uspto assignment provisional

Enhanced Content - Details

15 U.S.C. 1123 ; 35 U.S.C. 2(b)(2) .

57 FR 29642 , July 6, 1992, unless otherwise noted.

Enhanced Content - Print

(approximately 10+ pages) " href="#">Generate PDF (approximately 10+ pages)

This content is from the eCFR and may include recent changes applied to the CFR. The official, published CFR, is updated annually and available below under "Published Edition". You can learn more about the process here .

Enhanced Content - Display Options

The eCFR is displayed with paragraphs split and indented to follow the hierarchy of the document. This is an automated process for user convenience only and is not intended to alter agency intent or existing codification.

A separate drafting site is available with paragraph structure matching the official CFR formatting. If you work for a Federal agency, use this drafting site when drafting amendatory language for Federal regulations: switch to eCFR drafting site .

Enhanced Content - Subscribe

Subscribe to: 37 CFR Part 3

Enhanced Content - Timeline

No changes found for this content after 1/03/2017.

Enhanced Content - Go to Date

Enhanced content - compare dates, enhanced content - published edition.

View the most recent official publication:

• View Title 37 on govinfo.gov
• View the PDF for 37 CFR Part 3

These links go to the official, published CFR, which is updated annually. As a result, it may not include the most recent changes applied to the CFR. Learn more .

Enhanced Content - Developer Tools

This document is available in the following developer friendly formats:

• Hierarchy JSON - Title 37
• Content HTML - Part 3
• Content XML - Part 3

Information and documentation can be found in our developer resources .

eCFR Content

The Code of Federal Regulations (CFR) is the official legal print publication containing the codification of the general and permanent rules published in the Federal Register by the departments and agencies of the Federal Government. The Electronic Code of Federal Regulations (eCFR) is a continuously updated online version of the CFR. It is not an official legal edition of the CFR.

Enhanced Content

Editorial note on subchapter a of chapter i, editorial note:.

Part 2 is placed in the separate grouping of parts pertaining to trademarks regulations.

PART 3—ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

Editorial note.

Nomenclature changes to part 3 appear at 68 FR 14337 , Mar. 25, 2003.

§ 3.1 Definitions.

For purposes of this part, the following definitions shall apply:

Application means a national application for patent, an international patent application that designates the United States of America, an international design application that designates the United States of America, or an application to register a trademark under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 , or 15 U.S.C. 1126 , unless otherwise indicated.

Assignment means a transfer by a party of all or part of its right, title and interest in a patent, patent application, registered mark or a mark for which an application to register has been filed.

Document means a document which a party requests to be recorded in the Office pursuant to § 3.11 and which affects some interest in an application, patent, or registration.

Office means the United States Patent and Trademark Office.

Recorded document means a document which has been recorded in the Office pursuant to § 3.11 .

Registration means a trademark registration issued by the Office.

[ 69 FR 29878 , May 26, 2004, as amended at 80 FR 17969 , Apr. 2, 2015]

Documents Eligible for Recording

§ 3.11 documents which will be recorded..

( 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.

[ 62 FR 53202 , Oct. 10, 1997, as amended at 70 FR 1824 , Jan. 11, 2005; 70 FR 54267 , Sept. 14, 2005; 78 FR 62408 , Oct. 21, 2013]

§ 3.16 Assignability of trademarks prior to filing of an allegation of use.

Before an allegation of use under either 15 U.S.C. 1051(c) or 15 U.S.C. 1051(d) is filed, an applicant may only assign an application to register a mark under 15 U.S.C. 1051(b) to a successor to the applicant's business, or portion of the business to which the mark pertains, if that business is ongoing and existing.

[ 64 FR 48926 , Sept. 8, 1999]

Requirements for Recording

§ 3.21 identification of patents and patent applications..

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; e.g., 07/123,456). 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; e.g., PCT/US2012/012345. 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. If an assignment of a patent application filed under § 1.53(b) of this chapter is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) of this chapter is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.

[ 80 FR 17969 , Apr. 2, 2015]

§ 3.24 Requirements for documents and cover sheets relating to patents and patent applications.

( a ) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1 ⁄ 2 by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one-inch) margin must be present on all sides.

( b ) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1 ⁄ 2 by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper submissions, the paper used should be flexible, strong white, non-shiny, and durable. The Office will not return recorded documents, so original documents must not be submitted for recording.

[ 69 FR 29879 , May 26, 2004]

§ 3.25 Recording requirements for trademark applications and registrations.

( a ) Documents affecting title. To record documents affecting title to a trademark application or registration, a legible cover sheet ( see § 3.31 ) and one of the following must be submitted:

( 1 ) A copy of the original document;

( 2 ) A copy of an extract from the document evidencing the effect on title; or

( 3 ) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.

( b ) Name changes. Only a legible cover sheet is required ( See § 3.31 ).

( c ) All documents.

( 1 ) For electronic submissions: All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1 ⁄ 2 by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides.

( 2 ) For paper or facsimile submissions: All documents should be submitted on white and non-shiny paper that is either 8 1 ⁄ 2 by 11 inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-inch (2.5 cm) margin on all sides in either case. Only one side of each page may be used. The Office will not return recorded documents, so original documents should not be submitted for recording.

§ 3.26 English language requirement.

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

[ 62 FR 53202 , Oct. 10, 1997]

§ 3.27 Mailing address for submitting documents to be recorded.

Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.

§ 3.28 Requests for recording.

Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31 ) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.

[ 70 FR 56128 , Sept. 26, 2005]

Cover Sheet Requirements

§ 3.31 cover sheet content..

( 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 .

[ 57 FR 29642 , July 6, 1992, as amended at 62 FR 53202 , Oct. 10, 1997; 64 FR 48927 , Sept. 8, 1999; 67 FR 79523 , Dec. 30, 2002; 69 FR 29879 , May 26, 2004; 70 FR 1824 , Jan. 11, 2005; 70 FR 56128 , Sept. 26, 2005; 73 FR 67775 , Nov. 17, 2008; 77 FR 48825 , Aug. 14, 2012; 78 FR 62408 , Oct. 21, 2013]

§ 3.34 Correction of cover sheet errors.

( a ) An error in a cover sheet recorded pursuant to § 3.11 will be corrected only if:

( 1 ) The error is apparent when the cover sheet is compared with the recorded document to which it pertains, and

( 2 ) A corrected cover sheet is filed for recordation.

( b ) The corrected cover sheet must be accompanied by a copy of the document originally submitted for recording and by the recording fee as set forth in § 3.41 .

§ 3.41 Recording fees.

( a ) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.

( b ) No fee is required for each patent application and patent against which a document required by Executive Order 9424 is to be filed if:

( 1 ) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2) ); and

( 2 ) The document and cover sheet are either: Faxed or electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27 .

[ 63 FR 52159 , Sept. 30, 1998, as amended at 69 FR 29879 , May 26, 2004]

Date and Effect of Recording

§ 3.51 recording date..

The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office. A document which does not comply with the identification requirements of § 3.21 will not be recorded. Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available. The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document. The procedure set forth in § 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service. If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document. The specified period to resubmit the returned papers will not be extended.

[ 62 FR 53203 , Oct. 10, 1997]

§ 3.54 Effect of recording.

The recording of a document pursuant to § 3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office.

§ 3.56 Conditional assignments.

Assignments which are made conditional on the performance of certain acts or events, such as the payment of money or other condition subsequent, if recorded in the Office, are regarded as absolute assignments for Office purposes until cancelled with the written consent of all parties or by the decree of a court of competent jurisdiction. The Office does not determine whether such conditions have been fulfilled.

§ 3.58 Governmental registers.

( 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.

Domestic Representative

§ 3.61 domestic representative..

If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.

[ 67 FR 79522 , Dec. 30, 2002]

Action Taken by Assignee

§ 3.71 prosecution by assignee..

( 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 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) .

[ 65 FR 54682 , Sept. 8, 2000, as amended at 77 FR 48825 , Aug. 14, 2012]

§ 3.73 Establishing right of assignee to take action.

( 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).

( 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.

[ 77 FR 48825 , Aug. 14, 2012]

Issuance to Assignee

§ 3.81 issue of patent to assignee..

( a ) With payment of the issue fee: An application may issue in the name of the assignee consistent with the application's assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office. If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11 .

( b ) After payment of the issue fee: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a) ) and the processing fee set forth in § 1.17(i) of this chapter .

( c ) Partial assignees.

( 1 ) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.

( 2 ) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

§ 3.85 Issue of registration to assignee.

The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office. If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation. The address of the assignee must be made of record in the application file.

Part 6 is placed in the separate grouping of parts pertaining to trademarks regulations.

Part 7 is placed in the separate grouping of parts pertaining to trademarks regulations.

Part 1 is placed in the separate grouping of parts pertaining to patents regulations.

Part 3 pertaining to both patents and trademarks is placed in the grouping pertaining to patents regulations.

Part 4 is placed in the separate grouping of parts pertaining to patents regulations.

Part 5 is placed in the separate grouping of parts pertaining to patents regulations.

Reader Aids

Information.

• About This Site
• Legal Status
• Accessibility
• No Fear Act
• Continuity Information

Frequently Asked Questions Provisional Patent Applications

What is a provisional patent application.

A provisional patent application (“provisional application”) is a document that is filed at the United States Patent and Trademark Office (USPTO) to establish an invention’s “priority date” – that is, to show that an applicant adequately possessed the invention described in the provisional application as of the provisional application’s filing date. To be most effective, a provisional application should describe the invention in enough detail for someone of ordinary skill in the art to make and use the invention without undue experimentation. A provisional application does not get examined by the USPTO, so it is the applicant’s responsibility to ensure that it adequately describes the invention. If the provisional application does not describe the invention thoroughly enough, then it may not be sufficient to establish a priority date for patent claims directed to the invention that are ultimately filed and examined in the U.S. and/or abroad.

