M.P.E.P. 300 Ownership and Assignment

Question 1

INVENTORSHIP v. Ownership

Answer 1

Inventorship:

1. The Patent must be applied for in the name of the true inventors.
2. If wrong, the Patent is invalid unless correctable and corrected.
3. Can be excluded from participation if assigned and owner request.
4. Patent Office can determine through derivation.
5. Must be a human.

Question 2

Inventorship v. OWNERSHIP

Answer 2

Ownership:

1. A Patent can be bought, sold or transferred.
2. Cannot affect validity but can determine enforceability.
3. Patent Office cannot determine – only courts/agreement.
4. Can be any legal entity.

Question 3

Legal Requirement of an Assignment

Answer 3

In writing

**Recording is voluntary but recommended

Question 4

Requirements of Recording an Assignment

Answer 4

1. In English
2. Identify all patents/applications assigned by number
   OR
   In case of filed with application, by date of oath or declaration, name of each inventor and title
   OR
   In case of Provisional, the title and name of each inventor.
3. Correct Fee
4. Legible and on one side of paper
5. Original or Certified Copy
   AND
6. Cover Sheet

Question 5

What must be in an Assignment Cover Sheet?

Answer 5

1. Name of conveying party;
2. Name and address of receiving party;
3. A description of interest conveyed;
4. Each patent/application number involved;
5. The name and address to which correspondence should be sent;
6. Number of Patents/Applications AND fee amount;
7. The date the document was executed;
8. A statement that the information on the cover sheet is correct.
   AND
9. Signature of submitting party.

Question 6

When are Assignments available to the public?

Answer 6

When they pertain to issue patents

If the document is available

Question 7

When do Assignments carry over?

Answer 7

For Continuations, Divisional, and Replacement utility applications.

NOT CIPs

Question 8

Consequences of Recording

Answer 8

A second buyer takes title to a patent over a first buyer IF:

1. The first fails to record the assignment within 3 months (90 days) or prior to the second assignment, whichever is LATEST;
   AND
2. The second took for consideration;
   AND
3. The second did not know of the first sale.

Question 9

Joint Owners in the Absence of an Agreement

Answer 9

Each inventor has the right to carry out acts which would otherwise infringe the patent, without accounting to the other owners.

**Names must be provided.

Question 10

In order to convey legal title, an assignment must be in ____________________.

Answer 10

Writing

Question 11

A recorded document is available if ___________ of the patent properties assigned is or becomes an issued patent.

Answer 11

Any

Question 12

Anyone in the work can apply for a U.S. patent except

Answer 12

Patent Office Employees

Question 13

In order for a second purchaser to take title because of the first purchaser failing to record, the second purchaser must ______________ and ______________.

Answer 13

Take for consideration

Without notice of first sale.

Question 14

An assignment in a foreign language will not be accepted for recording unless __________.

Answer 14

A translation is provided.

Question 15

A the time the invention is made, it is owned by ___________ unless it was previously assigned.

Answer 15

The inventor.

Question 16

Are licenses recorded at the PTO?

Answer 16

Not typically

Question 17

When do you need a new assignment?

Answer 17

When there is something new added.

CIPs

Question 18

What about if you have a Foreign Filing date and there is a filed patent in between that and your US filing date?

Answer 18

Can be removed as prior art by submitting a translation of the Chinese application together with a statement that the translation is correct.