Mpep 0200
Mpep 0200
Mpep 0200
an assignment, grant, or conveyance of a patent or application (e.g., existence of another patent owner with a
for patent. dominant patent, failure to obtain FDA approval of
the patented invention, an injunction by a court
An interest that constitutes an assignment, grant, or conveyance
against making the product of the invention, or a
shall be void as against any subsequent purchaser or mortgagee
for valuable consideration, without notice, unless it is recorded national security related issue).
in the Patent and Trademark Office within three months from
its date or prior to the date of such subsequent purchase or For applications filed on or after September 16,
mortgage.
2012, the original applicant is presumed to be the
initial owner of an application for an original patent.
35 U.S.C. 262 Joint owners. See 37 CFR 3.73(a). For applications filed before
September 16, 2012, the ownership of the patent (or
In the absence of any agreement to the contrary, each of the the application for the patent) initially vests in the
joint owners of a patent may make, use, offer to sell, or sell the
patented invention within the United States, or import the
named inventors of the invention of the patent. See
patented invention into the United States, without the consent Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237,
of and without accounting to the other owners. 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993). A
patent or patent application is assignable by an
37 CFR 3.1 Definitions.
instrument in writing, and the assignment of the
For purposes of this part, the following definitions shall apply: patent, or patent application, transfers to the
assignee(s) an alienable (transferable) ownership
Application means a national application for patent, an interest in the patent or application. 35 U.S.C. 261.
international patent application that designates the United States
of America, an international design application that designates
the United States of America, or an application to register a II. ASSIGNMENT
trademark under section 1 or 44 of the Trademark Act, 15 U.S.C.
1051 or 15 U.S.C. 1126, unless otherwise indicated. “Assignment,” in general, is the act of transferring
to another the ownership of one’s property, i.e., the
Assignment means a transfer by a party of all or part of its right, interest and rights to the property. In 37 CFR 3.1,
title and interest in a patent, patent application, registered mark
or a mark for which an application to register has been filed.
assignment of patent rights is defined as “a transfer
by a party of all or part of its right, title and interest
Document means a document which a party requests to be in a patent [or] patent application....” An assignment
recorded in the Office pursuant to § 3.11 and which affects some of a patent, or patent application, is the transfer to
interest in an application, patent, or registration. another of a party’s entire ownership interest or a
percentage of that party’s ownership interest in the
Office means the United States Patent and Trademark Office. patent or application. In order for an assignment to
take place, the transfer to another must include the
Recorded document means a document which has been recorded entirety of the bundle of rights that is associated with
in the Office pursuant to § 3.11.
the ownership interest, i.e., all of the bundle of rights
that are inherent in the right, title and interest in the
Registration means a trademark registration issued by the
Office. patent or patent application.
III. LICENSING
I. OWNERSHIP
As compared to assignment of patent rights, the
Ownership of a patent gives the patent owner the licensing of a patent transfers a bundle of rights
right to exclude others from making, using, offering which is less than the entire ownership interest, e.g.,
for sale, selling, or importing into the United States rights that may be limited as to time, geographical
the invention claimed in the patent. 35 U.S.C. area, or field of use. A patent license is, in effect, a
154(a)(1). Ownership of the patent does not furnish contractual agreement that the patent owner will not
the owner with the right to make, use, offer for sale, sue the licensee for patent infringement if the
sell, or import the claimed invention because there licensee makes, uses, offers for sale, sells, or imports
may be other legal considerations precluding same the claimed invention, as long as the licensee fulfills
its obligations and operates within the bounds V. MAKING THE ASSIGNMENT OF RECORD
delineated by the license agreement.
An assignment can be made of record in the United
An exclusive license may be granted by the patent States Patent and Trademark Office (Office) in two
owner to a licensee. The exclusive license prevents different ways, for two different purposes. The
the patent owner (or any other party to whom the differences are important to note:
patent owner might wish to sell a license) from
competing with the exclusive licensee, as to the (A) An assignment can be made of record in the
geographic region, the length of time, and/or the assignment records of the Office as provided for in
field of use, set forth in the license agreement. 37 CFR Part 3. Recordation of the assignment
provides legal notice to the public of the assignment.
A license is not an assignment of the patent. Even It should be noted that recording of the assignment
if the license is an exclusive license, it is not an is merely a ministerial act; it is not an Office
assignment of patent rights in the patent or determination of the validity of the assignment
application. document or the effect of the assignment document
on the ownership of the patent property. See 37 CFR
IV. INDIVIDUAL AND JOINT OWNERSHIP 3.54 and MPEP § 317.03. For a patent to issue to an
assignee, the assignment must have been recorded
Individual ownership - An individual entity may or filed for recordation in accordance with 37 CFR
own the entire right, title and interest of the patent 3.11. See 37 CFR 3.81(a).
property. This occurs where there is only one (B) An assignment can be made of record in the
inventor, and the inventor has not assigned the patent file of a patent application, patent, or other patent
property. Alternatively, it occurs where all parties proceeding (e.g., reexamination proceeding). This
having ownership interest (all inventors and step may be necessary to permit the assignee to “take
assignees) assign the patent property to one party. action” in the application, patent, or other patent
proceeding under the conditions set forth in 37 CFR
Joint ownership - Multiple parties may together own 1.46 and 37 CFR 3.81(a) and MPEP § 325 (for
the entire right, title and interest of the patent applications filed on or after September 16, 2012)
property. This occurs when any of the following or under the conditions set forth in pre-AIA 37 CFR
cases exist: 3.73 and MPEP § 324 (for applications filed before
September 16, 2012). Recordation of an assignment
(A) Multiple partial assignees of the patent in the assignment records of the Office does not, by
property; itself, permit the assignee to take action in the
(B) Multiple inventors who have not assigned application, patent, or other patent proceeding.
their right, title and interest; or Additionally, for applications filed under 35 U.S.C.
(C) A combination of partial assignee(s), and 111(a), 363, or 385 on or after September 16, 2012,
inventor(s) who have not assigned their right, title an assignment may contain the statements required
and interest. to be made in an oath or declaration
(“assignment-statement”), and if the assignment is
Each individual inventor may only assign the interest made of record in the assignment records of the
he or she holds; thus, assignment by one joint Office, then the assignment may be utilized as the
inventor renders the assignee a partial assignee. A oath or declaration. See 35 U.S.C. 115(e), 37 CFR
partial assignee likewise may only assign the interest 1.63(e), and MPEP §§ 302.07, 317, and MPEP §
it holds; thus, assignment by a partial assignee 602.01(a).
renders a subsequent assignee a partial assignee. All
parties having any portion of the ownership in the 301.01 Accessibility of Assignment Records
patent property must act together as a composite
[R-11.2013]
entity in patent matters before the Office.
37 CFR 1.12 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in The Office will not open only certain parts of an
the United States Patent and Trademark Office for patents and
trademarks. The assignment records, relating to original or
assignment document to public inspection. If such
reissue patents, including digests and indexes (for assignments a document contains two or more items, any one of
recorded on or after May 1, 1957), and published patent which, if alone, would be open to such inspection,
applications are open to public inspection at the United States then the entire document will be open. Thus, if a
Patent and Trademark Office, and copies of patent assignment
document covers either a trademark or a patent in
records may be obtained upon request and payment of the fee
set forth in § 1.19 of this chapter. See § 2.200 of this chapter addition to one or more patent applications, it will
regarding trademark assignment records. be available to the public ab initio; and if it covers
(2) All records of assignments of patents recorded a number of patent applications, it will be so
before May 1, 1957, are maintained by the National Archives available as soon as any one of them is published or
and Records Administration (NARA). The records are open to patented. Documents relating only to one or more
public inspection. Certified and uncertified copies of those pending applications for patent which have not been
assignment records are provided by NARA upon request and
payment of the fees required by NARA.
published under 35 U.S.C. 122(b) will not be open
to public inspection.
(b) Assignment records, digests, and indexes relating to
any pending or abandoned patent application, which is open to
the public pursuant to § 1.11 or for which copies or access may Copies of assignment records relating to pending or
be supplied pursuant to § 1.14, are available to the public. Copies abandoned patent applications which are open to the
of any assignment records, digests, and indexes that are not public pursuant to 37 CFR 1.11 or for which copies
available to the public shall be obtainable only upon written
authority of an inventor, the applicant, the assignee or an
or access may be supplied pursuant to 37 CFR 1.14
assignee of an undivided part interest, or a patent practitioner are available to the public. For pending or abandoned
of record, or upon a showing that the person seeking such applications which are not open to the public
information is a bona fide prospective or actual purchaser, pursuant to 37 CFR 1.11 or for which copies or
mortgagee, or licensee of such application, unless it shall be
access may not be supplied pursuant to 37 CFR 1.14,
necessary to the proper conduct of business before the Office
or as provided in this part. information related thereto is only obtainable upon
a proper showing of written authority. For
(c) Any request by a member of the public seeking copies
of any assignment records of any pending or abandoned patent applications filed on or after September 16, 2012,
application preserved in confidence under § 1.14, or any the written authority must be from (A) an inventor,
information with respect thereto, must: (B) the applicant, (C) the assignee or an assignee of
(1) Be in the form of a petition including the fee set an undivided part interest, (D) a patent practitioner
forth in § 1.17(g); or of record, or (E) a person with written authority from
(2) Include written authority granting access to the (A), (B), or (C) or (D). See 37 CFR 1.12. For
member of the public to the particular assignment records from applications filed prior to September 16, 2012, the
an inventor, the applicant, the assignee or an assignee of an written authority must be from the applicant or
undivided part interest, or a patent practitioner of record.
applicant’s assignee or from the attorney or agent
(d) An order for a copy of an assignment or other document of either, or upon a showing that the person seeking
should identify the reel and frame number where the assignment
such information is a bona fide prospective or actual
or document is recorded. If a document is identified without
specifying its correct reel and frame, an extra charge as set forth purchaser, mortgagee, or licensee of such
in § 1.21(j) will be made for the time consumed in making a application. See pre-AIA 37 CFR 1.12.
search for such assignment.