Why should I consider filing a provisional application?

A provisional application can be an expedient and relatively inexpensive way to establish a priority date for prospective worldwide patent rights covering an invention without affecting the term of those rights.

When should I consider filing a provisional application?

• Before any public disclosure of the invention (e.g., a conference presentation, poster session, department seminar, paper publication, and/or public announcement);
• Before a meeting with sponsors, collaborators, competitors, and/or investors; and/or
• When the inventors have reduced their invention to practice (or have a good plan for how to reduce their invention to practice) but plan to continue working on the invention over the next year.

What should a provisional patent application include?

A provisional application may include a variety of materials (e.g., text, figures, graphs, charts, and/or photographs) that describe the invention as well as how to make and use it. A provisional application should explicitly answer the following questions:

• What is the invention?
• How is the invention made?
• How is the invention used?

U.S. patent law requires the provisional application to include comprehensive answers to these questions in order to establish a priority date for the invention. These legal requirements are called the “written description” and “enablement” requirements, and they also apply to U.S. nonprovisional applications.

TIP: Ask the inventors for all materials that describe/support their work on the invention. These may include, but are not limited to, theses, manuscripts, “Supplementary Materials” sections of journal papers, computer code (preferably with comments), laboratory notebooks, emails, invention disclosure forms, and/or presentations.

TIP: Confirm that the invention being disclosed is actually new.

Should a provisional application include patent “claims”?

Legally, a granted patent claim defines the invention for which an applicant has enforceable rights (e.g., the right to prevent others from making, using, or selling the claimed subject matter without permission). Claims are granted by the USPTO in nonprovisional applications, which are examined by patent examiners for utility, novelty, nonobviousness, as well as compliance with the written description and enablement requirements.

Provisional applications, on the other hand, are not examined and thus there is no requirement to include claims. Nevertheless, including claims in a provisional application can provide several benefits. First, including claims the provisional application can provide the benefit of an earlier “priority date” for the later-filed nonprovisional application and the claims that will eventually be examined in the nonprovisional application. Second, considering claim scope early in the provisional application drafting process can be a useful exercise for shaping the legal definition of the invention. Third, the claim drafting process can emphasize the subject matter that should be described in detail in the specification of the provisional application in order to meet the “written description” and “enablement” requirements.

TIP: Including even a modest number of claims in a provisional application can help focus the drafting effort and may provide stronger priority benefits for any follow-on nonprovisional and/or foreign applications.

Who should be named as an inventor on a provisional application?

Under U.S. law, an inventor is anyone who “contributes to the conception” (e.g., the complete mental embodiment) of at least one claim. In contrast, someone who has only reduced the inventive material to practice (without making any conceptual contribution) should not be named as an inventor. Inventorship is not necessarily the same as authorship of an academic paper.

Who owns the invention?

Under U.S. law, patent rights accrue to the inventors. However, most inventors are obligated to assign their patent rights to their employers by virtue of their employment agreements or institutional intellectual property policies.

Similarly, an inventor employed elsewhere, such as a contractor or collaborator, may be obligated to assign his or her patent rights to his or her employer.

Thus, if the provisional application names inventors from two entities who are each obligated to assign their rights to their respective entities, then both entities may have undivided ownership interest in the provisional application.

TIP: Because patent claims can inform the inventorship (and the ownership) of a provisional application, this is another good reason to include patent claims in a provisional application.

TIP: Obtain and record assignments from the inventors as soon as possible after a provisional application is filed. This ensures that the assignee is entitled to file continuing and PCT applications claiming priority to the provisional application, grant licenses, etc.; and it also eliminates potential uncertainty regarding ownership that could arise in diligence or litigation.

Where was the invention made?

If the invention was invented in another country, it might be necessary to obtain a foreign filing license from the other country’s patent office before filing a U.S. provisional application. In some cases, it might be appropriate to file a patent application in the other country first, then file a U.S. nonprovisional application that claims priority to the foreign patent application.

In addition, if the invention was invented elsewhere (e.g., at another company or institution, either in the U.S. or abroad), another entity may have patent rights in the invention, for example, because its employees are inventors or because it provided facilities or services to the inventor(s).

TIP: For cases involving inventors from another entity, consider executing a license or joint research agreement with the other entity to reduce the risk of dispute regarding ownership and control of jointly developed intellectual property.

When do I have to “convert” my provisional application?

An applicant must “convert” the provisional application by filing a nonprovisional application and/or foreign patent applications within one year of the provisional application’s filing date. Of course, an applicant can always file a nonprovisional and/or foreign application before the one year anniversary of the provisional application’s filing date. Doing so will start the examination process sooner but will also begin the term of any patent that might issue from the nonprovisional and/or foreign application.

Can I file more than one provisional application for the same invention?

Yes. An applicant can file as many provisional applications as desired for a single invention during the one year “life span” of the first provisional application.

TIP: For on-going projects, it often makes sense to file multiple provisional applications, where each provisional application represents an additional advance and/or milestone. Doing so can provide the earliest possible priority date for each advance. The concepts disclosed in these multiple provisional applications can be filed in a nonprovisional and/or foreign patent application claiming priority to each provisional application prior to the first provisional application in the series expires.

Related contacts

A license is a grant (assignment) to the licensee of various licensed rights.  The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another.  Thus, the first recordation of a license may be recorded as a “license,” while the assignment of those same licensed rights to another entity may be recorded as an “assignment.”  The only way to really understand the situation is to review the actual documents, which are all readily available from the recordation branch of the patent office.

Note that the patent office sometimes refers to licenses as a species of assignment.  That is correct, because one is assigning license rights.

Not necessarily.  Assignments are only needed if you are contractually obligated, by employment or otherwise, to make the assignment.

An important corollary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name.  Investors are usually unhappy with that arrangement, but there can be significant advantages.  One major advantage is that the patent holder is a “necessary and indispensable” to any litigation over patent validity.  Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.

Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications.  See the previous FAQ.

Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications.  That is a dangerous strategy.  In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company, or divorce.

It is not technically necessary to re-file assignments for divisional or straight continuation applications.  A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.  Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee.

Absolutely.  Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues.

Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office.

Note that the office charges US$ 40 for each patent or patent application listed on the recorda­tion form.  Thus, if an assignment references a family of 5 patent applications, the recorda­tion fee is US$ 200.  Of course paralegal charges would also apply, and possibly attorney time.

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment.  The statute is similar to recording statutes used for recording real property.  Thus, although there is no requirement to record an assignment, it is foolish not to do so.

Note that absent some unusual circumstance, patent assignments do not have to be notarized for use within the United States.

Preparing assignments is usually a simple matter of filling in the blanks of a form.  Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in  Strategic Patenting .

Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document.  The recording branch does not generally read the documents to verify the content.

The Patent office will proceed as if the signature had been procured from the inventor, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached.  Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights.

In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished.  Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact.

One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form.

In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees).

It depends on the wording of the assignment and the recordation laws of the foreign countries.  Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications.  Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country.

Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments.

Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office.  Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages.

The main disadvantage to recording assignments is that many countries (including most or all of Europe) consider assignment of a patent or application to be a taxable transfer, and charge VAT (Value Added Tax) on the estimated value of the application or patent.  Since the value is often low in the early days, and can rise considerably during the life of the patent, the disadvantage of recordation can be mitigated by registering early.

Assignments records at the USPTO are available for  public inspection , but only for patents and published applications.  One can search by reel/frame number, patent or publication number, and assignor or assignee name.

The underlying documents are not available for download, but can be ordered from the assignment branch.  Paper mail requests can take months, but faxed requests are usually filled within a day or two.

No.  One should never rely upon the designation of “assignee” as set forth on the face of a patent.  First, the patent office obtains the “assignment” information directly from the issue fee transmittal form, and there is no verification whatsoever that such information is, or even ever was, correct.  The entry could well have been an error on the part of an attorney, paralegal, or secretary, and the issue fee transmittal form even warns that designation of an assignee of that form does not, in and of itself, affect an assignment.  Second, the patent is never altered after it is published.  Information that was correct at one point in time may well be superseded down the road.  Third, even if the “assignee” information is correct, one cannot know from the face of the patent what rights were assigned.  It might well be that only licensed rights were assigned, or that such rights are subject to a reversion.

Yes. But there can be real problems with multiple owners of a patent. Unless there is some other agreement restricting what an entity can do with its ownership interest, a co-owner of any portion of a patent, (whether 99% or 1% or .0001%), can make use of the patent however they want.  For example, a .0001% owner of a patent could license out its rights, and keep 100% of the license fee.  Absent an agreement to the contrary, there is no duty of a co-owner of the patent to share license fees with any of the other co-owners.

One of the big problems with two entities owning portions of a given patent is that the two entities can compete with each other with respect to license fees. For example, if co-owner A offers to license the patent rights for 7%, co-owner B might choose to undercut the previous offer by offering to license the same rights for 5%.  But then co-owner A comes back and offers to license the rights for 2%. Pretty soon the value of the license rights goes to zero.  Also, if co-owner A gets upset with co-owner B, co-owner A could unilaterally abandon the patent, which would make it worthless to everyone.

Even if co-owners agree to share license fees 50-50, there can be problems.  For example, co-owner A could decide to license out its patent rights for one dollar a year to a licensee that co-owner A owns, has an interest in, or perhaps has a relative with an interest in.  Of course co-owner A would be happy to share $0.50 of its annual license fee with co-owner B, but co-owner B would be pretty upset.

