.e., to sign the submission on behalfof the assignee. 37 CFR 3.73(d)(1) .

(C) The submission may be signed by a patentpractitioner of record. 37 CFR 3.73(d)(3). A patentpractitioner will be considered “of record” wherethe patent practitioner was appointed in a power ofattorney already of record, or where the 37 CFR3.73(c) statement is accompanied by a power ofattorney that appoints the patent practitioner whosigned the statement.

(D) The submission may be signed by a personempowered by an organizational resolution (e.g.,corporate resolution, partnership resolution) to signthe submission on behalf of the assignee, if a copyof the resolution is, or was previously, submitted inthe record.

Where a submission does not comply with (A), (B),(C) or (D) above, evidence of the person’s authorityto sign will be required.

VI. WHEN OWNERSHIP MUST BE ESTABLISHED

Examples of situations where ownership must beestablished under 37 CFR 3.73(c) are when theassignee who is not the applicant: signs a request forstatus of an application or gives a power to inspectan application (MPEP § 102 and § 104); appointsits own registered attorney or agent to prosecute anapplication (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); or signs a Fee Transmittal(PTOL-85B) (MPEP § 1306 ). Effective September16, 2012, a juristic entity (e.g., organizationalassignee) must be represented by a patentpractitioner.

VII. WHEN OWNERSHIP NEED NOT BEESTABLISHED

Examples of situations where ownership need notbe established under 37 CFR 3.73(c) are when theassignee: signs a small entity statement under 37CFR 1.27 (MPEP § 509.03); signs a statement ofcommon ownership of two inventions ( MPEP §706.02(l)(2)); signs a NASA or DOE property rightsstatement (MPEP § 151 ); signs an affidavit under37 CFR 1.131(a) where the inventor is unavailable(MPEP § 715.04); signs a certificate under 37 CFR

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1.8 (MPEP § 512); or files a request forreexamination of a patent under 37 CFR 1.510(MPEP § 2210).

VIII. MULTIPLE ASSIGNEES

When an assignee seeks to take action in a matterbefore the Office with respect to a patent application,patent, or reexamination proceeding and the right,title, and interest therein is held by more than oneassignee, each partial assignee must provide asubmission under 37 CFR 3.73(c). In eachsubmission, the extent of each assignee’s interestmust be set forth so that the Office can determinewhether it has obtained action by the entirety of theright, title and interest holders (owners). 37 CFR3.73(c)(2)(i). Where there are unspecifiedpercentages of ownership, each partial assignee mustsubmit a statement identifying the parties includinginventors who together own the entire right, title andinterest and state that all the identified parties ownthe entire right, title and interest. 37 CFR3.73(c)(2)(ii). If the extent of the partial assignee’sownership interest is not set forth in the submissionunder 37 CFR 3.73(c), the Office may refuse toaccept the submission as an establishment ofownership interest.

IX. CONFLICTING 37 CFR 3.73(c) STATEMENTS

Where two or more purported assignees fileconflicting 37 CFR 3.73(c) statements in anapplication or other Office proceeding, the Directorwill determine which, if any, purported assignee willbe permitted to control prosecution of theapplication. 37 CFR 3.73(c)(3). Additionally, if theownership established as controlling is contested onthe record by another party who has submitted aconflicting 37 CFR 3.73(c) statement, then theapplication or other proceeding shall be forwardedby the Office official in charge of the application orother proceeding to the Office of Patent LegalAdministration for resolving any procedural issues.Generally, where there are two or more conflicting37 CFR 3.73(c) statements in an application, theapplicant will be permitted to conduct theprosecution, and the other party that submitted a 37CFR 3.73(c) statement to establish its ownershipmay wish to consider filing its own application.

X. FORMS

Form PTO/AIA/96 may be used to establishownership under 37 CFR 3.73(c).

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MPEP - Chapter 0300 - Ownership and Assignment

Documents

Transcript of MPEP - Chapter 0300 - Ownership and Assignment