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MPEP > MPEP 300 > Flashcards

MPEP 300 Flashcards

1
Q

301 Ownership/Assignability

35 U.S.C. 261 Ownership; assignment
35 U.S.C. 262 Joint owners

A

35 U.S.C. 261 Ownership; assignment
35 U.S.C. 262 Joint owners
- each of the joint owners of a patent may make, use, offer to sell, or sell the
patented invention within the US, without the consent of and without accounting to the other owners.

Ownership; after 9/16/2012, the applicant is the owner of the application; before 9/16/2012, the named inventor is the owner.

Assignment: the transfer to another of a party’s entire/ or a percentage of ownership interest in the patent or application.

  • 2 ways of assignment, for 2 purposes.
    • assignment made of record in the assignment records of the Office > legal notice to the public.
    • made of record in the application file. necessary to permit the assignee to take actions in the application.
  • assignment may be utilized as the oath or declaration.
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2
Q

301.01 Accessibility of Assignment Records

37 CFR 1.12 Assignment records open to public inspection

A
  • Assignment documents are open to public inspection.
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3
Q

302.01 Assignment Document Must Be Copy
for Recording

37 CFR 3.24 Requirements for documents and cover sheets relating to patents and patent applications

302.02 Translation of Assignment Document

302.03 Identifying Patent or Application
37 CFR 3.21 Identification of patents and patent applications

302.04 Foreign Assignee May Designate Domestic Representative
35 U.S.C. 293 Nonresident patentee; service and notice
37 CFR 3.61 Domestic representative.

302.05 Address of Assignee

302.06 Fee for Recording
37 CFR 3.41 Recording fees.

302.07 Assignment Document Must Be Accompanied by a Cover Sheet
37 CFR 3.28 Requests for recording
37 CFR 3.31 Cover sheet content.

A
  • An assignment relating to a patent must identify the patent by the patent number
  • If the request to record a document is submitted electronically, the fee is $0.
  • Each document submitted to the Office for recording must include a single cover sheet
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4
Q

302.08 Mailing Address for Submitting

Assignment Documents

A

37 CFR 3.27 Mailing address for submitting documents to be recorded

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5
Q

302.09 Facsimile Submission of Assignment Documents

A

Assignments and other documents affecting title may be submitted to the Office via facsimile (fax)

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6
Q

302.10 Electronic Submission of Assignment Documents

A

37 CFR 1.4 Nature of correspondence and signature requirements

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7
Q

303 Assignment Documents Not Endorsed on Pending Applications

A

Certified copies of patent applications as filed do not include an indication of assignment documents.

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8
Q

306 Assignment of Division, Continuation,
Substitute, and Continuation-in-Part in
Relation to Parent Application

306.01 Assignment of an Application
Claiming the Benefits of a Provisional
Application

A
  • In the case of a division or continuation application, a prior assignment recorded against the original application is applied to the division or continuation application.
  • In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute
    or continuation-in-part application.
  • if the claimed provisional application contains the subject matter includes in the later-filed application, then the assignment applies, as in the continuations & divisions.
  • If an application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded, unless the later application is filed on
    or after September 16, 2012 and the assignee is the original applicant therein.
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9
Q

307 Issue to Non-Applicant Assignee

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

37 CFR 3.81 Issue of patent to assignee

A
  • for a patent to issue to an assignee other
    than one who is the applicant in an
    application filed on or after 09/16/2012, a
    request for issuance of the application in the name of the assignee must be filed, before the issue fee is paid.
  • if after the issue fee paid, must file a request for a cert of correction (CFR 1.323) with the fees
  • unless an assignee’s name & address are in item 3 of the Fee Transmittal Form PTOL-85B, the patent will issue to the applicant.
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10
Q

308 Issue to Applicant ( after 9/16/2012)

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

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

A
  • CFR 1.46(b) if an application is made by a person other than the inventor, the ADS must specify the assignee.
  • evidence of ownership should be recorded before the issue fee is paid.
  • If a patent is granted on an application filed by a person other than the inventor, the patent shall be granted to the real party in interest.
  • the Office is requiring applicants other than the inventor to notify the Office
    of any change in the real party in interest in a reply to a notice of allowance.
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11
Q

309 Restrictions Upon Employees of USPTO

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

A
  • USPTO employees shall be incapable, during their employment and for 1yr thereafter, of applying for a patent.
  • and not entitled to any priority date earlier than 1 yr after their appointment.
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12
Q

310 Government License Rights to
Contractor-Owned Inventions Made Under Federally Sponsored Research and
Development

A

“Government License Rights” statement

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13
Q

313 Recording of Licenses, Security Interests, and Documents Other Than Assignments

A
  • upon request, assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents will be
    recorded in the Office.
  • other docs including license, security interest agreements.
  • attorney’s liens are NOT accepted.
  • petition under CFR 1.181 to request recordation of returned docs.
  • The recordation of a document is not a determination of the effect of the document on the chain of title.
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14
Q

314 Certificates of Change of Name or of

Merger

A

Certificates issued by appropriate authorities showing a change of name of a business or a merger of businesses are recordable.