Still further, if there is a chain of patents, for example with a parent and a child patent in the same family, the ownership of both patents has to remain to the same at all times.  If, for example, both a parent patent and a child patent are 100% owned by A, assignment of some or all of the child patent to B will immediately invalidate the child patent.  Even if such an assignment is made, and the parties realize the mistake, reassigning the child patent back A would not cure the mistake. The child patent would remain abandoned.

Bottom line, co-ownership of a patent is really problematic.

Ph: (949) 943-8300 Fx: (949) 943-8358 [email protected]

Orange County 19900 MacArthur Blvd. Suite 810 Irvine, CA 92612

Silicon Valley 99 S. Almaden Blvd. Suite 600 San Jose, CA 95113

PRIVACY POLICY

Stack Exchange Network

Stack Exchange network consists of 183 Q&A communities including Stack Overflow , the largest, most trusted online community for developers to learn, share their knowledge, and build their careers.

Q&A for work

Connect and share knowledge within a single location that is structured and easy to search.

Can provisional applications be sold/assigned?

I don't just mean in theory , but is buying provisional applications something that companies do?

I'm not asking about "suing the Goliath", but rather assigning the application to their competitor as a BATNA.

• provisional-application

2 Answers 2

It is not unusual for companies to buy the rights for inventions that are not patented, including those that appear in one or more provisionals or in pending non-provisional applications. Similarly, it is not unusual for a VC firm to appraise a portfolio of provisional applications for investment purposes, i.e., to buy shares of the company owning the applications for the purpose of financing the filing of one or more non-provisional applications.

A random provisional application, by itself, has no inherent enforcement rights but could certainly be used as evidence of relevant prior art, were it to become "published" by its owners or if the disclosed invention were offered for sale or used in public, etc. If a company buys it, they may also reference it for priority (in a CIP or new application) for the invention as disclosed, or may take steps to suppress any further disclosure, under some NDA clause of the contract.

My understanding is that provisional applications can indeed be assigned, but that the costs of handling and recording the assignments cause in some inventors to hold off until the filing of the formal application.

Regarding your example, this is a very complex question involving a lot of variables.

If your provisional is in fact the same thing, you may have some leverage, but litigation is enormously expensive. Companies will usually settle, but that would be contingent on your ability to pursue litigation in the first place. (Many lawyers will work on contingency basis, but there has to be enough money involved to make it worth their while.) If you're a David going up against a Goliath with deep pockets, this could be difficult. If they were unwilling to deal based on the provisional, you'd have to file a nonprovisional and secure a grant.

• To clarify, I'm not asking about "suing the Goliath", but rather assigning the application to their competitor as a BATNA. –  MWB Commented Aug 23, 2016 at 20:55
• That sounds quite promising. Can't hurt to approach them. How long do you have before the provisional expires? –  DukeZhou Commented Aug 23, 2016 at 20:56
• You have 12 month. You should talk to a lawyer first. If the company makes agreement with you, but fails to file a formal application, and then refuse to honor the agreement, you could be in a very difficult position. –  daniel Commented Aug 24, 2016 at 2:15
• @daniel makes a very good point. The provisional is nothing but a placeholder to allow you to gauge the market viability of you product or process before spending a lot of money on the nonprovisional. Design patents are fairly cheap; utility patents can be quite expensive, particularly if you wish to pursue internationally. –  DukeZhou Commented Aug 24, 2016 at 2:19
• @daniel are you saying that provisional applications themselves cannot be sold? (it would then be up to the buyer whether to pursue it further) –  MWB Commented Sep 28, 2016 at 19:46

You must log in to answer this question.

Not the answer you're looking for browse other questions tagged uspto provisional-application assignment ..

• Featured on Meta
• Bringing clarity to status tag usage on meta sites
• We've made changes to our Terms of Service & Privacy Policy - July 2024
• Announcing a change to the data-dump process

Hot Network Questions

• Seth and Cain take turns picking numbers from 1 to 50. Who wins?
• Does gluing two points prevent simple connectedness?
• Jacobi two square's theorem last step to conclusion
• Why are the titles of certain types of works italicized?
• Difference between 頁 and ページ
• Can figere come with a dative?
• Sci-fi scenario: Is it possible to detect and either broadcast over or otherwise block satellite comms to and from a geographic area that you control?
• Do cities usually form at the mouth of rivers or closer to the headwaters?
• What Christian ideas are found in the New Testament that are not found in the Old Testament?
• "Knocking it out of the park" sports metaphor American English vs British English?
• What does "close" mean in the phrase: "close a tooth pick between the jamb and the door"?
• An integral using Mathematica or otherwise
• Whether and when this sum will converge?
• How to extract code into library allowing changes without workflow overhead
• How can I get accessed to the data stored by gnome-pomodoro app?
• If physics can be reduced to mathematics (and thus to logic), does this mean that (physical) causation is ultimately reducible to implication?
• The hat-check problem
• Meaning of capacitor "× 2" symbol on data sheet schematic
• Why are volumes of revolution typically taught in Calculus 2 and not Calculus 3?
• Sticker on caption phone says that using the captions can be illegal. Why?
• Postdoc supervisor has stopped helping
• Is the error in translation of Genesis 19:5 deliberate?
• How do logic gates handle if-else statements?
• Why cant we save the heat rejected in a heat engine?

Ant-Like Persistence

Is it important to record assignments in divisional and continuation cases?

Assume for sake of discussion that a properly worded assignment has been executed and recorded for a US patent application.  By this we mean an assignment that indeed settles ownership of of the subject matter of that patent application to the named applicant (typically a corporation or other legal entity that to which the inventors were obligated to assign the invention).  Now assume that a continuation or divisional application gets filed pursuant to 35 USC § 120 (in this discussion I do  not mean to assume a continuation-in-part).  The question posed is:

Is it important, or even necessary, to record the assignment with respect to the child case?

In this blog article I will discuss factors that I can think of that might influence an applicant’s decision as to whether or not to go to the trouble of recording the assignment in the child case.  I hope you, dear reader, will consider this question, and I hope you will post a comment below with your thoughts about this. 

(I will mention that what prompted me to write this blog article is that a very nice patent firm in China asked me this question.)  

So once again let’s make sure that we have our fact pattern fully set up.  We are assuming for sake of discussion that the assignment that got recorded in the parent case was “good enough”.  We assume that it really did legally serve to convey all rights to the correct entity. 

The alert reader will realize that this is not always as easy as it might seem.  One can imagine a fact pattern where an inventor previously executed some document that conveyed the patent rights, the result being that if the inventor were to execute a purported assignment today, the document signed today would not actually convey any rights.  Another thing to keep in mind is that property law is state law, not federal law.  It means that a particular attorney might not be admitted to practice in the state whose law actually applies to some inventor-and-employer fact pattern.  But anyway, let’s assume for sake of discussion that somehow an appropriate assignment got prepared and signed and recorded and that it really did accomplish its legal goals.

And now there comes a reason to file a child case.  Maybe it is a continuation application, maybe it is a divisional application.

Is it important to record the assignment again in the child case?  Is it necessary to record the assignment in the child case?  Is there some sense in which it might be said that a practitioner would be remiss if the practitioner were to fail to record the assignment in the child case?

A first thing to recall is why anybody records any assignment at the USPTO.  We need to remind ourselves that it is not the recording of an assignment that brings about the change of ownership of the property.  It is the execution of the document itself (or the satisfaction of the terms of the document) that brings about the change of ownership of the property.  If the document was signed on a Monday and was recorded the next day (Tuesday), and later somebody asks “on what day did the invention actually change hands?” the answer is not Tuesday.  The fact that Tuesday was the day that recordation happened does not in any way mean that Tuesday is the day that the change of ownership took place.

There are some countries around the world where if you want to know who owns a patent, the way you get the answer is pretty much by asking the patent office in that country.  The patent office has people who review documents such as assignments.  Part of the reason for filing an assignment with a patent office in such a country is so that the people in that patent office can review the assignment for this purpose.

But that is not at all what happens at the USPTO.  When the USPTO carries out the recordation of an assignment (or a recordation of any other “document pertaining to title”), the USPTO does not actually evaluate the document to arrive at any legal conclusion.  The party submitting the document provides a “recordation cover sheet” which sets forth the purported effect of the document.  The submitter, in other words, represents to the USPTO that the document supposedly is legally effective to transfer the rights from somebody to somebody else.  But there could (to give a silly example) be a “not” in the middle of the document that actually says that the document does not transfer such rights, and if so, there is nobody at the USPTO in the Assignment Branch whose job it is to catch the presence of such a “not” in the middle of the document.  

No, if you want to know who owns a US patent, you cannot find out the answer by asking the USPTO.  There is no USPTO database that contains the results of document reviews carried out by USPTO personnel on the topic of who owns a particular US patent.  Yes, you can obtain what is called an “Abstract of Title” from the USPTO for any US patent.  It will list, one by one, every document relating to title that has been recorded at the USPTO for that US patent.  It will say that Assignor A has assigned to Assignee B in a first document.  It will say that Assignor B has assigned to Assignee C in a second document. 

You might think by paying a few dollars to the USPTO for an Abstract of Title, and by receiving the Abstract of Title from the USPTO, and by looking at the Abstract of Title, and by seeing “A to B” and “B to C” in the Abstract of Title, that this means the USPTO is telling you that the owner is C.  You might think that this that this means you can relax and now you know who the owner is.

Not in the slightest.  For one thing, there might be a “not” in the middle of one of the recorded documents.  Nobody at the USPTO was checking for such things.  