If the application on which a patent was granted is
Assignment documents relating to patents, published a division, continuation, or continuation-in-part of
patent applications, registrations of trademarks, and an earlier application, the assignment records of that
applications for registration of trademarks are open earlier application will be open to public inspection
to public inspection. Records related to assignments because copies or access may be supplied to the
of patents, and patent applications that have been earlier application pursuant to 37 CFR 1.14.
published as patent application publications are
available on the USPTO website. To view the Assignment records relating to reissue applications
recorded assignment document itself, members of are open to public inspection because reissue
the public must place an order pursuant to 37 CFR applications are open to public inspection pursuant
1.12(d). to 37 CFR 1.11(b).
Requests for abstracts of title for assignments of open to public inspection but will be available for examination
and inspection by duly authorized representatives of the
patents recorded after May 1, 1957, are provided by Government. Governmental interests recorded on the
the Certification Division upon request and payment Departmental Register will be available for public inspection
of fee required in 37 CFR 1.19. Requests for copies as provided in § 1.12.
of pre-1957 records for patents should be directed (b) The Office will maintain a Secret Register to record
to the National Archives and Records Administration governmental interests required to be recorded by Executive
(NARA). Since these records are maintained by Order 9424. Any instrument to be recorded will be placed on
this Secret Register at the request of the department or agency
NARA, it is more expeditious to request copies
submitting the same. No information will be given concerning
directly from NARA, rather than from the Office, any instrument in such record or register, and no examination
which would then have to route the requests to or inspection thereof or of the index thereto will be permitted,
NARA. Payment of the fees required by NARA except on the written authority of the head of the department or
should accompany all requests for copies. agency which submitted the instrument and requested secrecy,
and the approval of such authority by the Director. No instrument
or record other than the one specified may be examined, and
All assignment records from 1837 to April 30, 1957 the examination must take place in the presence of a designated
for patents are now maintained and are open for official of the Patent and Trademark Office. When the
public inspection in the National Archives Research department or agency which submitted an instrument no longer
requires secrecy with respect to that instrument, it must be
Room located at the Washington National Records recorded anew in the Departmental Register.
Center Building, 4205 Suitland Road, Suitland,
Maryland 20746. Assignment documents recorded
before 1837 are maintained at the Civilian Records 37 CFR Part 3 sets forth Office rules on recording
Division of the National Archives at College Park, assignments and other documents relating to interests
8601 Adelphi Road, College Park, MD 20740-6001. in patent applications and patents and the rights of
an assignee.
302 Recording of Assignment Documents
[R-07.2015] 37 CFR 3.11(c) provides that the Office will record
a joint research agreement or an excerpt of a joint
37 CFR 3.11 Documents which will be recorded. research agreement.
(a) Assignments of applications, patents, and registrations,
and other documents relating to interests in patent applications 302.01 Assignment Document Must Be Copy
and patents, accompanied by completed cover sheets as specified
in § 3.28 and § 3.31, will be recorded in the Office. Other for Recording [R-08.2012]
documents, accompanied by completed cover sheets as specified
in § 3.28 and § 3.31, affecting title to applications, patents, or 37 CFR 3.24 Requirements for documents and cover sheets
registrations, will be recorded as provided in this part or at the relating to patents and patent applications.
discretion of the Director. (a) For electronic submissions: Either a copy of the
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, original document or an extract of the original document may
3 CFR 1943-1948 Comp., p. 303) requires the several be submitted for recording. All documents must be submitted
departments and other executive agencies of the Government, as digitized images in Tagged Image File Format (TIFF) or
including Government-owned or Government-controlled another form as prescribed by the Director. When printed to a
corporations, to forward promptly to the Director for recording paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches)
all licenses, assignments, or other interests of the Government or 21.0 by 29.7 cm (DIN size A4), the document must be legible
in or under patents or patent applications. Assignments and other and a 2.5 cm (one-inch) margin must be present on all sides.
documents affecting title to patents or patent applications and (b) For paper or facsimile submissions: Either a copy of
documents not affecting title to patents or patent applications the original document or an extract of the original document
required by Executive Order 9424 to be filed will be recorded must be submitted for recording. Only one side of each page
as provided in this part. may be used. The paper size must be either 21.6 by 27.9 cm (8
(c) A joint research agreement or an excerpt of a joint 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and
research agreement will also be recorded as provided in this in either case, a 2.5 cm (one-inch) margin must be present on
part. all sides. For paper submissions, the paper used should be
flexible, strong white, non-shiny, and durable. The Office will
not return recorded documents, so original documents must not
37 CFR 3.58 Governmental registers. be submitted for recording.
(a) The Office will maintain a Departmental Register to
record governmental interests required to be recorded by
Executive Order 9424. This Departmental Register will not be
The United States Patent and Trademark Office will The patent or patent application to which an
accept and record only a copy of an original assignment relates must be identified by patent
assignment or other document. See MPEP § 317. number or application number unless the assignment
The document submitted for recordation will not be is executed concurrently with or subsequent to the
returned to the submitter. If the copy submitted for execution of the application but before the
recordation is illegible, the recorded document will application is filed. Then, the application must be
be illegible. Accordingly, applicants and patent identified by the name(s) of the inventors, and the
owners should ensure that only a legible copy is title of the invention. If an assignment of a
submitted for recordation. provisional application is executed before the
provisional application is filed, it must identify the
302.02 Translation of Assignment Document provisional application by name(s) of the inventors
[R-08.2012] and the title of the invention.
37 CFR 3.26 English language requirement. The Office makes every effort to provide applicants
The Office will accept and record non-English language with the application numbers for newly filed patent
documents only if accompanied by an English translation signed applications as soon as possible. It is suggested,
by the individual making the translation. however, that an assignment be written to allow entry
of the identifying number after the execution of the
assignment. An example of acceptable wording is:
The assignment document, if not in the English
language, will not be recorded unless accompanied “I hereby authorize and request my attorney, (Insert
by an English translation signed by the translator. name), of (Insert address), to insert here in
parentheses (Application number , filed ) the filing
302.03 Identifying Patent or Application date and application number of said application when
[R-07.2015] known.”
whom may be served process or notice of proceedings affecting 302.07 Assignment Document Must Be
the application, patent or registration or rights thereunder.
Accompanied by a Cover Sheet [R-07.2015]
37 CFR 3.28 Requests for recording.
An assignee of a patent or patent application who is Each document submitted to the Office for recording must
not domiciled in the United States may, by written include a single cover sheet (as specified in § 3.31) referring
document signed by such assignee, designate a either to those patent applications and patents, or to those
domestic representative. The designation of domestic trademark applications and registrations, against which the
document is to be recorded. If a document to be recorded
representative should always be a paper separate
includes interests in, or transactions involving, both patents and
from any assignment document, in order that the trademarks, then separate patent and trademark cover sheets,
paper of designation can be retained in the each accompanied by a copy of the document to be recorded,
appropriate application or patent file. Also, there must be submitted. If a document to be recorded is not
should be a separate paper of designation of accompanied by a completed cover sheet, the document and the
incomplete cover sheet will be returned pursuant to § 3.51 for
representative for each patent or application, so that proper completion, in which case the document and a completed
a designation paper can be placed in each file. The cover sheet should be resubmitted.
designation of a domestic representative should be
directed to the Office of Public Records for
processing. 37 CFR 3.31 Cover sheet content.
(a) Each patent or trademark cover sheet required by § 3.28
302.05 Address of Assignee [R-08.2012] must contain:
(1) The name of the party conveying the interest;
The address of the assignee may be recited in the (2) The name and address of the party receiving the
assignment document and must be given in the interest;
required cover sheet. See MPEP § 302.07. (3) A description of the interest conveyed or transaction
to be recorded;
302.06 Fee for Recording [R-08.2012] (4) Identification of the interests involved:
(i) For trademark assignments and trademark name
37 CFR 3.41 Recording fees. changes: Each trademark registration number and each trademark
(a) All requests to record documents must be accompanied application number, if known, against which the Office is to
by the appropriate fee. Except as provided in paragraph (b) of record the document. If the trademark application number is not
this section, a fee is required for each application, patent and known, a copy of the application or a reproduction of the
registration against which the document is recorded as identified trademark must be submitted, along with an estimate of the date
in the cover sheet. The recording fee is set in § 1.21(h) of this that the Office received the application; or
chapter for patents and in § 2.6(b)(6) of this chapter for (ii) For any other document affecting title to a
trademarks. trademark or patent application, registration or patent: Each
(b) No fee is required for each patent application and patent trademark or patent application number or each trademark
against which a document required by Executive Order 9424 is registration number or patent against which the document is to
to be filed if: be recorded, or an indication that the document is filed together
with a patent application;
(1) The document does not affect title and is so
identified in the cover sheet (see § 3.31(c)(2)); and (5) The name and address of the party to whom
correspondence concerning the request to record the document
(2) The document and cover sheet are either: Faxed or should be mailed;
electronically submitted as prescribed by the Director, or mailed
to the Office in compliance with § 3.27. (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 recording fee set forth in 37 CFR 1.21(h) is the person who signs the cover sheet must either:
charged for each patent application and patent (i) Place a symbol comprised of letters, numbers,
identified in the required cover sheet except as and/or punctuation marks between forward slash marks (e.g.
provided in 37 CFR 3.41(b). /Thomas O’Malley III/) in the signature block on the electronic
submission; or
(ii) Sign the cover sheet using some other form of
electronic signature specified by the Director.
