Comments on: Ownership and Assignment (MPEP 300)

By: LyleGravatt

LyleGravatt — Sun, 05 Feb 2012 20:29:58 +0000

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.”

By: LyleGravatt

LyleGravatt — Sun, 05 Feb 2012 20:12:47 +0000

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

By: LyleGravatt

LyleGravatt — Sun, 05 Feb 2012 20:05:59 +0000

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.”

By: LyleGravatt

LyleGravatt — Sun, 05 Feb 2012 19:39:06 +0000

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.”

By: LM

LM — Fri, 18 Feb 2011 00:59:08 +0000

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.

By: little yellow duck

little yellow duck — Thu, 17 Feb 2011 19:57:25 +0000

what “date of execution” means? issuing date?

By: s

Fri, 05 Mar 2010 21:28:13 +0000

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,

By: Chris Barden

Chris Barden — Wed, 29 Apr 2009 18:31:44 +0000

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

By: Sean

Sean — Sat, 11 Apr 2009 19:47:03 +0000

It makes perfect sense. Thank you so much!

By: Fred Durst

Fred Durst — Sat, 11 Apr 2009 01:51:36 +0000

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.