No, to arrive at a legal conclusion as to who owns that US patent, somebody, probably an attorney, would need to study the Abstract of Title and the underlying documents, and would probably need to review the rest of the context.  Only then could the attorney opine as to who actually owns that US patent.

Returning now to why anybody records anything at the USPTO.  The point of recording at the USPTO is basically to put third parties on notice that some document exists.  The document might be an assignment, it might be a lien, it might be a UCC security interest.  But anyway, the point of the recordation is simply to put the world on notice that some document exists.  It is then up to any interested party to review the document and to independently evaluate the document as to its legal import.  (There might, after all, turn out to be a “not” in the middle of the document.)

A chief reason for recording is to comply with 35 US Code § 261.  35 US Code § 261 says, among other things:

An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

The alert reader will appreciate that this language means that a practitioner who has his or her hands on a signed assignment should try very hard to get the assignment recorded at the USPTO within three months of the date upon which the assignment was signed.  It is arguably malpractice avoidance to get any assignment recorded well before the expiration of three months from the date that the assignment was signed, because of the language of 35 US Code § 261.

The reality is that any member of the public knows, or should know, that the only way to find out who owns any particular patent is by hiring hiring competent counsel who can then opine as to who owns the patent.  Stating this another way, any member of the public knows, or should know, that it would be a mistake simply to look at an Abstract of Title as a way of supposedly finding out who is the owner of a particular patent.

So let’s talk about what would happen if the patent of interest happens to be a continuation or divisional patent.  One of the first things that competent counsel would notice is indeed that it is a child case of a parent case.  Competent counsel would then among other things order up an Abstract of Title of the parent case.  This would then put competent counsel on notice of the assignment that had been recorded with respect to the parent case.  Probably the wording of the assignment will turn out to cover the invention in the child case as well.  If so, then competent counsel will render an opinion that the owner of the child case is the same as the owner of the parent case.

Note that for this conclusion to work out this way, it is not at all necessary that any recordation have taken place in the child case.

But now let’s change the fact pattern a bit.  Let’s assume that the member of the public fails to hire competent counsel.  Let’s suppose that the member of the public labors under a completely false assumption that one may learn who owns a US patent by ordering up an Abstract of Title from the USPTO for that US patent.   And let’s assume that the particular US patent happens to be a continuation or divisional and the applicant chose to record only in the parent case.

What could happen next is that this member of the public could arrive at an incorrect conclusion as to who owns the US patent.

To the extent that we feel like this is a problem that needs fixing (somebody who should have known enough to hire counsel, but failed to do so), we can avert the problem in advance by … yes … recording the assignment at the USPTO in the child case.  Recording the assignment in the child case means that the assignment will turn up in an Abstract of Title in the child case.  Putting this in colloquial terms, recording the assignment in the child case means that even people who do not know enough to hire competent counsel will be saved from the mistake of having failed to hire competent counsel, and will be put on notice of assignments in situations like this.

But from this discussion we can see a point of view from which it is quite unnecessary to carry out any recordation in a continuation or divisional case, so long as a satisfactory recordation was carried out in the parent case.  After all, any member of the public who is well informed will know to hire counsel when investigating ownership of a patent, and counsel will know to check ownership of a parent case.  

When I was first in practice, any recordation of a patent assignment required payment of a government fee to the USPTO.  It was thus a natural reaction on the part of a practitioner to try to figure out ways to save money for the client in terms of government fees.  So far as recordations of assignments were concerned, in those days what I would do included:

• almost never recording any assignment in any continuation or divisional case (so as to avoid having to pay the associated government fee), and
• saving up recently signed assignments from various inventors to record them all at once in a batch (so as to pay just one government fee instead of several government fees for several distinct recordations).

But about ten years ago, the USPTO stopped charging any government fee for e-filed patent assignments.  So to the extent that a goal of saving money on government fees might once have been a reason for refraining from recording in child cases, that reason no longer applies.

Another factor that cannot be ignored is that if a child recordation is being carried out by a practitioner, then the practitioner will doubtless feel the need to charge a professional fee.  

Consider the client whose point of view is that it is unnecessary to record an assignment in a continuation or divisional case, so long as a satisfactory recordation was carried out in the parent case.  Such a client would likely feel that if US counsel were to carry out an (otherwise unnecessary) recordation in a child case, followed by sending a bill to the client, this might count as “churning” the file to run up the bill.

Consider on the other hand the client whose point of view is that of a small start-up company, for which in the near future a due diligence inquiry might take place.   And suppose the client wants to provide for the possibility that the due diligence person might not understand very much about how to evaluate patent ownership in the US.  The way to be on the safe side is to carry out a recordation in every child case, so that an Abstract of Title for any child case will list the assignment.  This will minimize the risk that a poorly informed due diligence person will labor under a misimpression as to whether client has fully attended to its paperwork burdens about recording assignments.

Having said all of this, we can recognize that as a general matter it will almost always turn out that a continuation or divisional application will get filed much more than three months after the date that the assignment got signed in the parent case.  This means that the recordation date for any recordation of the assignment in the child case will be far later than the three-month date set forth in 35 US Code § 261.  So the three-month period set forth in 35 US Code § 261 will simply almost never play a part in the planning process for recordations in child cases.

Suppose a practitioner is sitting on an assignment that was signed more than three months ago and has not yet been recorded at all.  Is it still worthwhile to get it recorded?  Yes of course!  See this blog article .

Suppose a PCT application was filed at a Receiving Office that is not RO/US.  Can an assignment of that PCT application be recorded at the USPTO?  Yes.  See this blog article .

Now we add one more layer to the discussion.  Many an assignment will be seen to contain boilerplate that recites that the assignment not only covers some particular patent application, but also covers “any and all continuations and divisionals thereof”.  Does the presence or absence of such boilerplate change any of the factors just discussed?  Of course one cannot answer this in a general way without seeing the rest of the language of the document.  But assuming that the document has language that conveys something like “the invention set forth in the document” then I suggest it probably conveys the invention set forth in the continuation or divisional.

It is completely a separate question to talk about, for example, a continuation-in-part.  A CIP contains subject matter not found in the parent.  Barring some surprise about the situation, you are going to want to get a new assignment covering that new matter.

What do you think about all of this?  Do you think it is important to record an assignment in a continuation or divisional case?  Please post a comment below.

Share this:

6 replies to “is it important to record assignments in divisional and continuation cases”.

Don’t forget that at least some patent search tools will not pick up on the assignment recorded in a parent – i.e. an assignment-not-recorded child application won’t appear in the results of a search for applications belonging to the Assignee. Furthermore, many companies simply want to see their name on the front page of the publication/patent.

I certainly prefer to have the parent assignment recorded in child applications. I accept that my opinion may be influenced by the fact that many of my clients are small companies – similar to the start-up companies to which you relate in your article. They want to impress – whether or not during due diligence. In the future, I’d much prefer to answer the question “why did you bother to record the parent assignment in the child application?” than the question “why didn’t you record the parent assignment in the child application?”.

Standard practice in the past 10 or so years, ever since the fee requirement was cancelled, with most of the people I work with, has been to record the assignment against any child applications. It takes but a few minutes to do so now, but saves headache and time down the road.

However, I do have a follow-up question. Is it advisable to have a new assignment signed for a child case, even though the assignment in the parent clearly says something along the lines of “… including any and all continuations and divisionals thereof”? Or could that even be harmful? Different people I work with have different views on that.

We like to have the parent assignment filed in all child applications. As noted above, this helps with future sales of IP under any situation (banks, investors, opposing counsel, etc.). But having assignments recorded in all properties also helps resolve doubt when filing terminal disclaimers to ensure that ownership is common to all the properties. Don’t file that TD unless you’re sure!

We do not want new assignments signed for CON/DIV applications because that could be considered an admission that the assignment of the parent (which also clearly assigned any CONs or DIVs) was faulty.

If starting via the US provisional to PCT route, we want both Assignor and Assignee signatures on the documents to comply with Article 72 EPC. If new matter was added before filing the PCT, then we get a new assignment (with both A’or and A’ee signatures). It’s nice to have the signatures notarized, but we get a lot of pushback and it’s not required.

If the application is coming into the US from a foreign application, then we take whatever’s given us; the bar is lower.

At a CLE I attended in 2019, the presenter said that for bankruptcy purposes a security interest in a patent must be recorded with the state under the UCC (Uniform Commercial Code). The presenter noted that the USPTO system alone was sufficient to perfect an ownership interest, but not a security interest for enforcement in the event of a bankruptcy. I usually only record with the Patent Office and I have not been involved with enforcing a security interest in a patent for a bankruptcy. I’d be interested to hear other opinions on recordation.

I realize I’m late to reading this post, but we like recording the assignments from the parent against the child for the same reasons as the other commenters. A question I have is regarding whether “electronic” signatures on patent assignment documents are acceptable. Not all states have embraced online remote notarization, some folks are in other countries – so the jurisdiction issue seems to be a nightmare than just ink signing the document. What’s you’re thought on electronic signatures on assignment documents?

The Assignment Branch does not care at all what kind of signature is used.

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Save my name, email, and website in this browser for the next time I comment.

Notify me of follow-up comments by email.

Notify me of new posts by email.

29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

• Intellectual Property
• Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”). 

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent. 

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But  under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP,  implement strong hiring policies  that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an  employment agreement  that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

• Advance assignment of any IP created while employed by your company, or using your company’s resources
• An obligation to disclose any IP created while employed by your company, or using your company’s resources
• An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
• An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing  invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include  incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

• Independent contractors:  Some inventors may be self-employed, or they may be employed by one of your service providers.
• Joint collaborators:  Some inventors may be employed by, say, a subsidiary or service company instead of your company.
• Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should  also  get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

• The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
• Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you  can  execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

• Be in writing:  Oral agreements to assign patent rights are typically not enforceable in the United States
• Clearly identify all parties:  Include the names, addresses, and relationship of the assignor(s) and assignee
• Clearly identify the patent being assigned:  State the patent or patent application number, title, inventors, and filing date
• Be signed by the assignors
• Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases. 