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15
Q

315 Indexing Against a Recorded Certificate

A
  • even where a document has already been recorded, if a party wants recordation of that documents with respect to additional patents or applications, MUST resubmit a copy of that document, a cover sheet, the recording fee.
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16
Q

317 Handling of Documents in the

Assignment Division

A
  • examined by Assignment Division for formal requirements.
17
Q

317.01 Recording Date

37 CFR 3.51 Recording date

A
  • The date of recording of a document is the date the document meeting the requirements for recording
18
Q

317.02 Correction of Unrecorded Returned Documents and Cover Sheets

A
  • assignment docs returned will be stamped with the original date of receipt by the Office.
  • if the returned docs are corrected and resubmitted within the specified time, the Office will consider the Original date.
  • if not corrected and resubmitted within the specified time, the date of receipt will be the date of recording.
  • the resubmit period will NOT be extended.
19
Q

317.03 Effect of Recording

37 CFR 3.54 Effect of recording

37 CFR 3.56 Conditional assignments.

A
  • The recording of a document is not a determination by the Office of the validity.
  • Assignments which are made conditional are absolute assignments, until canceled by written consent of all parties, or by the decree of a court.
  • The Office does not determine if such conditions are fulfilled.
  • Assignment documents submitted for recording should not be placed in application or patent files, but should be forwarded to Assignment Division.
20
Q

320 Title Reports

A
  • title report: a form used by the Assignment Div to report inside the Office, the name of the owner of an application.
  • title report can NOT be ordered by applicants or attorneys.
21
Q

323 Procedures for Correcting Errors in

Recorded Assignment Doc

A
  • corrective document to fix errors in a recorded assignment doc;
  • a copy of the original assignment doc, with correction made within, initialed & dated.
  • a new cover sheet, identifies the submission as a corrective document.
22
Q

323.01 Correction of Error in Recorded
Cover Sheet

37 CFR 3.34 Correction of cover sheet errors.

A
  • (a) typo in the cover sheet: keep the date if not affecting title to patent or application; otherwise, change the date of recordation to the date the corrected cover sheet was received.
  • (b) Typo Errors in Recorded Assignment Document : must either create and record a new document or make corrections to the original document and re-record it.
23
Q

323.01 Correction of Error in Recorded
Cover Sheet

37 CFR 3.34 Correction of cover sheet errors.

A
  • (a) typo in the Cover Sheet: keep the date if the error not affecting title to the patent or application; otherwise, change the date of recordation to the date the corrected cover sheet was received.
  • (b) Typo errors in Recorded Assignment Document : must either create and record a new document or make corrections to the original document and re-record it.
  • (c) Error by another party against the owner’s application, the owner must correct the error by : 1 completed cover sheet identifying the application 2 an affidavit or declaration 3 fee
  • (d) Expungement of Assignment Records: link will be deleted but record doc will remain at the same reel & frame number.
24
Q

324 Establishing Right of Assignee To Take Action in Application Filed BEFORE September 16, 2012

37 CFR 3.71 (pre-AIA) Prosecution by assignee

A

before 9/16/2012
- single assignee can conduct prosecution of an application alone;
- if no assignee of the ENTIRE right, case A, all inventors needed to conduct; case B all partial assignees and inventors are needed to conduct.
- the assignee must establish its ownership by submitting “statement under 37 CFR 3.73(b)” or the “37 CFR 3.73(b) statement.”
- continuation, divisional, CIP all need a newly executed statement under
pre-AIA 37 CFR 3.73(b)
- a design application, a CPA, a RCE can use the statement in the parent application.

  • The submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. by CEO, president, VP; or a person is authorized/empowered to act on behalf of the assignee; or a person empowered by an organizational resolution.
  • for multiple assignees, each partial assignee must provide a submission that set forth the extent of interest, otherwise the Office may refuse.
  • Form PTO/SB/96 to establish
    ownership under pre-AIA 37 CFR 3.73(b)
25
Q

325 Establishing Right of Assignee To Take Action in Application Filed On or AFTER September 16, 2012

37 CFR 3.71 Prosecution by assignee.

37 CFR 3.73 Establishing right of assignee to take action.

A
  • Form PTO/AIA/96 may be used to establish

ownership under 37 CFR 3.73(c).

MPEP (4 decks)

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