Q) Assignment

by patentbar on August 18, 2008 · 22 comments

in Exam Questions

Question 1

Which documents can an assignee not of record sign?  One question was, what things can an assignee sign, if he has never properly recorded his ownership?

Answer: Small Entity Status only

MPEP 324 VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED

Examples of situations where ownership need not be established under 37 CFR 3.73(b) are when the assignee: signs a request for a continued prosecution application under 37 CFR 1.53(d), where papers establishing ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed ( MPEP § 201.06(d)); signs a small entity statement ( MPEP § 509.03); signs a statement of common ownership of two inventions ( MPEP § 706.02(l)(2)); signs a NASA or DOE property rights statement ( MPEP § 151); signs an affidavit under 37 CFR 1.131 where the inventor is unavailable ( MPEP § 715.04); signs a certificate under 37 CFR 1.8 ( MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 ( MPEP § 2210).

Question 2

Facts: Assignment to practitioner then inventor dies

(I said practitioner may continue because of the partial interest)

Question 3

If inventors A, B assign their interests away to different companies, and then inventors C, D come along and want to be added? It was a bit of a mess, the situation, and I concluded on my quick searches and readings in the MPEP that because there was no agreement between the inventors, they could not add them. Anyone know this question or can recall better than me?

{ 22 comments… read them below or add one }

1 DoubleONo Gravatar June 9, 2009 at 1:19 pm

With regard to Question 3, compare 37 CFR 1.48, see the relevant bits below. All previously named and would-be inventors have to state that there was no deceptive intent, in addition, written consent of any assignee(s) of the original inventors is needed.

Relevant excerpts 1.48:
….
(a) Nonprovisional application after oath/declaration filed:

Amendment of the inventorship requires:

(2) A statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;

(5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

Full text:

§1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116.
(a)
Nonprovisional application after oath/declaration filed. If the inventive entity is set forth in error in an executed § 1.63 oath or declaration in a nonprovisional application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the inventorship of the nonprovisional application may be amended to name only the actual inventor or inventors.

Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;

(2) A statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;

(3) An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by § § 1.42, 1.43 or § 1.47;

(4) The processing fee set forth in § 1.17(i); and

(5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

(b)
Nonprovisional application — fewer inventors due to amendment or cancellation of claims. If the correct inventors are named in a nonprovisional application, and the prosecution of the nonprovisional application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed in the nonprovisional application, an amendment must be filed requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed. Amendment of the inventorship requires:
(1)
A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the named inventor or inventors being deleted and acknowledges that the inventor’s invention is no longer being claimed in the nonprovisional application; and
(2)
The processing fee set forth in § 1.17(i).
(c)
Nonprovisional application — inventors added for claims to previously unclaimed subject matter. If a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. Amendment of the inventorship requires:
(1)
A request to correct the inventorship that sets forth the desired inventorship change;
(2)
A statement from each person being added as an inventor that the addition is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his or her part;
(3)
An oath or declaration by the actual inventors as required by § 1.63 or as permitted by § § 1.42, 1.43, or § 1.47;
(4)
The processing fee set forth in § 1.17(i); and
(5)
If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).
(d)
Provisional application — adding omitted inventors. If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names of the omitted inventor or inventors. Amendment of the inventorship requires:
(1)
A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the inventor or inventors being added and states that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and
(2)
The processing fee set forth in § 1.17(q).
(e)
Provisional application — deleting the name or names of the inventor or inventors. If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Amendment of the inventorship requires:
(1)
A request to correct the inventorship that sets forth the desired inventorship change;
(2)
A statement by the person or persons whose name or names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons;
(3)
The processing fee set forth in § 1.17(q); and
(4)
If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter). (f)(1) Nonprovisional application — filing executed oath/declaration corrects inventorship. If the correct inventor or inventors are not named on filing a nonprovisional application under § 1.53(b) without an executed oath or declaration under § 1.63 by any of the inventors, the first submission of an executed oath or declaration under § 1.63 by any of the inventors during the pendency of the application will act to correct the earlier identification of inventorship. See § § 1.41(a)(4) and 1.497(d) and (f) for submission of an executed oath or declaration to enter the national stage under 35 U.S.C. 371 naming an inventive entity different from the inventive entity set forth in the international stage.
(2)
Provisional application — filing cover sheet corrects inventorship. If the correct inventor or inventors are not named on filing a provisional application without a cover sheet under § 1.51(c)(1), the later submission of a cover sheet under § 1.51(c)(1) during the pendency of the application will act to correct the earlier identification of inventorship.
(g)
Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.
(h)
Reissue applications not covered. The provisions of this section do not apply to reissue applications. See § § 1.171 and 1.175 for correction of inventorship in a patent via a reissue application.
(i)
Correction of inventorship in patent. See § 1.324 for correction of inventorship in a patent.
(j)
Correction of inventorship in a contested case before the Board of Patent Appeals and Interferences. In a contested case under part 41, subpart D, of this title, a request for correction of an application must be in the form of a motion under § 41.121(a)(2) of this title and must comply with the requirements of this section.