So the patent owner (the Assignee) should should record the assignment through the  USPTO’s Assignment Recordation Branch . They can use the  Electronic Patent Assignment System (EPAS)  to file a  Recordation Cover Sheet  along with a copy of the actual patent assignment agreement.

They should submit this paperwork  within three months  of the assignment’s date. If it’s recorded electronically, the USPTO  won’t charge a recordation fee .

Need to check who owns a patent?  The USPTO website  publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a  continuation-in-part , or in a non-provisional application that adds new matter to a  provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an   employee agreement ,  company policy ,  invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation. 

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An  experienced patent professional  can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments —  contact us now  to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

Don't miss a new article. Henry Patent Law's Patent Law News + Insights blog is designed to help people like you build smart, scalable patent strategies that protect your intellectual property as your business grows. Subscribe to receive email updates every time we publish a new article — don't miss out on key tips to help your business be more successful.

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

How to Fill out a Provisional Patent Application Cover Sheet

May 29, 2023 by James Yang

The provisional patent application cover sheet is a form that you file with the specification and drawings of your patent application . It’s a request (see snippet below) for filing your application as a provisional application.  You can find the form here .  Also, you can find all of the patent forms here .

The provisional patent application cover sheet is filed when filing a provisional application . This cover sheet is not filed when filing a nonprovisional application . You can fill out the provisional patent application cover sheet yourself but it is often helpful to hire a patent attorney to do it for you.

In this blog post, we’ll go over each section and explain the terminology used to help you fill out this form if you are prosecuting your application as a pro se applicant (pro se simply means that you are not represented by a patent attorney).

If you need help with the provisional patent application cover sheet form and with other steps in protecting your invention, you can hire me, Orange County patent attorney James Yang .  I work with inventors and attorneys of counsel throughout California.  You can schedule a consultation , or read on to find out more about filling out this form properly.

Priority Mail

The first section of the cover sheet is the priority mail express label number.

The Patent Office has transitioned fully to the Internet and predominantly receives all applications through the Patent Center. Do not submit your patent application via U.S. Mail.  Leave this field blank. You can submit the application by US mail but the filing date will be the date the Patent Office receives your patent application, not the mail date. As such, there is no benefit in filing the application by mail. The Patent Center can be reached at https://patentcenter.uspto.gov/ .

Inventor(s)

The next section is the inventor section.

All of the inventors should be listed in this section. An inventor is anyone who has conceived or contributed to the conception of the invention. An inventor should be distinguished from a scribe who should not be listed.  A scribe is anyone who merely implements the ideas of the inventor. For example, a draftsperson may be a mere scribe.  A mechanic may be a mere scribe.  However, even these individuals can turn into an inventor if they made any suggestions about improvements to your idea.

It’s sometimes to determine who’s an inventor or scribe.  It’s sometimes advantageous to list all scribes on the inventor list especially if you have an invention assignment agreement with them. It will eliminate any disagreements with people that were involved with your idea.

If you do not have an agreement with independent contractors or employees or those that might be considered a scribe, you should consult with a patent attorney to determine the next steps. Otherwise, downstream problems may arise especially when you’re idea is very successful and you are in litigation.

Title of the Invention

The next section is the Title of the Invention.

As stated, do not use more than 500 characters.

Many inventors would want to insert a descriptive title about the invention. However, the title of the invention is not meant to point out the point of novelty of the invention. Rather, the Title is merely to identify the broad field related to your invention. For example, if your invention is related to a new way shelves in a bookshelf is adjusted up and down, there is no need to specify that in the title of the invention. You can simply Title it “BOOKSHELF”. The title of the invention should also match the title of the invention in your patent specification.

Correspondence Address

The correspondence address lists the contact information of the person that will communicate with the Patent Office.  They will not talk to two entities.  As such, you need to list your contact information if you are prosecuting your own patent application.

Be careful, this will be public information. As such, if you do not wish your personal information to be public, do not list your personal information here. You can list a P.O. Box or some other address which you don’t mind being put out into the public purview.

If you’re having an attorney represent you, they will insert their customer number.

Enclosed Application Parts

My practice is to submit an Application Data Sheet, Specification, and Drawing when filing a provisional patent application.

The application data sheet lists all of the crucial bibliographic data that the Patent Office needs for your patent application. Eventually, when you file the non provisional application you will have to file the application data sheet. As such, it’s just good practice to file the provisional application with an ADS so that the data at the Patent Office regarding you and your patent application is complete as possible.

Don’t worry about the CD or Other fields.

Next check the drawings and specification check boxes. Insert the number of pages you have for these documents.

For the Fees Due, you will most likely pay by credit card which is in the next section below. However, you must know the proper fee to pay.  Otherwise, if you pay a reduced fee but should have paid more, any patent that matures from this patent application may be later invalidated.  The infringer will allege that you committed inequitable conduct on the Patent Office for failure to pay the full fee.

A simple definition for whether you are a micro, small, or large entities provided in the following link:

Method of Payment of the Filing Fee and Application Size Fee

In this section, this is where the rubber meets the road – it’s all about payment.  Check the small entity status if you are a small entity. If you are a micro entity, you must check both the small entity status and the micro entity status checkboxes.   Also, you must submit the Certification of Micro Entity Status form .

Do not pay by using a check or money order when filling out this form. You can if you want but who does that nowadays? Rather, pay using a credit card by submitting form PTO-2038.

Also, enter the total fee amount. You can find the total fee amount in the fees due statement above. A snippet of that section is found below.

Government Sponsored

If the invention was sponsored by the government, please fill this section out.  Most likely, your project isn’t sponsored by the U.S. gov’t.  If you don’t know if your project was sponsored by the U.S. government, your idea probably was not sponsored by the U.S. government.  You can leave this section blank.

Get help filling out the Provisional Patent Application Cover Sheet

We can help you protect your idea.  We help you to cross all of your Ts and dot all of your Is to ensure you have the protection you need to launch your product.  The first step is a  consultation .  During our consultation, we learn about your invention and find out if the provisional patent application cover sheet is the right form for you.

Schedule Your Consultation: Call (949) 433-0900

Popular posts.

Patent process overview Patent process explained How much does a patent cost? Trademark process and costs Patent process and costs

Patent Consultations Patent Searches Patent Applications Utility Patents Design Patents Patent Prosecution Services Patent Defense Services Patent-Law Counsel for In-House Attorneys Trademark Overview Trademark Search Services Trademark Application Services Trademark Prosecution Services Trademark Enforcement Services Trademark Defense Services See All Services

Automotive Patents Consumer Products Patents Culinary Patents Manufacturing Patents Medical Patents Optics Patents Software & App Patents See All Industries

James Yang OC Patent Lawyer 2372 Morse Ave., Suite #178 Irvine, CA 92614 Tel: (949) 433-0900

Sitemap: Pages  |  Sitemap: Posts

Terms of Use and Privacy Policy

Ada compliance, service area.

• Collections

Frequently Asked Questions: Provisional Patent Applications

What is a provisional patent application?

Under US patent law, a provisional patent application (“ provisional application ”) is a document that is filed at the United States Patent and Trademark Office (USPTO) to establish an invention’s “priority date” – that is, to show that an applicant adequately possessed the invention described in the provisional application as of the provisional application’s filing date. To be most effective, a provisional application should describe the invention in enough detail for someone of ordinary skill in the art to make and use the invention without undue experimentation. A provisional application does not get examined by the USPTO, so it is the applicant’s responsibility to ensure that it adequately describes the invention. If the provisional application does not describe the invention thoroughly enough, then it may not be sufficient to establish a priority date for patent claims directed to the invention that are ultimately filed and examined in the US and/or abroad.

Why should I consider filing a provisional application?

A provisional application can be an expedient and relatively inexpensive way to establish a priority date for prospective worldwide patent rights covering an invention without affecting the term of those rights.

When should I consider filing a provisional application?

• Before any public disclosure of the invention (e.g., a conference presentation, poster session, department seminar, paper publication and/or public announcement);
• Before a meeting with sponsors, collaborators, competitors, and/or investors; and/or
• When the inventors have reduced their invention to practice (or have a good plan for how to reduce their invention to practice), but plan to continue working on the invention over the next year.

What should a provisional patent application include?

A provisional application may include a variety of materials (e.g., text, figures, graphs, charts, and/or photographs) that describe the invention as well as how to make and use it. A provisional application should explicitly answer the following questions:

• What is the invention?
• How is the invention made?
• How is the invention used?

US patent law requires the provisional application to include comprehensive answers to these questions in order to establish a priority date for the invention. These legal requirements are called the “written description” and “enablement” requirements and they also apply to U.S. nonprovisional applications.

TIP: Ask the inventors for all materials that describe/support their work on the invention. These may include, by way of example, theses, manuscripts, “Supplementary Materials” sections of journal papers, computer code (preferably with comments), laboratory notebooks, emails, invention disclosure forms, and/or presentations.

TIP: Confirm that the invention being disclosed is actually new.

Should a provisional application include patent “claims”?

Legally, a granted patent claim defines the invention for which an applicant has enforceable rights (e.g., the right to prevent others from making, using, or selling the claimed subject matter without permission).  Claims are granted by the USPTO in nonprovisional applications, which are examined by patent examiners for utility, novelty, nonobviousness, as well as compliance with the written description and enablement requirements.