(F) foreclosure;
302.08 Mailing Address for Submitting (B) one cover sheet to record a single
Assignment Documents [R-08.2012] transaction; and
(C) payment of the recordation fee by a credit
37 CFR 3.27 Mailing address for submitting documents to
card (use of the Credit Card form, PTO-2038 (see
be recorded.
MPEP § 509), is required for the credit card
Documents and cover sheets submitted by mail for recordation information to be kept separate from the assignment
should be addressed to Mail Stop Assignment Recordation
records) or a USPTO Deposit Account.
Services, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless The following documents cannot be submitted via
they are filed together with new applications.
facsimile:
(7) The signature of the party submitting the paragraph (d)(2) of this section when it is submitted via the
document. For an assignment document or name change filed Office electronic filing system.
electronically, the person who signs the cover sheet must either:
(4) Certifications—
(i) Place a symbol comprised of letters,
(i) Certification as to the paper presented. The
numbers, and/or punctuation marks between forward slash marks
presentation to the Office (whether by signing, filing, submitting,
(e.g. /Thomas O’ Malley III/) in the signature block on the
or later advocating) of any paper by a party, whether a
electronic submission; or
practitioner or non-practitioner, constitutes a certification under
(ii) Sign the cover sheet using some other form § 11.18(b) of this subchapter. Violations of § 11.18(b)(2) of this
of electronic signature specified by the Director. subchapter by a party, whether a practitioner or non-practitioner,
***** may result in the imposition of sanctions under § 11.18(c) of
this subchapter. Any practitioner violating § 11.18(b) of this
subchapter may also be subject to disciplinary action. See §
37 CFR 1.4 Nature of correspondence and signature 11.18(d) of this subchapter.
requirements.
(ii) Certification as to the signature. The
***** person inserting a signature under paragraph (d)(2) or (d)(3) of
(d) ***** this section in a document submitted to the Office certifies that
the inserted signature appearing in the document is his or her
(2) S-signature. An S-signature is a signature own signature. A person submitting a document signed by
inserted between forward slash marks, but not a handwritten another under paragraph (d)(2) or (d)(3) of this section is
signature as defined by paragraph (d)(1) of this section. An obligated to have a reasonable basis to believe that the person
S-signature includes any signature made by electronic or whose signature is present on the document was actually inserted
mechanical means, and any other mode of making or applying by that person, and should retain evidence of authenticity of the
a signature other than a handwritten signature as provided for signature. Violations of the certification as to the signature of
in paragraph (d)(1) of this section. Correspondence being filed another or a person’s own signature as set forth in this paragraph
in the Office in paper, by facsimile transmission as provided in may result in the imposition of sanctions under § 11.18(c) and
§ 1.6(d), or via the Office electronic filing system as an (d) of this chapter.
attachment as provided in § 1.6(a)(4), for a patent application,
patent, or a reexamination or supplemental examination (5) Forms. The Office provides forms for the
proceeding may be S-signature signed instead of being public to use in certain situations to assist in the filing of
personally signed (i.e., with a handwritten signature) as provided correspondence for a certain purpose and to meet certain
for in paragraph (d)(1) of this section. The requirements for an requirements for patent applications and proceedings. Use of
S-signature under this paragraph (d)(2) of this section are as the forms for purposes for which they were not designed is
follows. prohibited. No changes to certification statements on the Office
forms (e.g., oath or declaration forms, terminal disclaimer
(i) The S-signature must consist only of letters, forms, petition forms, and nonpublication request forms) may
or Arabic numerals, or both, with appropriate spaces and be made. The existing text of a form, other than a certification
commas, periods, apostrophes, or hyphens for punctuation, and statement, may be modified, deleted, or added to, if all text
the person signing the correspondence must insert his or her identifying the form as an Office form is removed. The
own S-signature with a first single forward slash mark before, presentation to the Office (whether by signing, filing, submitting,
and a second single forward slash mark after, the S-signature or later advocating) of any Office form with text identifying the
(e.g., /Dr. James T. Jones, Jr./); and form as an Office form by a party, whether a practitioner or
(ii) A patent practitioner (§ 1.32(a)(1)), signing non-practitioner, constitutes a certification under § 11.18(b) of
pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her this chapter that the existing text and any certification statements
registration number either as part of the S-signature, or on the form have not been altered other than permitted by
immediately below or adjacent to the S-signature. The number EFS-Web customization.
(#) character may be used only as part of the S-signature when *****
appearing before a practitioner’s registration number; otherwise
the number character may not be used in an S-signature.
(iii) The signer’s name must be: Assignments and other documents affecting title
(A) Presented in printed or typed form
may be submitted to the Office via the Office’s
preferably immediately below or adjacent the S-signature, and Electronic Patent Assignment System (EPAS). See
(B) Reasonably specific enough so that
the USPTO website at http://epas.uspto.gov for
the identity of the signer can be readily recognized. additional information regarding EPAS.
(3) Electronically submitted correspondence.
Correspondence permitted via the Office electronic filing system Any assignment related document submitted by
may be signed by a graphic representation of a handwritten EPAS must include:
signature as provided for in paragraph (d)(1) of this section or
a graphic representation of an S-signature as provided for in (A) an identified application or patent number;
(B) one cover sheet to record a single transaction question as to who should direct prosecution, it is
which cover sheet is to be completed on-line; and necessary for the examiner to obtain assignment
(C) payment of the recordation fee by a credit information from PALM. See MPEP § 320.
card (use of the Credit Card form, PTO-2038 (see
MPEP § 509), is required for the credit card 304-305 [Reserved]
information to be kept separate from the assignment
records), electronic fund transfer (EFT) or a USPTO
Deposit Account. 306 Assignment of Division, Continuation,
For an assignment document filed electronically, the Substitute, and Continuation-in-Part in
signature of the person who signs the cover sheet Relation to Parent Application [R-07.2015]
must comply with 37 CFR 3.31(a)(7) or 37 CFR
1.4(d)(2). In the case of a division or continuation application,
a prior assignment recorded against the original
The date of receipt accorded to an assignment application is applied (effective) to the division or
document sent to the Office by EPAS is the date the continuation application because the assignment
complete transmission is received in the Office. recorded against the original application gives the
assignee rights to the subject matter common to both
If a document submitted by EPAS is determined not applications. Although the assignment recorded
to be recordable, the entire document, with its against an original application is applied to the
associated cover sheet, and the Office "Notice of division or continuation application, the Office’s
Non-Recordation" will be transmitted via fax back assignment records will only reflect an assignment
to the sender. Once corrections are made, the initial of a division or continuation application (or any other
submission, as amended, may then be resubmitted application) if a request for recordation in
by mailing the corrected submission to the address compliance with 37 CFR 3.28, accompanied by the
set forth in 37 CFR 3.27. Timely submission will required fee (37 CFR 3.41), is filed.
provide the sender with the benefit of the initial
receipt date as the recordation date in accordance In the case of a substitute or continuation-in-part
with 37 CFR 3.51. application, a prior assignment of the original
application is not applied (effective) to the substitute
The Patent and Trademark Assignment System or continuation-in-part application because the
assigns reel and frame numbers and superimposes assignment recorded against the original application
recordation stampings on the processed and stored gives the assignee rights to only the subject matter
electronic images. Accordingly, copies of all common to both applications. Substitute or
recorded documents will have the reel and frame continuation-in-part applications require the
numbers and recordation stampings. recordation of a new assignment if they are to be
issued to an assignee, unless the substitute or
303 Assignment Documents Not Endorsed continuation-in-part application is filed on or after
September 16, 2012, and the assignee is the original
on Pending Applications [R-08.2012]
applicant therein. See 37 CFR 3.81. See also MPEP
§ 307 and § 308.
Certified copies of patent applications as filed do
not include an indication of assignment documents.
Applicants desiring an indication of assignment
306.01 Assignment of an Application
documents of record should request separately Claiming the Benefits of a Provisional
certified copies of assignment documents and submit Application [R-07.2015]
the fees required by 37 CFR 1.19.
If an application which claims the benefit of the
When the assignment condition of an application is earlier filing date of a provisional application under
significant, such as when applications of different 35 U.S.C. 119(e) includes only subject matter which
inventors contain conflicting claims or there is a formed a part of the provisional application, an
Unless an assignee’s name and address are identified facts and a showing that such action is appropriate to preserve
in item 3 of the Fee(s) Transmittal form PTOL-85B, the rights of the parties. If the Director grants a patent on an
application filed under this section by a person other than the
the patent will issue to the applicant. Assignment inventor, the patent shall be granted to the real party in interest
data printed on the patent will be based solely on the and upon such notice to the inventor as the Director considers
information so supplied. Assignment information to be sufficient.
printed on a patent is not updated after a patent is
issued, and may not be reflective of the assignment
37 CFR 1.46 Application for patent by an assignee, obligated
recorded in the Office subsequent to the issuance of
assignee, or a person who otherwise shows sufficient
the patent. Detailed assignment information can be proprietary interest in the matter.
found by performing an assignment search on the
[Editor Note: Applicable only to patent applications filed under
USPTO website and by inspecting the recorded
35 U.S.C. 111(a), 363,or 385 on or after September 16, 2012.
assignment documents. See pre-Hague 37 CFR 1.46 or pre-AIA 37 CFR 1.46 for the
rule otherwise applicable.]
