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302    Recording of Assignment Documents

MPEP SECTION SUMMARY

Discusses recording assignment documents including translations, identifying the patent or application, cover sheets, and facsimile submissions.

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(a) Assignments of applications, patents, and registrations, and other documents relating to interests in patent applications and patents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31, will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in § 3.28 and § 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.
(c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part.

(a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12.
(b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register.


302.01   Assignment Document Must Be Copy for Recording

MPEP SECTION SUMMARY

The United States Patent and Trademark Office will accept and record only a copy of an original assignment or other document.

 

302.02   Translation of Assignment Document

MPEP SECTION SUMMARY

The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation.

 

302.03   Identifying Patent or Application

MPEP SECTION SUMMARY

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number).

An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number.

An assignment relating to an international design application which designates the United States of America must identify the international design application by the international registration number or by the U.S. application number assigned to the international design application.

 

302.04   Foreign Assignee May Designate Domestic Representative

MPEP SECTION SUMMARY

An assignee of a patent or patent application who is not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative.


302.07   Assignment Document Must Be Accompanied by a Cover Sheet 

MPEP SECTION SUMMARY

This section covers details on how the assignment document must be accompanied by a cover sheet.

 

(a) Each patent or trademark cover sheet required by § 3.28 must contain:

(1) The name of the party conveying the interest;
(2) The name and address of the party receiving the interest;
(3) A description of the interest conveyed or transaction to be recorded;
(4) Identification of the interests involved:

(i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or
(ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;

(5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;
(6) The date the document was executed;
(7) The signature of the party submitting the document. For an assignment document or name change filed electronically, the person who signs the cover sheet must either:

(i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks (e.g. /Thomas O’Malley III/) in the signature block on the electronic submission; or
(ii) Sign the cover sheet using some other form of electronic signature specified by the Director.

(8) For trademark assignments, the entity and citizenship of the party receiving the interest. In addition, if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture.

(b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation.
(c) Each patent cover sheet required by § 3.28 seeking to record a governmental interest as provided by § 3.11(b) must:

(1) Indicate that the document relates to a Government interest; and
(2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see § 3.41(b)).

(d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.
(e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.
(f) Each trademark cover sheet should include the citizenship of the party conveying the interest.
(g) The cover sheet required by § 3.28 seeking to record a joint research agreement or an excerpt of a joint research agreement as provided by § 3.11(c) must:

(1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);
(2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);
(3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and
(4) Indicate the date the joint research agreement was executed.

(h) The assignment cover sheet required by § 3.28 for a patent application or patent will be satisfied by the Patent Law Treaty Model International Request for Recordation of Change in Applicant or Owner Form, Patent Law Treaty Model International Request for Recordation of a License/ Cancellation of the Recordation of a License Form, Patent Law Treaty Model Certificate of Transfer Form or Patent Law Treaty Model International Request for Recordation of a Security Interest/ Cancellation of the Recordation of a Security Interest Form, as applicable, except where the assignment is also an oath or declaration under § 1.63 of this chapter. An assignment cover sheet required by § 3.28 must contain a conspicuous indication of an intent to utilize the assignment as an oath or declaration under § 1.63 of this chapter.


For applications filed on or after September 16, 2012, if the assignment document is also intended to serve as the required oath or declaration, the cover sheet must also contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration.

  • If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a "joint research agreement".

Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:

  • assignment;
  • security agreement;
  • merger;
  • change of name;
  • license;
  • foreclosure;
  • lien;
  • contract; and
  • joint research agreement.

Cover sheets seeking to record a governmental interest must also:

  1. indicate that the document relates to a governmental interest and
  2. indicate, if applicable, that the document to be recorded is not a document affecting title.


302.09   Facsimile Submission of Assignment Documents

MPEP SECTION SUMMARY

This section discusses details on submitting assignments and other documents affecting the title to the Office via facsimile.

Assignments and other documents affecting title may be submitted to the Office via facsimile.

Any assignment-related document for patent matters submitted by facsimile must include:

  • an identified application or patent number;
  • one cover sheet to record a single transaction; and
  • payment of the recordation fee by a credit card or a USPTO Deposit Account.

The following documents cannot be submitted via facsimile:

  • Assignments submitted concurrently with newly filed patent applications;
  • Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same property); and
  • Requests for “at cost” recordation services.

The date of receipt accorded to an assignment document sent to the Office by facsimile transmission is the date the complete transmission is received in the Office.

  • The customer’s fax machine should be connected to a dedicated line because recordation notices will be returned automatically.


302.10   Electronic Submission of Assignment Documents

MPEP SECTION SUMMARY

This section discusses the electronic submission of assignment documents. It covers what a submission through EPAS (Electronic Patent Assignment System) must include and details on the date of receipt.

Any assignment related document submitted by Electronic Patent Assignment System (EPAS) must include:

  • an identified application or patent number;
  • one cover sheet to record a single transaction which cover sheet is to be completed on-line; and
  • payment of the recordation fee by a credit card, electronic fund transfer (EFT) or a USPTO Deposit Account.

The date of receipt accorded to an assignment document sent to the Office by EPAS is the date the complete transmission is received in the Office.

 

» 303 Assignment Documents Not Endorsed on Pending Applications