Provisional applications, on the other hand, are not examined, and thus there is no requirement to include claims. Nevertheless, including claims in a provisional application can provide several benefits. First, including claims the provisional application can provide the benefit of an earlier “priority date” for the later-filed nonprovisional application and the claims that will eventually be examined in the nonprovisional application. Second, considering claim scope early in the provisional application drafting process can be a useful exercise for shaping the legal definition of the invention. Third, the claim drafting process can emphasize the subject matter that should be described in detail in the specification of the provisional application in order to meet the “written description” and “enablement” requirements.

TIP: Including even a modest number of claims in a provisional application can help focus the drafting effort and may provide stronger priority benefits for any follow-on nonprovisional and/or foreign applications.

Who should be named as an inventor on a provisional application?

Under US law, an inventor is anyone who “contributes to the conception” (e.g., the complete mental embodiment) of at least one claim. In contrast, someone who has only reduced the inventive material to practice (without making any conceptual contribution) should not be named as an inventor. Inventorship is not necessarily the same as authorship of an academic paper.

Who owns the invention?

Under U.S. law, patent rights accrue to the inventors. However, most inventors are obligated to assign their patent rights to their employers by virtue of their employment agreements or institutional intellectual property policies.

Similarly, an inventor employed elsewhere, such as a contractor or collaborator, may be obligated to assign his or her patent rights to his or her employer.

Thus, if the provisional application names inventors from two entities who are each obligated to assign their rights to their respective entities, then both entities may have undivided ownership interest in the provisional application.

TIP: Because patent claims can inform the inventorship (and the ownership) of a provisional application, this is another good reason to include patent claims in a provisional application.

TIP: Obtain and record assignments from the inventors as soon as possible after a provisional application is filed. This ensures that the assignee is entitled to file continuing and PCT applications claiming priority to the provisional applications, grant licenses, etc.; and it also eliminates potential uncertainty regarding ownership that could arise in diligence or litigation.

Where was the invention made?

If the invention was invented in another country, it might be necessary to obtain a foreign filing license from the other country’s patent office before filing a U.S. provisional application. In some cases, it might be appropriate to file a patent application in the other country first, then file a U.S. nonprovisional application that claims priority to the foreign patent application.

In addition, if the invention was invented elsewhere (e.g., at another company or institution, either in the U.S. or abroad), another entity may have patent rights in the invention, for example, because its employees are inventors or because it provided facilities or services to the inventor(s).

TIP: For cases involving inventors from another entity, consider executing a license or joint research agreement with the other entity to reduce the risk of dispute regarding ownership and control of jointly developed intellectual property.

When do I have to “convert” my provisional application?

An applicant must “convert” the provisional application by filing a nonprovisional application and/or foreign patent applications within one year of the provisional application’s filing date. Of course, an applicant can always file a nonprovisional and/or foreign application before the one year anniversary of the provisional application’s filing date. Doing so will start the examination process sooner and will also begin the term of any patent that might issue from the nonprovisional and/or foreign application.

Can I file more than one provisional application for the same invention?

Yes. An applicant can file as many provisional applications as desired for a single invention during the one year “life span” of the first provisional application.

TIP: For on-going projects, it often makes sense to file multiple provisional applications, where each provisional application represents an additional advance and/or milestone. Doing so can provide the earliest possible priority date for each advance. The concepts disclosed in these multiple provisional applications can be filed in a nonprovisional and/or foreign patent application claiming priority to each provisional application prior to the expiration of the first provisional application in the series.

Want to receive the latest info from Cooley GO?

Sign up now

Give us feedback

Visit Cooley

Cooley LLP, Cooley (UK) LLP, and Cooley SG LLP. All rights reserved.

COOLEY® and the COOLEY LLP® logo are registered U.S. service marks of Cooley LLP.

COOLEY GO is a trademark of Cooley LLP.

We use cookies to improve your experience on our site.

By using our website, you agree to our use of cookies. Find out more information on how we use cookies and how you can change your settings in our cookie policy .

• Website Terms of Use (US)
• Form of Employee Confidential Information and Inventions Assignment Agreement
• Form of Non-Disclosure Agreement (One-way)

Other resources

Procuring U.S. Patents without a Signed Assignment of Patent Rights

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights.  Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed.  This article summarizes the requirements for filing and prosecuting a U.S. patent application filed post-America Invents Act (AIA) without a patent assignment and identifies pitfalls when establishing ownership of patent rights for patent prosecution.  Inventors being unavailable may also complicate obtaining the declarations required for U.S. patent prosecution, but solutions are available as we previously discussed here .

Need for an Assignment

For a patent to issue to an assignee, the United States Patent and Trademark Office (the “USPTO”) must be made formally aware of the assignment so that the assignee is recognized as the patent applicant.  Filing an Application Data Sheet (ADS) for a patent application identifying the assignee as the applicant provides informal notice to the USPTO.   MPEP § 301 discusses ownership/assignability of patents and applications, including formal assignment recordation at the USPTO.  Recording an assignment may be necessary to permit the assignee to “take action” in the patent application during prosecution and for the patent to issue in the name of the assignee.   37 CFR 1.46 ; MPEP §§ 301 , 302 , 605 .  In other words, assignees may face obstacles prosecuting a patent without an executed assignment.  The assignment(s) must transfer the entirety of patent rights from each of the inventors to the assignee, e.g., corporation, partnership, university, government entity, etc.  There can be multiple assignees if different inventors assign their rights to different assignees, a situation that results in two or more partial assignees that must each be identified to the USPTO as an applicant.  MPEP § 301 .

As only one patent assignment is required per inventor per patent application, subsequent applications claiming priority may often rely on an earlier assignment (depending on the assignment’s particular language).  If new subject matter is introduced in the application being filed, such as in a continuation-in-part application, another assignment may be required.

Persons who may file a Patent Application without an Assignment

Fortunately, applicants may procure a patent even if an inventor is not available to sign an assignment before application filing or during prosecution before payment of the issue fee. 

A person to whom the inventor is under the obligation to assign the invention may file a patent application and be identified as the applicant.  An assignment can then be subsequently executed and the USPTO notified as discussed above.  Alternatively, other documentary evidence of ownership, such as an employment agreement, invention disclosure form, or other documentation, can be recorded with the USPTO in lieu of a signed assignment document.  37 CFR 1.46 .  Employment agreements may contain language stating that the inventor assigns all rights, title, and interests in any invention developed while employed by the employer.  In some instances, the employment agreement may affirmatively state that the employee is under an obligation to assign the invention to the employer.  An invention disclosure form may contain language stating that the inventor’s signature on the form acknowledges the inventor’s assignment of and/or obligation to assign any rights, title, and interest in the invention disclosure to the employer.  If the invention disclosure form includes the inventor’s signature, this may be sufficient evidence that the employer is an obligated assignee.  37 C.F.R. 1.46(b)(1) .  It is important to examine any documentary evidence of ownership before recordation to identify any information (e.g., industry trend language, discussion of prior art, personal information of an employee, etc.) that may require redaction before recordation and/or may make public recording of the documentary evidence an undesirable option for the applicant.

Also, a person who shows sufficient proprietary interest in the matter may file a patent application and be identified as the applicant upon showing that such an action is appropriate, with the resulting patent being issuable in the applicant’s name.  37 CFR 1.46 .  If filing a national stage application, the applicant must have been identified in the international stage of the international application or as the applicant in the publication of the international registration. 

Showing Sufficient Proprietary Interest or Obligation to Assign

As provided in 37 CFR 1.46(b)(2) , “[i]f the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.”  Additionally, as stated in MPEP § 409.05 , “[t]he ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.”

Showing sufficient proprietary interest requires “proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”   37 CFR 1.46(a) ; 37 CFR 1.424 .  Showing sufficient proprietary interest is discussed in MPEP § 409.05 and may be established in various ways depending on the circumstances.  MPEP § 409.05 states that

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant.  The facts in support of any conclusion that a court would award title to the 37 CFR 1.46 applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same.  The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved.  A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

Remember that an applicant as a person who otherwise shows sufficient proprietary interest in the matter must submit the required petition, fee, and information prior to paying the issue fee as set forth in 37 CFR 1.46 .

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights even without execution of a signed assignment by an inventor.  Before doing so, however, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

Subscribe To Viewpoints

• October 27, 2020

Viewpoint Topics

• Intellectual Property
• Patent Prosecution & Strategic Counseling

Professionals

Christina sperry, mark d. hammond, related practices.

• Patent Prosecution

Patent Transfer Process Explained

The patent transfer process involves a legally binding contract that transfers ownership of a patent or patent application from one entity to another. A patent assignment agreement outlines the terms and conditions of the transfer, including the scope, payment terms, and warranties. Careful preparation and execution of supporting documents, such as patent deeds, are imperative. Filing with the USPTO and recording patent transfer details provide public notice and update records. Notifying patent offices worldwide and maintaining patent rights through regular fees and renewal applications are also necessary. Ensuring accurate documentation and avoiding common mistakes is critical to a successful transfer, and a deeper examination of the process reveals further nuances and complexities.

Table of Contents

Understanding Patent Assignment Agreements

A patent assignment agreement is a legally binding contract that transfers ownership of a patent or patent application from one entity to another, outlining the terms and conditions of the transfer. This agreement is a crucial document in the patent transfer process, as it ensures a smooth transition of intellectual property rights. The contract negotiation process involves careful consideration of various factors, including the scope of the transfer, payment terms, and warranties.

