Ownership and Assignment (MPEP 300)

by patentbar on March 4, 2007 · 13 comments

in MPEP 0300

Patents are intangible property and personal property. They can be assigned or licensed by submitting/filing a notarized document (recording the assignment) to the USPTO. (An assignment must be recorded within 3 mos. with the USPTO from the date of execution.)

Assignability of Patents and Applications
The rights of a patent or pending patent may be assigned to another party of the United States by means of a notarized document. The assignment is void unless it is recorded at the PTO within 3 months of its execution.

Barring any agreement to the contrary, each of the joint owners of a patent may exercise the rights of a patent holder without the consent or accounting to the other owners.

Accessibility of Assignment Records
All assignment documents relating to patents and registrations of trademarks are open to public inspection. Assignment records of pending or abandoned patent applications generally are not available to the public and may only be viewed upon written consent of the applicant or assignee.

Recording of Assignment Documents
Assignments of applications, patents and trademark registrations will be recorded in the PTO. Each applicant must:

  • Provide an original or certified true copy of the assignment
  • Provide an English language translation signed by the translator if the assignment is in a foreign language
  • Include all appropriate fees
  • Provide a cover sheet for each assignment

Facsimile Submission of Assignment Documents
The PTO permits assignments and other documents affecting title via facsimile. The date of receipt is the date the complete transmission is received in the PTO. Any assignment related document submitted by facsimile must include:

  • An identified application or patent number
  • One cover sheet to record a single transaction
  • Payment of the recordation fee by a PTO deposit account

The following documents cannot be submitted by facsimile:

  1. Assignments submitted concurrently with newly filed patent applications
  2. Documents with two or more cover sheets
  3. Requests for corrections to previously recorded documents
  4. Requests for “at cost” recordation services
  5. Documents with payment of the recordation fee by credit card

Amendments and assignment documents can be submitted with fax. new applications cannot be filed via fax, and an assignment filed concurrently with a new application cannot be filed via fax. Documents with multiple cover sheets cannot be faxed, corrections to already filed documents cannot be faxed, and payment via credit card cannot be faxed. You must have a PTO serial number for the application and PTO deposit account to fax. Fax must include the single cover sheet, the serial number and deposit number.

Assignment of Divisional, Continuation, Substitute, Continuation-In Part and Provisional Applications
In the case of a division or continuation, a prior assignment recorded against the original application is applied. A prior assignment of the original application is not applied to the substitute or continuation-in part application. When a perfected application based on a provisional application contains subject matter not disclosed in the provisional application, a new assignment must be submitted with respect to this later application.
Basically, If you add new matter, you need a new assignment.

Restrictions on PTO Employees
Employees of the PTO shall be incapable, during the period of their appointment and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any rights or interest in any patent, issued or to be issued by the PTO.

{ 13 comments… read them below or add one }

1 patentbarNo Gravatar December 4, 2007 at 11:35 pm

On the exam: Can part of assignment doc. be opened to public? [MPEP 301]
Yes, All assignment documents relating to patents and registrations of trademarks are open to public inspection. Assignment records of pending or abandoned patent applications generally are not available to the public and may only be viewed upon written consent of the applicant or assignee.

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2 LyleGravattNo Gravatar February 5, 2012 at 3:05 pm

To the contrary, M301.01 [R-8], 2nd para: “The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open.”

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3 Fred DurstNo Gravatar March 21, 2009 at 3:30 pm

The statement above that an “assignment is void unless it is recorded at the PTO within 3 months of its execution” is incorrect.

According to 35 U.S.C. 261, Para. 4., it is not that the assignment is void if not recorded, it is void against a subsequent purchaser for value w/o notice of the unrecorded interest. In other words, the assignment is perfectly valid, except against a purchaser for value w/o notice of the unrecorded interest.

There is a big difference.

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4 SeanNo Gravatar April 10, 2009 at 1:47 pm

Fred Durst – pls elaborate. Thanks.

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5 Fred DurstNo Gravatar April 10, 2009 at 9:51 pm

Very well.

The statement I disagree with is “The assignment is void unless it is recorded at the PTO within 3 months of its execution.”

This is an incorrect statement of law. Assignments of U.S. Patents do not, I repeat, do not have to be recorded or they are void. On the contrary, assignments are perfectly valid and legally enforceable without being recorded at the PTO.

That being said, recording does have a rather large benefit. Recording cutsoff the right of a subsequent purchaser for value, without notice of your interest, from taking the assignment. In fact, recording is considered to constructive notice to the world of your assignment, therefore, a subsequent assigneed cannot take “without notice.”

Hence the language, “shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office” (found in 35 U.S.C. Section 261) means that an assignment is void against a subsequent purchaser who takes without notice unless that assignment is recorded.

The purpose of this statute, like most recording acts, is to cutoff the rights of subsequent purchasers and thereby reward those who record; it is not an absolute mandate that assignments are void unless they are recorded. There is a considerable difference between the two statements in the preceeding sentence separated by a semicolon.

I hope this makes sense.

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6 LyleGravattNo Gravatar February 5, 2012 at 2:39 pm

I agree with all of the above – 35 USC 261 is a constructive notice of assignment to subsequent purchasers. But I’d like to point out that the constructive notice applies in TWO instances: (1) assignment is USPTO recorded w/in 3 months of its date of execution OR (2) assignment is recorded prior to date of subsequent purchase.

35 USC 261, last para: “An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.”

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7 SeanNo Gravatar April 11, 2009 at 3:47 pm

It makes perfect sense. Thank you so much!

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8 Chris BardenNo Gravatar April 29, 2009 at 2:31 pm

A surprising number of MPEP 300 questions on the exam I took in Apr 2009. They involved
- issuing patent in the name of the assignee
- what actions can assignee take in the application if not recorded
- public access to records (what kinds of parent application recordations are open in divisional, CIP, etc.)
- records that refer to even one patent or published application will be open to the public, even if they make reference to applications not yet open to the public (i.e. no attempt to redact recordations)
- when must a new recordation be filed in a daughter application

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9 LyleGravattNo Gravatar February 5, 2012 at 3:29 pm

Re: What actions can assignee take in the application if not recorded?

37 CFR 3.73(b): “In order to request or take action in a patent matter, assignee must establish its ownership…”

37 CFR 3.73(c)(1): “Establishment of ownership by assignee must be submitted prior to, or at same time as, paper requesting or taking action is submitted.”

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10 sNo Gravatar March 5, 2010 at 5:28 pm

when must a new recordation be filed in a daughter application?

This is a question asked in one of the previous exams(if worded properly).

What would the answer be? I don’t seem to find it.

Thanks,

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11 LyleGravattNo Gravatar February 5, 2012 at 3:12 pm

M306 [R-8] Assignments in Relation to Parent Application

Divisional or Continuation Application: parent’s recorded assignment is applied to subsequent applications which claim benefit of priority

Substitute Application or CIP: parent’s recorded assignment is not applied to substitute nor CIP; must record new assignment

Application Claiming Benefits of Provisional Application: if application includes only provisional application subject matter, assignment recorded against provisional application will be effective in later application; if new matter is introduced, then new assignment recordation is necessary

As mentioned above – if new matter is introduced, then new assignment recordation is necessary

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12 little yellow duckNo Gravatar February 17, 2011 at 2:57 pm

what “date of execution” means? issuing date?

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13 LMNo Gravatar February 17, 2011 at 7:59 pm

little yellow duck:

‘date of execution’ means the date of signing of assignment document. When Inventor assigns his rights in his invention to other person, the date when such assignment take place by way of signing a contract of assignment that is called ‘date of execution’ of that assignment.

LM

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