MPEP 300- 3 ring binder Flashcards
At the time the invention comes into existence, it is OWNED BY …as a matter of law
The INVENTOR(S)
The Patent Office can determine INVENTORSHIP through….
DERIVATION
Pre-AIA- INTERFERENCE could determine inventorship
The Patent Office can determine OWNERSHIP through….
Patent Office CANNOT determine ownership (only courts can)
In order to convey legal title, an ASSIGNMENT must…
…be in WRITING
Need not be in English or RECORDABLE to legally transfer title
Is it required to RECORD an assignment or other transfer of interest in patents/patent apps?
No, not required
However, assignment that also includes the “DECLARATION” statements of an inventor MUST be recorded in order to take effect (and PTO needs to be made aware that such statements are present in the assignment)
Why SHOULD (NOT REQUIRED) an assignment or other transfer of interest be RECORDED?
PROTECTS the BUYER against subsequent transfers of the same interest by the same seller (as long as purchaser paid for the assignment and took WITHOUT NOTICE of any prior interests)
What is required for a document to be RECORDABLE?
- MUST be in ENGLISH or accompanied by an English TRANSLATION (MPEP 302.02)
- Must IDENTIFY…. (MPEP 302.03)
- Patents/Patent applications- assigned by NUMBER (if known)
- If assignment is file with the application: identify by DATE of execution or OATH/declaration, name of each INVENTOR, and TITLE of application
- If PROVISIONAL- by TITLE of application and name of each INVENTOR - Correct FEE ($0 if submitted electronically)
- Be LEGIBLE and on only ONE SIDE of the paper
- Be an ORIGINAL or CERTIFIED copy (MPEP 302.01)
- Be accompanied by a COVER SHEET (MPEP 302.07)
1. NAME of party conveying interest
2. NAME and ADDRESS of party receiving interest
3. DESCRIPTION of interest conveyed
4. Each patent and application NUMBER
5. NAME and ADDRESS to which CORRESPONDENCE should be sent
6. NUMBER of patents/applications and FEE AMOUNT
7. DATE document was EXECUTED
8. STATEMENT that the information on the cover sheet is correct
9. SIGNATURE of the party SUBMITTING
What must the COVER SHEET contain when RECORDING a transfer of interests?
MPEP 302.07
- NAME of party conveying interest
- NAME and ADDRESS of party receiving interest
- DESCRIPTION of interest conveyed
- Each patent and application NUMBER
- NAME and ADDRESS to which CORRESPONDENCE should be sent
- NUMBER of patents/applications and FEE AMOUNT
- DATE document was EXECUTED
- STATEMENT that the information on the cover sheet is correct
- SIGNATURE of the party SUBMITTING
When do ASSIGNMENTS carry over into other applications?
CARRY OVER from PARENT or PROVISIONAL to..
- CONTINUATIONS
- DIVISIONALS
- REPLACEMENT utility applications
DO NOT CARRY OVER FOR:
- CIPs (need fresh assignment)
Who is FORBIDDEN from ACQUIRING INTEREST in a patent?
EMPLOYEES of the PATENT OFFICE
- during employment plus one year afterwards
- Except by inheritance or bequest
Circumstances for 2nd BUYER TAKING TITLE over 1st buyer?
MPEP 301
- 1st buyer DOESN’T RECORD with 3 MONTHS or PRIOR to 2nd assignment (whatever is later)
- SECOND buyer took FOR CONSIDERATION (not gift or by will)
- 2nd buyer PURCHASED WITHOUT NOTICE (did not know of 1st sale)
Are LICENSES recordable?
(MPEP 313)
Typically NOT recorded as the DO NOT CONVEY TITLE
MPEP 313 only applies to ASSIGNMENTS, GRANTS or CONVEYANCES
Can changes of NAMES of ASSIGNEES recorded?
MPEP 314
YES, because it can effect title
JOINT OWNERS- rights of each?
35 USC 262
Can carry out acts which would otherwise infringe the patent, without accounting to the other owners
Can JOINT RESEARCH AGREEMENTS be recorded?
MPEP 302.07
Yes.
Names of each parry to the agreement must be indicated