A request for a certificate of correction under
*****
37 CFR 1.323 (see MPEP §§ 1481 and 1485) arising
from incomplete or erroneous assignee’s name (b) If an application under 35 U.S.C. 111 is made by a
furnished, or a missing assignee’s name, in item 3 person other than the inventor under paragraph (a) of this section,
the application must contain an application data sheet under §
of PTOL-85B will not be granted unless a request 1.76 specifying in the applicant information section (§
under 37 CFR 3.81(b) has been granted and the 1.76(b)(7)) the assignee, person to whom the inventor is under
assignment was submitted for recordation as set forth an obligation to assign the invention, or person who otherwise
in 37 CFR 3.11 before the patent issued. Any such shows sufficient proprietary interest in the matter. If an
application entering the national stage under 35 U.S.C. 371, or
request under 37 CFR 3.81(b) should be directed to
a nonprovisional international design application, is applied for
the Office of Petitions and should include: by a person other than the inventor under paragraph (a) of this
section, the assignee, person to whom the inventor is under an
(A) the processing fee required by 37 CFR obligation to assign the invention, or person who otherwise
1.17(i); shows sufficient proprietary interest in the matter must have
been identified as the applicant for the United States in the
(B) a request for issuance of the application in international stage of the international application or as the
the name of the assignee, or a request that a patent applicant in the publication of the international registration under
be corrected to state the name of the assignee; Hague Agreement Article 10(3).
(1) If the applicant is the assignee or a person to whom
(C) a statement that the assignment was the inventor is under an obligation to assign the invention,
submitted for recordation as set forth in 37 CFR 3.11 documentary evidence of ownership (e.g., assignment for an
before the issuance of the patent; and assignee, employment agreement for a person to whom the
inventor is under an obligation to assign the invention) should
(D) a request for a certificate of correction under be recorded as provided for in part 3 of this chapter no later than
37 CFR 1.323 accompanied by the fee set forth in the date the issue fee is paid in the application.
37 CFR 1.20(a). (2) If the applicant is a person who otherwise shows
sufficient proprietary interest in the matter, such applicant must
308 Issue to Applicant [R-07.2015] submit a petition including:
(i) The fee set forth in § 1.17(g);
[Editor Note: This MPEP section is only applicable
(ii) A showing that such person has sufficient
to applications filed on or after September 16, 2012.] proprietary interest in the matter; and
35 U.S.C. 118 Filing by other than inventor. (iii) A statement that making the application for
patent by a person who otherwise shows sufficient proprietary
[Editor Note: Applicable to any patent application filed on or interest in the matter on behalf of and as agent for the inventor
after September 16, 2012. See pre-AIA 35 U.S.C. 118 for the is appropriate to preserve the rights of the parties.
law otherwise applicable.] *****
A person to whom the inventor has assigned or is under an (e) If a patent is granted on an application filed under this
obligation to assign the invention may make an application for section by a person other than the inventor, the patent shall be
patent. A person who otherwise shows sufficient proprietary granted to the real party in interest. Otherwise, the patent may
interest in the matter may make an application for patent on be issued to the assignee or jointly to the inventor and the
behalf of and as agent for the inventor on proof of the pertinent assignee as provided in § 3.81. Where a real party in interest
has filed an application under § 1.46, the applicant shall notify
315 Indexing Against a Recorded Certificate Documents and cover sheets that are considered not
[R-11.2013] to be recordable are returned to the sender by the
Assignment Division with an explanation. If the
The Office does not process requests for “indexing” sender disagrees or believes that the document
or “cross-referencing” additional patent numbers or represents an unusual case which justifies
application numbers against a document, other than recordation, the sender may present the question to
an assignment, previously recorded in the the Director by way of petition under 37 CFR 1.181,
Assignment Division. Such requests do not comply filed with the Office of Petitions.
with 37 CFR 3.11, 3.28, and 3.31, which require that
each request for recordation include the document After an assignment and cover sheet have been
to be recorded and a cover sheet. recorded, notification will be sent to the name and
address indicated on the cover sheet to receive
Therefore, even where a document has already been correspondence, showing the reel and frame number.
recorded in the Assignment Division in connection
with a patent or patent application, a party that 317.01 Recording Date [R-08.2012]
wishes recordation of that document with respect to
additional patents and/or patent applications must 37 CFR 3.51 Recording date.
submit the following to the Assignment Division: The date of recording of a document is the date the document
meeting the requirements for recording set forth in this part is
(A) a copy of the original document (which may filed in the Office. A document which does not comply with the
consist of the previously recorded papers on which identification requirements of § 3.21 will not be recorded.
Documents not meeting the other requirements for recording,
the Assignment Division has stamped the reel and for example, a document submitted without a completed cover
frame numbers at which they are recorded, or a copy sheet or without the required fee, will be returned for correction
of such papers); to the sender where a correspondence address is available. The
returned papers, stamped with the original date of receipt by the
(B) a completed cover sheet (see 37 CFR 3.31 Office, will be accompanied by a letter which will indicate that
and MPEP § 302.07); and if the returned papers are corrected and resubmitted to the Office
within the time specified in the letter, the Office will consider
(C) the appropriate recording fee (see 37 CFR the original date of filing of the papers as the date of recording
1.21(h) and 3.41). of the document. The procedure set forth in § 1.8 or § 1.10 of
this chapter may be used for resubmissions of returned papers
The Office will assign a new recording date to that to have the benefit of the date of deposit in the United States
submission, update the assignment database, and Postal Service. If the returned papers are not corrected and
include the cover sheet and document as part of the resubmitted within the specified period, the date of filing of the
official record. corrected papers will be considered to be the date of recording
of the document. The specified period to resubmit the returned
papers will not be extended.
to report to someone within the Office the name of new reel and frame number and recording date. The
the owner of an application or patent as shown by recording fee set forth in 37 CFR 1.21(h) is required
the Assignment Division records on the date the title for each patent application and patent against which
report is made. For example, a title report is the corrective document is being recorded. See
requested by the Reexamination Preprocessing Staff MPEP § 302.06.
when a request for reexamination is filed. Title
reports may not be ordered by applicants or Corrections may be made on the original assignment
attorneys. document, for example, by lining out an incorrect
patent or application number in a merger or change
Information as to the title is not normally required of name (see MPEP § 314).
by the examiner to examine an application. It is only
in limited circumstances when the ownership Office policy regarding recordation of assignment
becomes an issue and an examiner needs a title documents is directed toward maintaining a complete
report. See MPEP § 303. Examiners may obtain a history of claimed interests in property and,
title report using the PALM Intranet (select “General therefore, recorded assignment documents will not
Information,” insert the appropriate application be expunged even if subsequently found to be
number, select “Search,” select “Assignments”). The invalid. See In re Ratny, 24 USPQ2d 1713 (Comm’r
screen resulting from the search may be printed to Pat. 1992). Once a document is recorded with the
yield the copy of the title report. Assignment Services Division, the Assignment
Services Division will not remove the papers from
NOTE: The public can request a certified abstract the record relating to that application or patent. See
of title. The fee for this service is set forth at 37 CFR MPEP § 323.01(d).
1.19(b)(4). See MPEP § 301.01 for a discussion of
which assignment records are publicly available. 323.01 Correction of Error in Recorded
Cover Sheet [R-08.2012]
321-322 [Reserved]
37 CFR 3.34 Correction of cover sheet errors.
(a) An error in a cover sheet recorded pursuant to § 3.11
will be corrected only if:
323 Procedures for Correcting Errors in
(1) The error is apparent when the cover sheet is
Recorded Assignment Document [R-08.2012] compared with the recorded document to which it pertains and
(2) A corrected cover sheet is filed for recordation.
An error in a recorded assignment document will be
corrected by Assignment Division provided a (b) The corrected cover sheet must be accompanied by a
copy of the document originally submitted for recording and by
“corrective document” is submitted. The “corrective the recording fee as set forth in § 3.41.
document” must include the following:
(A) A copy of the original assignment document Any alleged error in a recorded cover sheet will only
with the corrections made therein. The corrections be corrected if the error is apparent from a
must be initialed and dated by the party conveying comparison with the recorded assignment document.
the interest; and The corrected cover sheet should be directed to
(B) A new Recordation Form Cover Sheet (form Assignment Division.
PTO-1595) (See MPEP § 302.07).
During the recording process, the Assignment
The new recordation form cover sheet must identify Services Division will check to see that a cover sheet
the submission as a “corrective document” is complete and record the data exactly as it appears
submission and indicate the reel and frame number on the cover sheet. The Assignment Services
where the incorrectly recorded assignment document Division does not compare the cover sheet with the
appears. The original cover sheet should be assignment document (or other document affecting
submitted with the corrective document. The
corrective document will be recorded and given a
title). Once the document is recorded, the Office will record the corrected cover sheet and correct the
issue a notice of recordation. Assignment Historical Database.
The party recording the document should carefully I. TYPOGRAPHICAL ERRORS IN COVER SHEET
review the notice of recordation. THAT DO NOT AFFECT TITLE TO APPLICATION
OR PATENT
Typographical errors made by the Office will be
corrected promptly and without charge upon written If the original cover sheet contains a typographical
request directed to the Assignment Services Division. error that does not affect title to the application or
For any other error, the party recording the document patent against which the original assignment or name
is responsible for filing the papers and paying the change is recorded, the Assignment Services
recordation fees necessary to correct the error, using Division will correct the Assignment Historical
the procedures set forth in MPEP §§ 323.01(a) Database and permit the recording party to keep the
through 323.01(c). original date of recordation.