When negotiating a patent assignment agreement, it is essential to carefully review the terms and conditions to ensure that they align with the interests of all parties involved. This includes specifying the intellectual property rights being transferred, the territory in which the patent applies, and the duration of the agreement. Additionally, the agreement should outline the obligations and responsibilities of each party, including the assignor and assignee. By drafting a comprehensive and well-structured patent assignment agreement, parties can mitigate potential risks and ensure a successful transfer of patent ownership.

Preparing Patent Transfer Documents

Once a patent assignment agreement is negotiated and finalized, the next step in the patent transfer process is to prepare the necessary documents to effectuate the transfer of patent ownership. This involves organizing and assembling the required documents in a logical and coherent manner. Document organization is vital to confirm that all necessary information is accurately captured and presented, thereby facilitating a smooth transfer of patent ownership.

The key documents typically involved in the patent transfer process include the patent assignment agreement, patent deeds, and other supporting documentation. These documents must be carefully prepared and reviewed to verify accuracy, completeness, and compliance with relevant legal and regulatory requirements. The documents should clearly outline the terms and conditions of the patent transfer, including the identities of the assignor and assignee, the patent details, and the effective date of transfer.

Filing With the USPTO

Following preparation of the necessary documents, the patent transfer process proceeds with the filing of these documents with the United States Patent and Trademark Office (USPTO) to formally record the change in patent ownership. This filing is a vital step, as it provides public notice of the patent transfer and updates the USPTO's records.

When filing with the USPTO, it is imperative to verify that all required documents are complete and accurate. This includes the executed patent assignment agreement, as well as any other supporting documentation. The USPTO requires specific information and formatting for these documents, so careful attention to detail is necessary. Additionally, the required USPTO Fees must be paid at the time of filing. These fees vary depending on the type of patent and the nature of the transfer.

Before filing, it is also recommended to conduct thorough Patent Searches to confirm that the patent is in good standing and that there are no outstanding issues that could affect the transfer. By carefully preparing and filing the necessary documents, the patent transfer process can proceed smoothly and efficiently.

Recording Patent Transfer Details

After filing the necessary documents with the USPTO, the next step in the patent transfer process involves accurately recording the patent transfer details to guarantee that the updated ownership information is reflected in the patent office's records. This step is vital in maintaining an unbroken patent chain, which is necessary for establishing clear ownership and preventing potential disputes.

To facilitate accurate recording, the following details must be meticulously documented:

• Assignment dates : The exact dates of patent assignment, including the effective date of transfer and the date of recordation.
• Party information : The names and addresses of all parties involved in the transfer, including the assignor and assignee.
• Patent details : The patent number, title, and relevant patent office information.

These details are typically recorded in a transfer ledger, which serves as a centralized repository for all patent transfer information. By maintaining an up-to-date transfer ledger, patent owners can verify that their patent portfolio is accurately reflected in the patent office's records, minimizing the risk of errors or disputes.

Notifying Patent Offices Worldwide

Upon completion of the patent transfer process, it is vital to notify the relevant patent offices worldwide to confirm that the change in ownership is formally recorded. This involves complying with international filing requirements, which vary by jurisdiction, to maintain the validity and enforceability of the patent. Failure to provide timely and accurate notifications may lead to adverse consequences, including the loss of patent rights.

Patent Office Notifications

Notifying patent offices worldwide of a patent transfer is a vital step in the patent transfer process, as it verifies that the relevant authorities are informed of the change in patent ownership and can update their records accordingly. This notification is imperative to maintain that the patent status is accurately reflected in the patent office's records, which can impact the patent's validity and enforceability.

Failure to notify the patent offices can lead to office delays, which can have significant consequences, including delayed patent grants, lost patent rights, and even abandonment of the patent application. To avoid these consequences, it is vital to notify the patent offices promptly and accurately.

The following steps should be taken to notify patent offices worldwide:

• Identify the relevant patent offices that require notification.
• Prepare and submit the required documentation, such as assignment records and proof of change in ownership.
• Verify that the patent office has updated its records to reflect the change in patent ownership, thereby confirming the patent's new status.

International Filing Requirements

In the context of international patent transfer, fulfilling filing requirements for notifying patent offices worldwide involves adhering to specific regulations and procedures that vary by jurisdiction. This necessitates a thorough understanding of the filing requirements for each region, as failure to comply can result in the invalidation of the patent transfer.

To navigate these complexities, patent holders can leverage Regional Treaties, such as the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC), which establish standardized filing procedures and reduce the administrative burden associated with filing in multiple jurisdictions. Effective Filing Strategies involve identifying the most relevant treaties and conventions, and tailoring the filing approach to the specific needs of each region. This may involve prioritizing certain jurisdictions, exploiting fast-track examination options, or leveraging provisional applications to secure early filing dates. By adopting a nuanced and informed approach to international filing, patent holders can safeguard that their intellectual property rights are properly protected and enforced worldwide.

Post-Transfer Patent Maintenance

Following a successful patent transfer, the assignee assumes responsibility for maintaining the patent's good standing by timely paying maintenance fees and addressing any office actions that may arise. This includes proactive patent monitoring to stay informed about upcoming deadlines and potential issues.

To maintain the patent, the assignee must fulfill the following obligations:

• Timely payment of maintenance fees : Regular fees must be paid to the patent office to keep the patent in force.
• Patent renewal : Periodic renewal applications must be filed to extend the patent's term.
• Responding to office actions : The assignee must address any issues or objections raised by the patent office during the patent's lifetime.

Failure to comply with these requirements can result in the patent lapsing or being revoked. As a result, it is crucial for the assignee to prioritize patent maintenance to preserve the patent's value and enforceability. By doing so, the assignee can safeguard the patent, making it a valuable asset, providing a competitive advantage in the market.

In this way, the assignee can confirm the patent remains a vital part of their intellectual property portfolio. By proactively managing patent maintenance, the assignee can protect their investment and guarantee a strong market position.

Avoiding Common Transfer Mistakes

When transferring patent ownership, it is vital to exercise diligence and attention to detail to avoid common mistakes that can compromise the validity and value of the patent. Rushing the process, incomplete documentation, and lack of clarity are prevalent pitfalls that can lead to costly consequences. By understanding these potential mistakes, patent holders can take proactive steps to guarantee a smooth and successful transfer.

Rushing the Process

Rushing the patent transfer process can lead to costly errors, delayed completion, and even intellectual property loss. Time constraints often pressure parties to expedite the process, but this hastiness can have unforeseen consequences. It is crucial to prioritize accuracy and thoroughness over speed to guarantee a successful transfer.

Some common mistakes that can occur when rushing the process include:

• Inaccurate assignment : Failing to correctly identify the assignor and assignee, or neglecting to obtain the necessary signatures, can invalidate the transfer.
• Overlooked obligations : Omitting or misunderstanding contractual obligations, such as payment terms or territorial restrictions, can lead to disputes and legal issues.
• Insufficient due diligence : Failing to conduct a thorough review of the patent portfolio can result in the transfer of invalid or unenforceable patents.

Incomplete Documentation

Incomplete documentation is a pervasive issue in patent transfer, as a single overlooked or missing document can jeopardize the entire process and lead to costly consequences. This oversight can lead to legal ramifications, including disputes over ownership and invalidation of patent rights. Additionally, incomplete documentation can create document chaos, making it difficult to track and manage patent portfolios.

To avoid document chaos and legal ramifications, it is vital to maintain a thorough and organized patent documentation system. This includes regularly reviewing and updating patent documents, as well as implementing a robust document management system to track and store patent-related documents. By taking these proactive measures, patent holders can safeguard a smooth and successful patent transfer process.

Lack of Clarity

Ambiguity in patent transfer agreements can lead to misunderstandings and disputes among parties, highlighting the importance of clarity in drafting and negotiating transfer documents. A lack of clarity can have far-reaching consequences, including delayed or failed transfers, disputes over patent ownership, and even litigation.

To avoid these pitfalls, it is crucial to verify that patent transfer agreements are free from unclear terminology and ambiguous language. Some common examples of unclear language include:

• Vague descriptions of patent rights , leaving uncertainty about what rights are being transferred.
• Ambiguous definitions of key terms , leading to confusion over the scope of the transfer.
• Oversights in assigning responsibilities , resulting in disputes over who is accountable for specific tasks or obligations.

Frequently Asked Questions

Can a patent transfer be revoked after it's completed?.

While a patent transfer is typically considered a permanent assignment, a Reversal Clause can be included to allow for revocation under specific circumstances, such as post-transfer disputes or breach of contract.

Do I Need a Lawyer for the Patent Transfer Process?

When considering a patent transfer, it is advisable to engage a lawyer to guarantee a seamless process. Cost considerations aside, expert guidance is vital in traversing complex legal requirements, thereby minimizing potential risks and safeguarding a successful transfer.

How Long Does a Patent Transfer Process Typically Take?

The duration of a patent transfer process varies, influenced by patent complexity, with straightforward cases taking 2-4 weeks and more intricate ones requiring 2-6 months, while transfer timelines can be expedited with proper planning and strategy.

Can I Transfer a Pending Patent Application?

Yes, a pending patent application can be transferred, but it's essential to weigh abandonment risks and adjust the application strategy accordingly to avoid potential loss of patent rights during the transfer process.

Will a Patent Transfer Affect Its Validity or Enforceability?

A patent transfer typically does not affect the patent's validity or enforceability, as ownership rights are merely reassigned, leaving patent strength intact, provided all formalities are complied with and no material changes are made to the patent's scope.

UNLOCK YOUR COPY

The Limited Monopoly®

…providing patent education since 2005.

