324 Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
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The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can take action in a patent application or patent proceeding in numerous instances.
The owner or assignee (other than a juristic entity) of a patent property based on an application filed before September 16, 2012, can sign the following:
- a reply to an Office action
- a request for a continued prosecution application
- a terminal disclaimer
- Fee(s) Transmittal
- a request for status of an application
I. THE ASSIGNEE/OWNER THAT CAN TAKE ACTION IN PATENT MATTERS
A national patent application is owned by one of the following individual or composite entities:
- the inventor(s);
- an assignee or multiple assignees of the inventor(s); or
- some combination of the assignee(s), and inventor(s) who have not assigned away their right, title and interest in the application.
A party must be established as the assignee by satisfying the requirements of that subsection, in order to be recognized as an owner or part owner, for purposes of taking action in patent matters before the Office.
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.
The application is owned by the combination of all partial assignees and all inventors who have not assigned away their right, title and interest in the application.
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.
B. Example
Inventors A and B invent a process and file their application, signing the declaration for the patent application. Inventors A and B together may conduct prosecution of the application. Inventor A then assigns all his/her rights in the application to Corporation X. As soon as Corporation X (now a partial assignee as per pre-AIA 37 CFR 3.71(b)(2)) is made of record in the application as a partial assignee (by filing a statement pursuant to pre-AIA 37 CFR 3.73(b) stating Corporation X is an assignee of an undivided interest in the entirety of the application), Corporation X and Inventor B together may conduct prosecution of the application. Corporation X and Inventor B then both assign their rights in the application to Corporation Y. As soon as Corporation Y (now an assignee of the entire right, title and interest) is made of record in the application as the assignee (by filing a statement pursuant to pre-AIA 37 CFR 3.73(b) stating it is assignee of the entire right, title and interest), Corporation Y is then the sole (one hundred percent) owner and thus may, by itself, conduct prosecution of the application.
II. ESTABLISHING OWNERSHIP
When an assignee first seeks to take action in a matter before the Office with respect to a patent application filed before September 16, 2012, or a with respect to a patent or a reexamination proceeding relating to a patent that issued from an application that was filed before September 16, 2012, the assignee must establish its ownership of the property to the satisfaction of the Director.
The assignee’s ownership may be established by submitting to the Office, in the Office file related to the matter in which action is sought to be taken:
- documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment submitted for recording) and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is, submitted for recordation;
- or a statement specifying, by reel and frame number, where such evidence is recorded in the Office.
III. CONTINUING APPLICATIONS
When an assignee files a continuation or divisional application before September 16, 2012, the application papers must:
- contain a copy of a statement filed in the parent application; or
- contain a newly executed statement.
When a continuation-in-part application is filed before September 16, 2012 by an assignee, a newly executed statement must be filed.
When in a design application, a continued prosecution application (CPA), 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 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 which includes the following:
- 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, i.e., to sign the submission on behalf of the assignee.
- 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 any of the above, evidence of the person’s authority to sign will be required.
VI. WHEN OWNERSHIP MUST BE ESTABLISHED
Examples of situations where ownership must be established are when the assignee:
- 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;
- consents to the correction of inventorship in a patent;
- or signs a Fee(s) 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 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 PRE-AIA 37 CFR 3.73(b) STATEMENTS
Where there are two or more conflicting statements in an application or other Office proceeding, the statement with the latest date of submission to the Office will normally control as to establishment of the assignee.