A party who wishes to correct a typographical error If the original cover sheet contains a typographical
on a recorded cover sheet must submit the following error that affects title to the application or patent
to the Assignment Services Division: against which the assignment or name change is
recorded, the recording party will not be entitled to
(A) a copy of the originally recorded assignment keep the original date of recordation. Rather, the
document (or other document affecting title); Assignment Services Division will correct its
(B) a corrected cover sheet; and automated records and change the date of recordation
(C) the required fee for each application or to the date the corrected cover sheet was received
patent to be corrected (37 CFR 3.41). in the Office.
See 37 CFR 3.34. The party requesting correction 323.01(b) Typographical Errors in Recorded
should also submit a copy of the original cover sheet, Assignment Document [R-08.2012]
to facilitate comparison of the corrected cover sheet
with the originally recorded document. If there is an error in the recorded assignment
document (or other document affecting title) rather
The party filing the corrected cover sheet should than in the cover sheet, the party responsible for an
check the box titled “Other” in the area of the sheet erroneous document (e.g., the assignor) must either
requesting “Nature of Conveyance,” and indicate create and record a new document or make
that the submission is to correct an error in a cover corrections to the original document and re-record
sheet previously recorded. The party should also it. If an assignor is not available to correct an original
identify the reel and frame numbers (if known), and document or execute a new one, the assignee may
the nature of the correction (e.g., “correction to the submit an affidavit or declaration in which the
spelling of assignor’s name” or “correction of assignee identifies the error and requests correction.
application number or patent number”). The Office The affidavit or declaration must be accompanied
will then compare the corrected cover sheet with the by a copy of the originally recorded papers, a cover
original cover sheet and the originally recorded sheet, and the required fee for each application or
assignment document (or other document affecting patent to be corrected (37 CFR 3.41). See In re
title) to determine whether the correction is Abacab International Computers Ltd., 21 USPQ2d
typographical in nature. If the error is typographical 1078 (Comm’r Pat. 1987).
in nature, the Assignment Services Division will
323.01(c) Assignment or Change of Name affects the identified application(s), or patent(s). The
Improperly Filed and Recorded by Another party should also write the name of the correct owner
Person Against Owner’s Application or in both the box requesting the name of the conveying
Patent [R-07.2015] party and the box requesting the name and address
of the receiving party; this is to make it clear that
ownership never changed and that any assignment
When the owner of an application or registration
or name change recorded against the application(s)
discovers that another party has improperly recorded
or patent(s) was erroneous.
an assignment or name change against the owner’s
application or patent, the owner must correct the
error by having a corrected cover sheet filed with 323.01(d) Expungement of Assignment
the Assignment Services Division. Records [R-07.2015]
The owner should contact the party who recorded Petitions to correct, modify or “expunge” assignment
the papers with the erroneous information and records are rarely granted and will not result in the
request that such party record corrective papers. removal of a document from the assignment records.
However, if the party cannot be located or is Such petitions are granted only if the petitioner can
unwilling to file corrective papers, then the true prove that:
owner must record the necessary papers with the
Assignment Services Division to correct the error. (A) the normal corrective procedures outlined
in MPEP § 323.01(a) through § 323.01(c) will not
Specifically, the owner should submit the following provide the petitioner with adequate relief; and
to the Assignment Services Division: (B) the integrity of the assignment records will
not be affected by granting the petition.
(A) a completed cover sheet identifying the
application or patent against which the assignment Assignment records are recognized as distinct from
was improperly recorded; application file records. Even if a petition to
“expunge” a document is granted with respect to a
(B) an affidavit or declaration (1) identifying particular application or patent, the image of the
itself as the correct owner, (2) stating that the recorded document will remain in the records of the
previously recorded document was submitted with Assignment Services Division at the same reel and
erroneous information, and (3) providing the reel frame number, and the image will appear when
and frame number of the previously recorded someone views that reel and frame number. The
document; and Office will, however, delete the links to the
(C) the required fee (37 CFR 3.41) for each application or patent that was the subject of the
application or patent to be corrected. petition, so that no information about the recorded
document will appear when someone searches for
The affidavit or declaration should include a that application or patent number in the Assignment
summary of the true chain of title to make it clear Historical Database. A redacted version of the
that the chain of title for the application or patent "expunged" document must be recorded and will
identified should not be considered altered by the appear in the assignment records instead of the
incorrect assignment or name change, and a "expunged" document upon the granting of the
statement that the original applicant or patentee or petition. An additional assignment of the “correct”
last correct assignee has been, and continues to be, document may be recorded in addition to the
the owner of the application, or patent at issue. redacted version where the redacted version is
incomplete or the original document was not correct.
On the corrected cover sheet, the owner should check
the box titled “Other” in the area of the cover sheet
requesting the “Nature of Conveyance,” and indicate
that the submission is to correct an error made in a
previously recorded document that erroneously
a request for status of an application (MPEP § 102). Pursuant to pre-AIA 37 CFR 3.73(b), a party must
The owner or assignee can file an application under be established as the assignee by satisfying the
pre-AIA 37 CFR 1.47(b) (MPEP § 409.03(b)), requirements of that subsection, in order to be
appoint its own registered patent practitioner to recognized as an owner or part owner, for purposes
prosecute an application (pre-AIA 37 CFR 1.32 and of taking action in patent matters before the Office.
MPEP § 402.07), and grant a power to inspect an
application (MPEP § 104). The owner or assignee As discussed in subsection II below, all parties
consents to the filing of a reissue application (MPEP having any portion of the ownership must join in
§ 1410.01), and to the correction of inventorship “taking action” (i.e., act together as a composite
(MPEP § 602.01(c) or MPEP § 1481). entity) in order to be entitled to conduct the
prosecution in patent matters.
Effective September 16, 2012, an owner or assignee
who is a juristic entity must be represented by a A. Individual and Partial Assignees
patent practitioner. See 37 CFR 1.31. Juristic entities
may sign small entity assertions under 37 CFR 1.27 If there is a single assignee of the entire right, title
(MPEP § 509.03), disclaimers under 37 CFR 1.321 and interest in the patent application, pre-AIA 37
(MPEP § 1490), submissions under 37 CFR 3.73 to CFR 3.71(b)(1) provides that the single assignee
establish ownership, powers of attorney under 37 (i.e., individual assignee) may act alone to conduct
CFR 1.32 (MPEP § 402) and powers to inspect under the prosecution of an application or other patent
37 CFR 1.14 (MPEP § 104). However, any other proceeding (upon complying with pre-AIA 37 CFR
paper submitted on behalf of a juristic entity on or 3.73(b)).
after September 16, 2012, must be signed by a patent
practitioner. If there is no assignee of the entire right, title and
interest of the patent application, then two
See subsection VI below for a discussion of when possibilities exist:
ownership must be established to take action in a
patent matter, and subsection VII below for a (A) The application has not been assigned, and
discussion of when ownership need not be ownership resides solely in the inventor(s) (i.e., the
established to sign certain papers. applicant(s)). In this situation, pre-AIA 37 CFR 3.71
does not apply, since there is no assignee, and the
I. THE ASSIGNEE/OWNER THAT CAN TAKE combination of all inventors is needed to conduct
ACTION IN PATENT MATTERS the prosecution of an application.
(B) The application has been assigned by at least
The provisions of pre-AIA 37 CFR 3.71(b)(1) and(2) one of the inventors, and there is thus at least one
identify the owner or assignee that can take action “partial assignee.” As defined in pre-AIA 37 CFR
in patent matters, e.g., the assignee which may 3.71(b)(2), a partial assignee is any assignee of
conduct the prosecution of a U.S. national record who has less than the entire right, title and
application for a patent (35 U.S.C. 111(a)), or any interest in the application. The application is owned
other patent proceeding (e.g., a reexamination by the combination of all partial assignees and all
proceeding, an interference proceeding). A national inventors who have not assigned away their right,
patent application is owned by one of the following title and interest in the application.
individual or composite entities:
Where at least one inventor retains an ownership
(A) the inventor(s); interest together with the partial assignee(s), the
(B) an assignee or multiple assignees of the combination of all partial assignees and inventors
inventor(s); or retaining ownership interest is needed to conduct
the prosecution of an application, unless one or more
(C) some combination of the assignee(s), and inventors have refused to join in the filing of the
inventor(s) who have not assigned away their right, application and a petition under pre-AIA 37 CFR
title and interest in the application. 1.47 has been granted. If a petition under pre-AIA
37 CFR 1.47 has been granted, then the assignee application filed before September 16, 2012, or a
need only be the assignee of the entire interest of the with respect to a patent or a reexamination
pre-AIA 37 CFR 1.47 applicant to sign a power of proceeding relating to a patent that issued from an
attorney. See pre-AIA 37 CFR 1.32(b)(4). Where application that was filed before September 16, 2012,
an applicant retains an ownership interest, the the assignee must establish its ownership of the
combination of all partial assignees and the applicant property to the satisfaction of the Director. Pre-AIA
with the ownership interest is needed to conduct the 37 CFR 3.73(b). The assignee’s ownership may be
prosecution of an application. established under pre-AIA 37 CFR 3.73(b) by
submitting to the Office, in the Office file related to
Where a reissue application is filed to correct the matter in which action is sought to be taken:
inventorship in the patent by the deletion of the name
of inventor X and inventor X has not assigned his/her (A) documentary evidence of a chain of title
rights to the patent, inventor X has an ownership from the original owner to the assignee (e.g., copy
interest in the patent. Inventor X must consent to the of an executed assignment submitted for recording)
filing of the reissue application, even though inventor and a statement affirming that the documentary
X is being deleted and need not sign the reissue oath evidence of the chain of title from the original owner
or declaration. If inventor X has assigned his/her to the assignee was, or concurrently is, submitted
rights to the patent, then inventor X’s assignee must for recordation pursuant to 37 CFR 3.11; or
consent to the filing of the reissue application. (B) a statement specifying, by reel and frame
number, where such evidence is recorded in the
B. Example Office.
Inventors A and B invent a process and file their Documents submitted to establish ownership are
application, signing the declaration for the patent required to be recorded, or submitted for recordation
application. Inventors A and B together may conduct pursuant to 37 CFR 3.11, as a condition to permitting
prosecution of the application. Inventor A then the assignee to take action in a matter pending before
assigns all his/her rights in the application to the Office.
