MPEP 300 Flashcards
Ownership and Assignment
Inventorship
patent must be applied for in the name of the true inventors
legal determination and cannot be changed by an agreement
if inventorship is wrong, then patent is invalid unless correctable
can be excluded from participation (if assignee and owner requests)
must be human
Ownership
owns the patent (can be sold bought transferred like property)
cannot affect the validity but can determine enforceability
control patent and prosecution. can exclude inventor
USPTO cannot determine - only the courts
can be any legal entity such as a partnership or corporation
Requirements for Recording
- Be in english or have an english translation
- identified all patents assigned by # and applications by #, (anything that it relates to in detail)
- Fee (only if submitted on paper)
- Be legible and on one side of paper
- Original or certified copy
- Coversheet
NOTE: need any assignment recorded within 90 days
Just because it was recorded does NOT mean its valid/effective
Legal Requirements of an Assignment
MUST be written (does not need to be in english)
does not need to be recordable
NOTE: no oral agreements no handshake deals
When is a New Assignment Needed
Filing of CIP
Why? because it has new matter that was not covered originally
Coversheet Elements
- name of party conveying interest
- name and address of party receiving interest
- description of interest
- patents and application number against which the document is to be recorded
- name and address to correspondence
- Number of patents and application with Fee amount
- date of document
- statement disclosing correctness
- signature
Assignments Transfer and access
issued patents are available to public
pending and abandoned apps are not available (except with he same exceptions to confidentiality which apply to the applications they assign)
Carry over for provisional, continuations, divisional, and replacement utility applications
Consequences of Recording
A second buyer takes title to a patent over a first buyer if
- failure to record assignment within (3) month period or before 2nd assignment
- 2nd buyer transferred by will
- 2nd buyer bought without notice of 1st sale
What needs to be recorded
changes of names
applies to assignments grants or conveyances
ANYTHING that affects teh title must be recorded
if no assignee everyone is a joint owner
License
Rental agreement
if the assignment changes and someone is licensing it then the only thing that changes would be the person/entity they write the royalty checks to (does not need to be recorded)
Note: why don’t they need to be recorded? bc they do not affect the ownership/title
Consideration
no exchange of value
bequest does not trigger a transfer
bequest means legacy/will