Sunday, August 25th, 2024

• Accelerated Examination
• Accessing Patent Records
• America Invents Act (AIA)
• Business of Patents
• Competitive Surveillance
• Design Patents
• Due Diligence
• Duty of Candor
• Examiner Interviews
• Infringement
• International Patent Applications
• Invention Disclosures
• Invention Promotion Scams and Fee Scams
• Inventorship
• Limited Monopoly
• Non-Disclosure Agreements
• Ownership Rights
• Patent Application Types
• Patent Claims
• Patent Cooperation Treaty (PCT)
• Patent Drawings
• Patent Fundamentals
• Patent Licensing
• Patent Models
• Patent Pending
• Patent Preparation
• Patent Prosecution
• Patent Protest
• Patent Reform
• Patent Searching
• Patent Strategy
• Patentability of Inventions
• Plant Patents
• Provisional Patent Applications
• Public Interest
• Reexamination
• Restriction Requirements
• Uncategorized

Don’t Cut Corners… Consider Assigning That Provisional Patent Application

Reason #1: A Deceased Inventor

If an inventor named on a provisional patent application dies before an assignment is executed, the inventor’s legal representative (executor, administrator, etc.) may take actions on behalf of the deceased inventor.  If the deceased inventor had an agreement to assign with his employer, ownership is more straightforward, but the employer still must deal with the legal representative.  If no agreement to assign has been executed, the situation can become more difficult and can impact ownership and even prosecution of any subsequent utility patent application or foreign applications. All of this can be avoided if the provisional patent application is assigned when filed.

Reason #2: The Inventor Who Loses Mental Capacity

An inventor who becomes mentally incompetent due to mental illness or other circumstances can create a myriad of problems with a pending patent application. An assignment executed prior to the mental illness allows the assignee to take actions without an assertion of ownership by the inventor, and also establishes clear title without the necessity of signatures later on.

Reason #3: A Hostile or Missing Inventor

Should an inventor leave the company he or she may no longer be willing to sign papers, including assignment documents. The employee may be disgruntled or simply not interested in signing papers. In addition, an inventor may move and not provide a forwarding address, or otherwise be missing.  Contact with an inventor can become important during subsequent prosecution, for example.  Dealing with hostile or missing inventors can create problems for your company’s intellectual property. Knowing that an inventor has transferred ownership to your company through an assignment alleviates many of these potential problems.

Reason #4: A Green Light for Continued Investment

If all inventors named on a provisional patent application have assigned their rights to your company, ownership is clear and trouble free. This equates to a green light to continue investing in research and development, knowing that future investments made in the subject technology are free and clear of ownership issues.  Without clear title to a patent application, provisional or otherwise, any investments made in the technology will be to the benefit of not only the company, but also to any named inventors until such time as they assign ownership. With all of the uncertainty associated with the development of any new technology, the simple task of executing an assignment at least avoids one facet of uncertainty – that of ownership.

Reason #5: A Clear Chain of Title for an Acquisition

Should your company be acquired, or should you spin off a division, a product line, or even a patent or patent portfolio, the purchaser will demand that there is a clear and unambiguous chain of title for the technology or business being purchased. The purchaser will require many things including title documents, certifications, files, and similar paperwork, all of which are intended to ensure that what is being purchased has a clean title. It is not at all uncommon for a purchaser of an issued patent to insist on executed and recorded assignments for any underlying provisional patent application, even if that provisional patent application has long since expired. If the inventors on that long expired provisional are no longer with your company, it can be difficult and sometimes impossible to obtain signatures for an assignment. Either the inventors can’t be located, or they have no motivation to execute an assignment because they are no longer with your company. Either way, you can save yourself a lot of work and aggravation if that provisional is assigned right away.

Reason #6: Better License Agreements

Should you license a subsequent patent or patent portfolio, the licensee will want to know that there is clear title to all intellectual property, including provisional applications. If a licensee plans to not only pay an ongoing license fee, but also invest in the tooling, marketing and production capabilities necessary to build and sell the product they have licensed from you, they certainly want to ensure that there will be no ownership issues that could prompt a third party to in any way jeopardize their business initiatives and investments.

  Reason #7: PCT and Foreign Entitlements

The United States requires that the applicant on all patent applications is the inventor or inventors.  This is not so in most foreign countries.  Most foreign countries, as well as the provisions of the Patent Cooperation Treaty (PCT) 3 , allow the applicant to be a company or other legal entity. This enables a company to take actions and direct prosecution of the foreign applications, and can be beneficial to the company who employs the inventors and is paying for the patent applications. In order to name a company or other legal entity in a PCT application, the PCT Request must establish the right of the applicant, in this case a company or legal entity, to apply for and be granted a patent. Further, to claim priority to an earlier patent application such as a United States Provisional Patent Application, the Applicant must prove that they are entitled to make this priority claim. The most common way to establish rights of an applicant to file and be granted a patent, and also establish rights to make a priority claim, is by referencing an assignment from the inventors to the company.  Without an assignment of a provisional patent application, it is difficult or impossible to establish these rights.

Reason #8: Establish Ownership Early

Businesses should perfect their ownership rights on a timely basis.  This means provisional patent applications that reflect the work and assets of a company should be assigned to the company right away. This lays the groundwork for a solid and clean intellectual property asset base that can yield positive financial returns. Delays in establishing ownership by way of properly prepared and executed assignments can turn out to be very costly to take care of at a later date when inventors have left the company or otherwise become unavailable. If the technology is important to your business, you should take actions not only to protect it by way of a patent application or applications, but you should also take actions necessary to establish and secure ownership right away.

• The Limited Monopoly March 2006. “Have Brain, Will Invent: Who Owns Your Inventions?”
• The Limited Monopoly June 2009. “Weaknesses of the “Quick and Dirty” Provisional Patent Application”.
• The Limited Monopoly November 2007. “Filing International Patent Applications- Tuning In To The Patent Cooperation Treaty.”

Authors Robert D. Gunderman P.E. (Patent Technologies, LLC www.patentechnologies.com ) and John M. Hammond P.E. (Patent Innovations, LLC www.patent-innovations.com) are both registered patent agents and licensed professional engineers.  They offer several courses that qualify for PDH credits.  More information can be found at www.patenteducation.com .     Copyright 2011 Robert Gunderman, Jr. and John Hammond.

Note:  This short article is intended only to provide cursory background information, and is not intended to be legal advice.  No client relationship with the authors is in any way established by this article.

         For a PDF download of this article or to print a copy , click here →

Categories: Ownership Rights , Patent Fundamentals , Provisional Patent Applications

Tagged as: assignment , Patent , patent application , patent assignment , Patent Preparation , patent prosecution , Patent protection , patent service , Patents , provisional application , provisional patent application

ROBERT D. GUNDERMAN P.E.

Mr. Gunderman has 30+ years of engineering related work experience, and is the President of Patent Technologies, LLC, a patent law firm with headquarters in the Lennox Tech [more...]

JOHN M HAMMOND P.E.

Mr. Hammond is a licensed Patent Agent, the President of Patent Innovations LLC and a licensed Professional Engineer. He has 23 years of work experience in product design [...}

PATENT EDUCATION

• Patent Laws, Regulations, Policies & Procedures
• Manual of Patent Examining Procedure
• Chapter 0300
• Section 306

306 Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application [R-07.2015]

In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications. Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28 , accompanied by the required fee ( 37 CFR 3.41 ), is filed.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications. Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein. See 37 CFR 3.81 . See also MPEP § 307 and § 308 .

306.01 Assignment of an Application Claiming the Benefits of a Provisional Application [R-07.2015]

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120 . See MPEP § 306 . If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120 . See MPEP § 306 , § 307 , and § 308 .

• 301.01-Accessibility of Assignment Records
• 302.01-Assignment Document Must Be Copy for Recording
• 302.02-Translation of Assignment Document
• 302.03-Identifying Patent or Application
• 302.04-Foreign Assignee May Designate Domestic Representative
• 302.05-Address of Assignee
• 302.06-Fee for Recording
• 302.07-Assignment Document Must Be Accompanied by a Cover Sheet 
• 302.08-Mailing Address for Submitting Assignment Documents
• 302.09-Facsimile Submission of Assignment Documents
• 302.10-Electronic Submission of Assignment Documents
• 303-Assignment Documents Not Endorsed on Pending Applications
• 304‑305-[Reserved]
• 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
• 307-Issue to Non-Applicant Assignee
• 308-Issue to Applicant
• 309-Restrictions Upon Employees of U.S. Patent and Trademark Office
• 310-Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
• 311-Filing of Notice of Arbitration Awards
• 312-[Reserved]
• 313-Recording of Licenses, Security Interests, and Documents Other Than Assignments
• 314-Certificates of Change of Name or of Merger
• 315-Indexing Against a Recorded Certificate
• 316-[Reserved]
• 317.01-Recording Date
• 317.02-Correction of Unrecorded Returned Documents and Cover Sheets
• 317.03-Effect of Recording
• 318-Documents Not to be Placed in Files
• 319-[Reserved]
• 320-Title Reports
• 321‑322-[Reserved]
• 323.01(a)-Typographical Errors in Cover Sheet
• 323.01(b)-Typographical Errors in Recorded Assignment Document
• 323.01(c)-Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent
• 323.01(d)-Expungement of Assignment Records
• 324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012
• 325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

• Accessibility
• Privacy Policy
• Terms of Use
• Emergencies/Security Alerts
• Information Quality Guidelines
• Federal Activities Inventory Reform (FAIR) Act
• Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act
• Budget & Performance
• Freedom of Information Act (FOIA)
• Department of Commerce NoFEAR Act Report
• Regulations.gov
• STOP!Fakes.gov
• Department of Commerce
• Strategy Targeting Organized Piracy (STOP!)
• USPTO Webmaster