Corporation X. As soon as Corporation X (now a
partial assignee as per pre-AIA 37 CFR 3.71(b)(2)) The action taken by the assignee, and the pre-AIA
is made of record in the application as a partial 37 CFR 3.73(b) submission establishing that the
assignee (by filing a statement pursuant to pre-AIA assignee is the appropriate assignee to take such
37 CFR 3.73(b) stating Corporation X is an assignee action, can be combined in one paper.
of an undivided interest in the entirety of the
application), Corporation X and Inventor B together The establishment of ownership by the assignee must
may conduct prosecution of the application. be submitted prior to, or at the same time as, the
Corporation X and Inventor B then both assign their paper requesting or taking action is submitted.
rights in the application to Corporation Y. As soon Pre-AIA 37 CFR 3.73(c). If the submission
as Corporation Y (now an assignee of the entire establishing ownership is not present, the action
right, title and interest) is made of record in the sought to be taken will not be given effect. If the
application as the assignee (by filing a statement submission establishing ownership is submitted at
pursuant to pre-AIA 37 CFR 3.73(b) stating it is a later date, that date will be the date of the request
assignee of the entire right, title and interest), for action or the date of the assignee’s action taken.
Corporation Y is then the sole (one hundred percent)
owner and thus may, by itself, conduct prosecution The submission establishing ownership by the
of the application. assignee must be signed by a party who is authorized
to act on behalf of the assignee. See discussion
II. ESTABLISHING OWNERSHIP below. Once pre-AIA 37 CFR 3.73(b) is complied
with by an assignee, that assignee may continue to
When an assignee first seeks to take action in a take action in that application, patent, or
matter before the Office with respect to a patent reexamination proceeding without filing a pre-AIA
37 CFR 3.73(b) submission each time, provided that organization (e.g., corporation, partnership,
ownership has not changed. university, government agency, etc.):
The submission establishing ownership by the (A) The submission may be signed by a person
assignee pursuant to pre-AIA 37 CFR 3.73(b) is in the organization having apparent authority to sign
generally referred to as the “statement under 37 CFR on behalf of the organization. Pre-AIA 37 CFR
3.73(b)” or the “37 CFR 3.73(b) statement.” A 3.73(b)(2)(ii). An officer (chief executive officer,
duplicate copy of the pre-AIA 37 CFR 3.73(b) president, vice-president, secretary, or treasurer) is
statement is not required and should not be presumed to have authority to sign on behalf of the
submitted. See 37 CFR 1.4(b) and MPEP § 502.04. organization. The signature of the chairman of the
board of directors is acceptable, but not the signature
III. CONTINUING APPLICATIONS of an individual director. Modifications of these
basic titles are acceptable, such as vice-president for
When an assignee files a continuation or divisional sales, executive vice-president, assistant treasurer,
application under 37 CFR 1.53(b) before September vice-chairman of the board of directors. In foreign
16, 2012, the application papers must: countries, a person who holds the title “Manager”
or “Director” is normally an officer and is presumed
(A) contain a copy of a statement filed under to have the authority to sign on behalf of the
pre-AIA 37 CFR 3.73(b) in the parent application; organization. A person having a title (administrator,
or general counsel) that does not clearly set forth that
person as an officer of the assignee is not presumed
(B) contain a newly executed statement under
to have authority to sign the submission on behalf
pre-AIA 37 CFR 3.73(b).
of the assignee. A power of attorney (pre-AIA 37
When a continuation-in-part application is filed CFR 1.32(b)(4)) to a patent practitioner to prosecute
before September 16, 2012 by an assignee, a newly a patent application executed by the applicant or the
executed statement under pre-AIA 37 CFR 3.73(b) assignee of the entire interest does not make that
must be filed. When in a design application, a practitioner an official of an assignee or empower
continued prosecution application (CPA) under the practitioner to sign the submission on behalf of
37 CFR 1.53(d) is filed, the statement filed under the assignee.
37 CFR 3.73(b) in the parent application will serve (B) The submission may be signed by any
as the statement for the CPA. person, if the submission sets forth that the person
signing is authorized (or empowered) to act on behalf
IV. REQUESTS FOR CONTINUED EXAMINATION of the assignee, i.e., to sign the submission on behalf
of the assignee. Pre-AIA 37 CFR 3.73(b)(2)(i).
Where a Request for Continued Examination of an
(C) The submission may be signed by a person
application is filed under 37 CFR 1.114, the
empowered by an organizational resolution (e.g.,
application is not considered to be abandoned; rather
corporate resolution, partnership resolution) to sign
the finality of the Office action is withdrawn and the
the submission on behalf of the assignee, if a copy
prosecution continues. Thus, the statement under
of the resolution is, or was previously, submitted in
pre-AIA 37 CFR 3.73(b) in the application will
the record.
continue to serve as the statement establishing
ownership. Where a submission does not comply with (A), (B),
or (C) above, evidence of the person’s authority to
V. PARTY WHO MUST SIGN sign will be required.
The submission establishing ownership must be VI. WHEN OWNERSHIP MUST BE ESTABLISHED
signed by a party authorized to act on behalf of the
assignee. The submission under pre-AIA 37 CFR Examples of situations where ownership must be
3.73(b) may be signed on behalf of the assignee in established under pre-AIA 37 CFR 3.73(b) are when
the following manner if the assignee is an the assignee: signs a request for status of an
application or gives a power to inspect an application must be set forth so that the Office can determine
(MPEP §§ 102 and 104); appoints its own registered whether it has obtained action by the entirety of the
attorney or agent to prosecute an application right, title and interest holders (owners). Pre-AIA
(pre-AIA 37 CFR 3.71 and MPEP § 402.07); signs 37 CFR 3.73(c)(2). If the extent of the partial
a disclaimer under 37 CFR 1.321 (MPEP § 1490); assignee’s ownership interest is not set forth in the
consents to the filing of a reissue application (MPEP submission under pre-AIA 37 CFR 3.73(b), the
§ 1410.01); consents to the correction of inventorship Office may refuse to accept the submission as an
in a patent (MPEP § 1481); or signs a Fee(s) establishment of ownership interest.
Transmittal (PTOL-85B) (MPEP § 1306). Effective
September 16, 2012, a juristic entity (e.g., IX. CONFLICTING PRE-AIA 37 CFR 3.73(b)
organizational assignee) must be represented by a STATEMENTS
patent practitioner. See 37 CFR 1.31.
Where there are two or more conflicting pre-AIA
VII. WHEN OWNERSHIP NEED NOT BE 37 CFR 3.73(b) statements in an application or other
ESTABLISHED Office proceeding, the statement with the latest date
of submission to the Office will normally control as
Examples of situations where ownership need not to establishment of the assignee. If, however, the
be established under pre-AIA 37 CFR 3.73(b) are ownership established as controlling is contested on
when the assignee: signs a small entity statement the record by another party who has submitted a
(MPEP § 509.03); signs a statement of common conflicting pre-AIA 37 CFR 3.73(b) statement, then
ownership of two inventions (MPEP § 706.02(l)(2)); the application or other proceeding shall be
signs a NASA or DOE property rights statement forwarded by the Office official in charge of the
(MPEP § 151); signs an affidavit under 37 CFR application or other proceeding to the Office of
1.131(a) where the inventor is unavailable (MPEP Patent Legal Administration for resolving any
§ 715.04); signs a certificate under 37 CFR 1.8 procedural issues. Generally, where there are two or
(MPEP § 512); or files a request for reexamination more conflicting pre-AIA 37 CFR 3.73(b) statements
of a patent under 37 CFR 1.510 (MPEP § 2210). in an application, the ownership entity that filed that
application will be permitted to conduct the
VIII. MULTIPLE ASSIGNEES prosecution, and the other party that submitted a
pre-AIA 37 CFR 3.73(b) statement to establish its
When an assignee seeks to take action in a matter ownership may wish to consider filing its own
before the Office with respect to a patent application, application.
patent, or reexamination proceeding and the right,
title, and interest therein is held by more than one X. FORMS
assignee, each partial assignee must provide a
submission under pre-AIA 37 CFR 3.73(b). In each Form PTO/SB/96 may be used to establish
submission, the extent of each assignee’s interest ownership under pre-AIA 37 CFR 3.73(b).
325 Establishing Right of Assignee To Take [Editor Note: Applicable to patent applications filed under 35
U.S.C. 111(a), 363 or 385 on or after September 16, 2012. See
Action in Application Filed On or After pre-AIA 37 CFR 3.73 for the rule otherwise applicable.]