Reply

2 CWNo Gravatar June 12, 2009 at 1:00 pm

Question 1:
The fact pattern in the question that I got made it clear that the assignee not of record, was not making themselves of record concurrently with the request. As such SE status would not be correct. Here is a cross-post
——————
The correct answer was an assignee, not of record, can request status of an application.

Anyone can request status of an application (not that they will get it).

However, if you look at small entity requirements, 37 CFR 1.27 (c)(2), it provides for (i) attorney/agent of record (ii) inventor (iii) assignee of entire interest. The key is that the assignee section links to 37 CFR 3.73(b), and if you read that section it is clear that an assignee needs to establish its ownership to the satisfaction of the Director…

Reply

3 Min009No Gravatar December 4, 2009 at 7:32 pm

But 1.27(c)(2) reads ‘3.73(b) notwithstanding’ so in my opinion no need to establish ownership along with the small entity assertion as long as it is an assignee of the entire interest. If it is a part interest assignee then ‘needs to resort to a person listed in 1.33(b)’.

Reply

4 GoJacketsNo Gravatar December 11, 2009 at 11:28 am

Like Min009, I do not agree with CW.

3.73(b) lays out the procedure an assignee must go through to establish ownership. MPEP 324 Section VI lays out those situations when ownership must be established by the assignee to act (i.e., when 3.73(b) must be complied with). But then MPEP 324 Section VII discusses those situations when one does not have to establish ownership (i.e., when one does not have to comply with 3.73(b) before acting). My understanding is that an assignee only has to make himself of record “concurrently with the request” under 3.73(b) in those situations where taking action DOES require ownership. If, under 324 Section VII, ownership is not required to, e.g., sign a small entity statement, then you don’t need to make yourself of record under 3.73(b) when doing that.

As to the proffered correct answer that one can request status even if they are not of record, I’m not sure I buy the supporting logic (i.e., that is the right answer because anyone can request status (not that they will get it) By that logic, any answer would be right because anyone can send a piece of mail or place a phone call to the PTO and be turned away. I would think the question was asking “which of the following can an assignee not of record do SUCCESSFULLY.”

Reply

5 GoJacketsNo Gravatar December 11, 2009 at 11:29 am

EDIT: “If THE ASSIGNEE is not required to…”

Reply

6 ABNo Gravatar December 12, 2009 at 4:25 pm

VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED

Examples of situations where ownership need not be established under 37 CFR 3.73(b) are when the assignee: signs a request for a continued prosecution application under 37 CFR 1.53(d), where papers establishing ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed ( MPEP § 201.06(d)); signs a small entity statement ( MPEP § 509.03); signs a statement of common ownership of two inventions ( MPEP § 706.02(l)(2)); signs a NASA or DOE property rights statement ( MPEP § 151); signs an affidavit under 37 CFR 1.131 where the inventor is unavailable ( MPEP § 715.04); signs a certificate un­der 37 CFR 1.8 ( MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 ( MPEP § 2210).

