325 Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012
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[Editor Note: Applicable to patent applications under 35 U.S.C. 111(a), 363, or 385 on or after September 16, 2012. See pre-AIA 37 CFR 3.71 for the rule otherwise applicable.]
(a) Patents—conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may conduct prosecution of a national patent application as the applicant under § 1.46 of this title, or conduct prosecution of a supplemental examination or reexamination proceeding, to the exclusion of the inventor or previous applicant or patent owner. Conflicts between purported assignees are handled in accordance with § 3.73(c)(3).
(b) Patents—assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent as the applicant under § 1.46 of this title or a supplemental examination or reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and interest in the application or patent, or
(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent, who together own the entire right, title and interest in the application or patent. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent. The word "assignee" as used in this chapter means with respect to patent matters the single assignee of the entire right, title and interest in the application or patent if there is such a single assignee, or all of the partial assignees, or all of the partial assignee and inventors who have not assigned their interest in the application or patent, who together own the entire right, title and interest in the application or patent.
(c) Patents—Becoming of record. An assignee becomes of record as the applicant in a national patent application under § 1.46 of this title, and in a supplemental examination or reexamination proceeding, by filing a statement in compliance with § 3.73(c) that is signed by a party who is authorized to act on behalf of the assignee.
(d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111(a), 363 or 385 on or after September 16, 2012. See pre-AIA 37 CFR 3.73 for the rule otherwise applicable.]
(a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
(2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(c)
(1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).(2) If the submission is by an assignee of less than the entire right, title and interest (e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:
(i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
(ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties own the entire right, title and interest.(3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application.
(d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(1) Including a statement that the person signing the submission is authorized to act on behalf of the assignee;
(2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
(3) For patent matters only, being signed by a practitioner of record.
The owner or assignee of a patent property can take action in a patent application as the applicant.
As the applicant, the owner or assignee that is not a juristic entity can sign the following:
- a reply to an Office action,
- a request for a continued prosecution application,
- a disclaimer,
- Fee(s) Transmittal,
- or a request for status of an application.
I. THE ASSIGNEE/OWNER THAT CAN TAKE ACTION IN PATENT MATTERS
The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment.
The assignee(s) who may conduct either the prosecution of a national application for patent as the applicant or a supplemental examination or reexamination proceeding are:
- a single assignee who is the assignee of the entire right, title and interest in the application or patent,
- or all partial assignees,
- or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent, who together own the entire right, title and interest in the application or patent
A. Individual and Partial Assignees
If there is a single assignee of the entire right, title and interest in the patent application, the single assignee (i.e., individual assignee) may act alone to conduct the prosecution of an application or other patent proceeding.
Where at least one inventor retains an ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application, unless one or more inventors have refused to join in the filing of the application and a petition has been granted.
Where a reissue application is filed to correct inventorship in the patent by the deletion of the name of inventor X and inventor X has not assigned his/her rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the filing of the reissue application, even though inventor X is being deleted; however, inventor X need not sign the reissue oath or declaration. If inventor X has assigned his/her rights to the patent, then inventor X’s assignee must consent to the filing of the reissue application.
II. ESTABLISHING OWNERSHIP
When an assignee who is not the original applicant first seeks to take action in a matter before the Office with respect to a patent application filed on or after September 16, 2012, the assignee must establish its ownership of the property to the satisfaction of the Director.
The transfer of ownership by an assignment must be in writing.
III. CONTINUING APPLICATIONS
When an assignee files a continuing application, the application papers must:
- contain a copy of a statement filed in the parent application; or
- contain a newly executed statement.
When a CPA is filed in a design application, the statement filed in the parent application will serve as the statement for the CPA.
IV. REQUESTS FOR CONTINUED EXAMINATION
Where a Request for Continued Examination (RCE) of an application is filed, the application is not considered to be abandoned; rather the finality of the Office action is withdrawn and the prosecution continues.
V. PARTY WHO MUST SIGN
The submission establishing ownership must be signed by a party authorized to act on behalf of the assignee.
The submission may be signed on behalf of the assignee in the following manner if the assignee is an organization (e.g., corporation, partnership, university, government agency, etc.):
- The submission may be signed by a person in the organization having apparent authority to sign on behalf of the organization.
- An officer (chief executive officer, president, vice-president, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization.
- The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director.
- Modifications of these basic titles are acceptable, such as vice-president for sales, executive vice-president, assistant treasurer, vice-chairman of the board of directors.
- In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer and is presumed to have the authority to sign on behalf of the organization.
- A person having a title (administrator, general counsel) that does not clearly set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee.
- A power of attorney to a patent practitioner to prosecute a patent application executed by the applicant or the assignee of the entire interest does not make that practitioner an official of an assignee or empower the practitioner to sign the submission on behalf of the assignee.
- The submission may be signed by any person, if the submission sets forth that the person signing is authorized (or empowered) to act on behalf of the assignee
- The submission may be signed by a patent practitioner of record.
- The submission may be signed by a person empowered by an organizational resolution (e.g., corporate resolution, partnership resolution) to sign the submission on behalf of the assignee, if a copy of the resolution is, or was previously, submitted in the record.
Where a submission does not comply with the above criteria, evidence of the person’s authority to sign will be required.
When a person with a title that does not clearly set forth that person as an officer of the assignee is authorized to act on behalf of the assignee, the submission should clearly indicate that person's authority.
VI. WHEN OWNERSHIP MUST BE ESTABLISHED
Examples of situations where ownership must be established are when the assignee who is not the applicant:
- signs a request for status of an application or gives a power to inspect an application;
- appoints its own registered attorney or agent to prosecute an application;
- signs a disclaimer;
- consents to the filing of a reissue application;
- or signs a Fee Transmittal.
Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.
VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED
Examples of situations where ownership need not be established are when the assignee:
- signs a small entity statement;
- signs a statement of common ownership of two inventions;
- signs a NASA or DOE property rights statement;
- signs an affidavit under where the inventor is unavailable;
- signs a certificate;
- or files a request for reexamination of a patent.
VIII. MULTIPLE ASSIGNEES
When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission.
In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners).
IX. CONFLICTING 37 CFR 3.73(c) STATEMENTS
Generally, where there are two or more conflicting statements in an application, the applicant will be permitted to conduct the prosecution, and the other party may wish to consider filing its own application.