September 16, 2012 [R-07.2015]
(a) The original applicant is presumed to be the owner of
[Editor Note: See MPEP § 324 for establishing the an application for an original patent, and any patent that may
issue therefrom, unless there is an assignment. The original
right of assignee to take action in an application applicant is presumed to be the owner of a trademark application
filed before September 16, 2012.] or registration, unless there is an assignment.
37 CFR 3.71 Prosecution by assignee. (b) In order to request or take action in a trademark matter,
the assignee must establish its ownership of the trademark
[Editor Note: Applicable to patent applications under 35 U.S.C. property of paragraph (a) of this section to the satisfaction of
111(a), 363, or 385 on or after September 16, 2012. See pre-AIA the Director. The establishment of ownership by the assignee
37 CFR 3.71 for the rule otherwise applicable.] may be combined with the paper that requests or takes the action.
Ownership is established by submitting to the Office a signed
(a) Patents—conducting of prosecution. One or more statement identifying the assignee, accompanied by either:
assignees as defined in paragraph (b) of this section may conduct (1) Documentary evidence of a chain of title from the
prosecution of a national patent application as the applicant original owner to the assignee (e.g., copy of an executed
under § 1.46 of this title, or conduct prosecution of a assignment). The documents submitted to establish ownership
supplemental examination or reexamination proceeding, to the may be required to be recorded pursuant to § 3.11 in the
exclusion of the inventor or previous applicant or patent owner. assignment records of the Office as a condition to permitting
Conflicts between purported assignees are handled in accordance the assignee to take action in a matter pending before the Office;
with § 3.73(c)(3). or
(b) Patents—assignee(s) who can prosecute. The (2) A statement specifying where documentary
assignee(s) who may conduct either the prosecution of a national evidence of a chain of title from the original owner to the
application for patent as the applicant under § 1.46 of this title assignee is recorded in the assignment records of the Office
or a supplemental examination or reexamination proceeding (e.g., reel and frame number).
are:
(c)(1) In order to request or take action in a patent
(1) A single assignee. An assignee of the entire right, matter, an assignee who is not the original applicant must
title and interest in the application or patent, or establish its ownership of the patent property of paragraph (a)
(2) Partial assignee(s) together or with inventor(s). of this section to the satisfaction of the Director. The
All partial assignees, or all partial assignees and inventors who establishment of ownership by the assignee may be combined
have not assigned their right, title and interest in the application with the paper that requests or takes the action. Ownership is
or patent, who together own the entire right, title and interest in established by submitting to the Office a signed statement
the application or patent. A partial assignee is any assignee of identifying the assignee, accompanied by either:
record having less than the entire right, title and interest in the (i) Documentary evidence of a chain of title from
application or patent. The word "assignee" as used in this chapter the original owner to the assignee (e.g., copy of an executed
means with respect to patent matters the single assignee of the assignment). The submission of the documentary evidence must
entire right, title and interest in the application or patent if there be accompanied by a statement affirming that the documentary
is such a single assignee, or all of the partial assignees, or all of evidence of the chain of title from the original owner to the
the partial assignee and inventors who have not assigned their assignee was or concurrently is being submitted for recordation
interest in the application or patent, who together own the entire pursuant to § 3.11; or
right, title and interest in the application or patent.
(ii) A statement specifying where documentary
(c) Patents—Becoming of record. An assignee becomes evidence of a chain of title from the original owner to the
of record as the applicant in a national patent application under assignee is recorded in the assignment records of the Office
§ 1.46 of this title, and in a supplemental examination or (e.g., reel and frame number).
reexamination proceeding, by filing a statement in compliance
with § 3.73(c) that is signed by a party who is authorized to act (2) If the submission is by an assignee of less than the
on behalf of the assignee. entire right, title and interest (e.g., more than one assignee exists)
the Office may refuse to accept the submission as an
(d) Trademarks. The assignee of a trademark application establishment of ownership unless:
or registration may prosecute a trademark application, submit
documents to maintain a trademark registration, or file papers (i) Each assignee establishes the extent (by
against a third party in reliance on the assignee’s trademark percentage) of its ownership interest, so as to account for the
application or registration, to the exclusion of the original entire right, title and interest in the application or patent by all
applicant or previous assignee. The assignee must establish parties including inventors; or
ownership in compliance with § 3.73(b). (ii) Each assignee submits a statement identifying
37 CFR 3.73 Establishing right of assignee to take action. the parties including inventors who together own the entire right,
title and interest and stating that all the identified parties own
the entire right, title and interest.
(3) If two or more purported assignees file conflicting (MPEP § 1490), submissions under 37 CFR 3.73 to
statements under paragraph (c)(1) of this section, the Director
will determine which, if any, purported assignee will be
establish ownership, powers of attorney under 37
permitted to control prosecution of the application. CFR 1.32 (MPEP § 402) and powers to inspect under
(d) The submission establishing ownership under paragraph
37 CFR 1.14 (MPEP § 104). However, any other
(b) or (c) of this section must show that the person signing the paper submitted on behalf of a juristic entity on or
submission is a person authorized to act on behalf of the assignee after September 16, 2012, must be signed by a patent
by: practitioner.
(1) Including a statement that the person signing the
submission is authorized to act on behalf of the assignee; See subsection VI below for a discussion of when
(2) Being signed by a person having apparent authority ownership must be established to take action in a
to sign on behalf of the assignee; or patent matter, and subsection VII below for a
(3) For patent matters only, being signed by a discussion of when ownership need not be
practitioner of record. established to sign certain papers.
The owner or assignee of a patent property can take I. THE ASSIGNEE/OWNER THAT CAN TAKE
ACTION IN PATENT MATTERS
action in a patent application as the applicant.
However, an owner or assignee that is a juristic
entity must be represented by a patent practitioner. The original applicant is presumed to be the owner
See 37 CFR 1.31 and 1.33(b)(3). of an application for an original patent, and any
patent that may issue therefrom, unless there is an
assignment. 37 CFR 3.73(a).
An assignee who is not the original applicant must
become the applicant under 37 CFR 1.46(a) in order
to request or take action in a patent application. A The provisions of 37 CFR 3.71(b) provide that the
request to change the applicant under 37 CFR assignee(s) who may conduct either the prosecution
1.46(c)(2) must be filed and must be accompanied of a national application for patent as the applicant
by an application data sheet under 37 CFR 1.76 under 37 CFR 1.46 or a supplemental examination
specifying the applicant in the applicant information or reexamination proceeding are:
section and comply with 37 CFR 3.71 and 37 CFR
(1) a single assignee who is the assignee of the
3.73.
entire right, title and interest in the application or
patent, or
As the applicant, the owner or assignee that is not a
juristic entity can sign a reply to an Office action (2) all partial assignees, or all partial assignees
(37 CFR 1.33(b)(3)), a request for a continued and inventors who have not assigned their right, title
prosecution application under 37 CFR 1.53(d) and interest in the application or patent, who together
(MPEP § 201.06(d)), a disclaimer under 37 CFR own the entire right, title and interest in the
1.321 (MPEP § 1490), Fee(s) Transmittal application or patent.
(PTOL-85B) (MPEP § 1306), or a request for status As discussed in subsection II below, all parties
of an application (MPEP § 102). The owner or having any portion of the ownership must join in
assignee can file an application under 37 CFR 1.46, “taking action” (i.e., act together as a composite
appoint its own registered patent practitioner to entity) in order to be entitled to conduct the
prosecute an application (37 CFR 1.32), and grant prosecution in patent matters. For a discussion of
a power to inspect an application (MPEP § 104). the applicant for patent, see MPEP § 409 et seq. and
The owner or assignee can consent to the filing of a § 605 et seq.
reissue application (MPEP § 1410.01), and to the
correction of inventorship (MPEP § 602.01(c) or
A. Individual and Partial Assignees
MPEP § 1481).
If there is a single assignee of the entire right, title
Effective September 16, 2012, juristic entities may and interest in the patent application, 37 CFR
sign small entity assertions under 37 CFR 1.27 3.71(b)(1) provides that the single assignee (i.e.,
(MPEP § 509.03 ), disclaimers under 37 CFR 1.321
If there is no assignee of the entire right, title and Inventor A then assigns all his/her rights in the
interest of the patent application, then either: application to Corporation X. Corporation X and
Inventor B together may conduct prosecution of the
(1) The application has not been assigned, 37 application only if Corporation X (now a partial
CFR 3.71 is not applicable, and the prosecution must assignee as per 37 CFR 3.71(b)(2)) is made of record
be conducted by the applicant. The word "applicant" in the application as a partial assignee and the
refers to the inventor or all of the joint inventors, or applicant is changed under 37 CFR 1.46(c)(2) to
to the person applying for a patent as provided in 37 Corporation X and Inventor B. Pursuant to 37 CFR
CFR 1.43, 1.45, or 1.46. See MPEP § 409 et seq. 1.46(c)(2), an application data sheet must be filed
and § 605 et seq. specifying the applicant (i.e., Corporation X and
(2) The application has been assigned by at least Inventor B) in the applicant information section, and
one of the inventors, and there is thus at least one a statement pursuant to 37 CFR 3.73(c) must be filed
“partial assignee.” As defined in 37 CFR 3.71(b)(2), establishing that Corporation X is an assignee of an
a partial assignee is any assignee of record who has undivided interest in the entirety of the application.
less than the entire right, title and interest in the
application. The application is owned by the Corporation X and Inventor B then both assign their
combination of all partial assignees and all inventors rights in the application to Corporation Y.
who have not assigned away their right, title and Corporation Y is then the sole (one hundred percent)
interest in the application. owner and may, by itself, conduct prosecution of the
application after Corporation Y (now an assignee of
Where at least one inventor retains an ownership the entire right, title and interest) is made of record
interest together with the partial assignee(s), the in the application as the applicant (by filing a request
combination of all partial assignees and inventors to change the applicant under 37 CFR 1.46(c)(2), an
retaining ownership interest is needed to conduct application data sheet pursuant to 37 CFR 1.76
the prosecution of an application, unless one or more specifying the applicant as Corporation Y, and a
inventors have refused to join in the filing of the statement pursuant to 37 CFR 3.73(c) establishing
application and a petition under 37 CFR 1.46(b)(2) that Corporation Y is assignee of the entire right,
has been granted. title and interest).
information section. When an assignee who was not The submission establishing ownership by the
the original applicant or patent owner first seeks to assignee must be signed by a party who is authorized
take action in a matter before the Office with respect to act on behalf of the assignee or a patent
to a reissue patent application, patent, reexamination practitioner of record. See discussion below. Once
proceeding or supplemental examination proceeding 37 CFR 3.73(c) is complied with by an assignee,
for a patent that issued from an application filed on that assignee may continue to take action in that
or after September 16, 2012, the assignee must application, patent, or reexamination proceeding
establish its ownership of the property to the without filing a 37 CFR 3.73(c) submission each
satisfaction of the Director. 37 CFR 3.73(c). time, provided that ownership has not changed.
The statement establishing assignee’s ownership Where there is more than one assignee (i.e., partial
under 37 CFR 3.73(c) must be filed in the Office assignees) or a combination of partial assignees and
file related to the matter in which action is sought inventors who have not assigned away their right,
to be taken, and must contain: title and interest in the application, each owner must
submit a statement under 37 CFR 3.73(c) that either:
(A) documentary evidence of a chain of title
from the original owner to the assignee (e.g., copy (A) Specifies (by percentage) the extent of its
of an executed assignment submitted for recording) ownership interest, so as to account for the entire
and a statement affirming that the documentary right, title and interest in the application or patent
evidence of the chain of title from the original owner by all parties. 37 CFR 3.73(c)(2)(i); or
to the assignee was, or concurrently is, submitted (B) Identifies the parties including inventors
for recordation pursuant to 37 CFR 3.11; or who together own the entire right, title and interest
(B) a statement specifying, by reel and frame and state that all the identified parties own the entire
number, where such evidence is recorded in the right, title and interest. 37 CFR 3.73(c)(2)(ii).
Office.
The submission establishing ownership by the
Documents submitted to establish ownership are assignee pursuant to 37 CFR 3.73(c) is generally
required to be recorded, or submitted for recordation referred to as the “statement under 37 CFR 3.73(c)”
pursuant to 37 CFR 3.11, as a condition to permitting or the “37 CFR 3.73(c) statement.” A duplicate copy
the assignee to take action in a matter pending before of the 37 CFR 3.73(c) statement is not required and
the Office. should not be submitted. See 37 CFR 1.4(b)and
MPEP § 502.04.
The action taken by the assignee, and the 37 CFR
3.73(c) submission establishing that the assignee is III. CONTINUING APPLICATIONS
the appropriate assignee to take such action, can be
combined in one paper. When an assignee files a continuing application
under 37 CFR 1.53(b), the application papers must:
The establishment of ownership by the assignee (and
the request for change of applicant under 37 CFR (A) contain a copy of a statement filed under
1.46(c)(2)) must be submitted prior to, or at the same pre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c)
time as, the paper requesting or taking action is in the parent application; or
submitted. 37 CFR 3.73(c). If the submission (B) contain a newly executed statement under
establishing ownership and the request for change 37 CFR 3.73(c).
of applicant are not present, the action sought to be
taken will not be given effect. If the submission When a CPA under 37 CFR 1.53(d) is filed in a
establishing ownership is submitted at a later date, design application, the statement filed under pre-AIA
that date will be the date of the request for action or 37 CFR 3.73(b) or under 37 CFR 3.73(c) in the
the date of the assignee’s action taken. parent application will serve as the statement for the
CPA.
IV. REQUESTS FOR CONTINUED EXAMINATION of the assignee, i.e., to sign the submission on behalf
of the assignee. 37 CFR 3.73(d)(1) .
Where a Request for Continued Examination (RCE) (C) The submission may be signed by a patent
of an application is filed under 37 CFR 1.114, the practitioner of record. 37 CFR 3.73(d)(3). A patent
application is not considered to be abandoned; rather practitioner will be considered “of record” where
the finality of the Office action is withdrawn and the the patent practitioner was appointed in a power of
prosecution continues. Thus, the statement under attorney already of record, or where the 37 CFR
pre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c) 3.73(c) statement is accompanied by a power of
in the application will continue to serve as the attorney that appoints the patent practitioner who
statement establishing ownership. signed the statement.
(D) The submission may be signed by a person
V. PARTY WHO MUST SIGN
empowered by an organizational resolution (e.g.,
corporate resolution, partnership resolution) to sign
The submission establishing ownership must be
the submission on behalf of the assignee, if a copy
signed by a party authorized to act on behalf of the
of the resolution is, or was previously, submitted in
assignee. The submission under 37 CFR 3.73(c) may
the record.
be signed on behalf of the assignee in the following
manner if the assignee is an organization (e.g., Where a submission does not comply with (A), (B),
corporation, partnership, university, government (C) or (D) above, evidence of the person’s authority
agency, etc.): to sign will be required.
(A) The submission may be signed by a person VI. WHEN OWNERSHIP MUST BE ESTABLISHED
in the organization having apparent authority to sign
on behalf of the organization. 37 CFR 3.73(d)(2). Examples of situations where ownership must be
An officer (chief executive officer, president, established under 37 CFR 3.73(c) are when the
vice-president, secretary, or treasurer) is presumed assignee who is not the applicant: signs a request for
to have authority to sign on behalf of the status of an application or gives a power to inspect
organization. The signature of the chairman of the an application (MPEP § 102 and § 104); appoints
board of directors is acceptable, but not the signature its own registered attorney or agent to prosecute an
of an individual director. Modifications of these application (37 CFR 3.71 and MPEP § 402.07 );
basic titles are acceptable, such as vice-president for signs a disclaimer under 37 CFR 1.321 (MPEP §
sales, executive vice-president, assistant treasurer, 1490); consents to the filing of a reissue application
vice-chairman of the board of directors. In foreign (MPEP § 1410.01); or signs a Fee Transmittal
countries, a person who holds the title “Manager” (PTOL-85B) (MPEP § 1306 ). Effective September
or “Director” is normally an officer and is presumed 16, 2012, a juristic entity (e.g., organizational
to have the authority to sign on behalf of the assignee) must be represented by a patent
organization. A person having a title (administrator, practitioner.
general counsel) that does not clearly set forth that
person as an officer of the assignee is not presumed VII. WHEN OWNERSHIP NEED NOT BE
to have authority to sign the submission on behalf ESTABLISHED
of the assignee. A power of attorney (37 CFR
1.32(b)(4)) to a patent practitioner to prosecute a Examples of situations where ownership need not
patent application executed by the applicant or the be established under 37 CFR 3.73(c) are when the
assignee of the entire interest does not make that assignee: signs a small entity statement under 37
practitioner an official of an assignee or empower CFR 1.27 (MPEP § 509.03); signs a statement of
the practitioner to sign the submission on behalf of common ownership of two inventions ( MPEP §
the assignee. 706.02(l)(2)); signs a NASA or DOE property rights
(B) The submission may be signed by any statement (MPEP § 151 ); signs an affidavit under
person, if the submission sets forth that the person 37 CFR 1.131(a) where the inventor is unavailable
signing is authorized (or empowered) to act on behalf (MPEP § 715.04); signs a certificate under 37 CFR
1.8 (MPEP § 512); or files a request for IX. CONFLICTING 37 CFR 3.73(c) STATEMENTS
reexamination of a patent under 37 CFR 1.510
(MPEP § 2210). Where two or more purported assignees file
conflicting 37 CFR 3.73(c) statements in an
VIII. MULTIPLE ASSIGNEES application or other Office proceeding, the Director
will determine which, if any, purported assignee will
When an assignee seeks to take action in a matter be permitted to control prosecution of the
before the Office with respect to a patent application, application. 37 CFR 3.73(c)(3). Additionally, if the
patent, or reexamination proceeding and the right, ownership established as controlling is contested on
title, and interest therein is held by more than one the record by another party who has submitted a
assignee, each partial assignee must provide a conflicting 37 CFR 3.73(c) statement, then the
submission under 37 CFR 3.73(c). In each application or other proceeding shall be forwarded
submission, the extent of each assignee’s interest by the Office official in charge of the application or
must be set forth so that the Office can determine other proceeding to the Office of Patent Legal
whether it has obtained action by the entirety of the Administration for resolving any procedural issues.
right, title and interest holders (owners). 37 CFR Generally, where there are two or more conflicting
3.73(c)(2)(i). Where there are unspecified 37 CFR 3.73(c) statements in an application, the
percentages of ownership, each partial assignee must applicant will be permitted to conduct the
submit a statement identifying the parties including prosecution, and the other party that submitted a 37
inventors who together own the entire right, title and CFR 3.73(c) statement to establish its ownership
interest and state that all the identified parties own may wish to consider filing its own application.
the entire right, title and interest. 37 CFR
3.73(c)(2)(ii). If the extent of the partial assignee’s X. FORMS
ownership interest is not set forth in the submission
under 37 CFR 3.73(c), the Office may refuse to Form PTO/AIA/96 may be used to establish
accept the submission as an establishment of ownership under 37 CFR 3.73(c).
ownership interest.