Reply

7 SNo Gravatar June 5, 2010 at 6:58 am

Got this – Small entity statement

Reply

8 AnneNo Gravatar January 19, 2011 at 10:02 pm

Got Q1 and Q3 today.
Also saw a questions what are necessary documents required for assignment recordation- among the answer choices, a copy of assignment/extract and a original copy of assignment/extract.

Reply

9 VeNo Gravatar January 27, 2011 at 12:10 pm

Got q1 today. Small entity

Reply

10 ELSNo Gravatar March 7, 2011 at 11:08 am

Got Question 1 yesterday. Chose small entity.

Reply

11 BeckerNo Gravatar May 17, 2011 at 3:18 pm

I got this question 5/16/2011.

Reply

12 FredsNo Gravatar June 2, 2011 at 1:55 am

Assignee can sign
1) Small Entity establishment
2) Non publication request under 122(b)

and submit information solicited by the examiner per 1.105

Reply

13 zaoNo Gravatar June 12, 2011 at 3:30 pm

could anybody clarify question 3 above? is the answer correct …meaning since there was no agreement between inventors, the new inventors cannot be added? thanks

Reply

14 BigBadVoodoDaddyNo Gravatar July 11, 2011 at 6:21 pm

I think per 1.48 (a) – inventorship was incorrect to begin with, all the assignees have to consent, then the inventors themselves must sign the oaths listing the other inventors, and all statements and fees etc. If all this happens, no problems, however if the original inventors refuse, then the assignees can resort to 1.47 and then prosecute the application. If this happens on a reissue oath (see MPEP 1412.04) 1.47 still applies to the assignee. The assignee must always consent pretty much no matter what.

Reply

15 maggieNo Gravatar November 15, 2011 at 5:19 pm

Question 1 reported recently May/March 2011
Which documents can an assignee not of record sign?
Answer: Small Entity Status only

Reply

16 SteveNo Gravatar April 1, 2012 at 8:34 am

In a conditional assignment, where the inventor assigns all right and title for guaranteed payment with full control of the same company he assigns the patent to. In the end, inventor trashes the company, breaks his fiduciary oath, takes over $100k from investors and tries to start another company. After resigning and leaving the company, has gone to the patent office and fraudulently consented on the part of the assignee to have the rights put back in his name. I know the USPTO is not a legal entity only a repository, but in court, what are the ramifications of this type of fraudulent activity.

Reply

17 MirandaNo Gravatar April 1, 2012 at 4:56 pm

Rest assured that will not be a fact pattern on the patent bar. sounds more like a homework question from a patent law class.

Reply

18 SolNo Gravatar April 7, 2012 at 4:22 am

No worries, Patent Bar exam will not deal with anything (almost) outside USPTO. You can forget court at the moment.

Reply

19 MarvNo Gravatar May 14, 2012 at 6:47 pm

What happens to power of attorney when inventor dies whose a 50% assignee?

Reply

20 jkpatentlawNo Gravatar June 13, 2012 at 12:30 am

The POA that a deceased inventor signs is terminated. If the deceased inventor has executors of his estate, then they can sign a new POA and continue prosecution until/unless the assignees intervene.

If the deceased inventor assigned part of the interest to his attorney, then the POA does not terminate and prosecution can continue because the attorney has an interest in the application.

Reply

21 TakingittomorrowNo Gravatar September 23, 2012 at 6:28 pm

Got this question or variant. Know about what someone can do if they have a partial interest, full interest, or are the heirs of a deceased inventor. Also, what happens when you file a RCE or continuation, CIP, or divisional, what happens to the assignee?

Reply

22 Sept. 2012No Gravatar September 23, 2012 at 7:57 pm

would you suggest trying to memorize the general concepts of these, or are the questions more detailed, which would require careful searching through MPEP Ch. 300?

Reply

Leave a Comment

Previous post:

Next post: