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International (pct) patent applications - the basics, i want to read about.

Download flowchart of the procedure - PCT Member States

There is no such thing as an "international patent." However, it is possible to file an "international patent application" (also called a "PCT application") which, for a certain period of time, takes the place of the many individual foreign patent applications that would otherwise be required for protection abroad. After that period, the PCT application is converted into individual foreign patent applications, one in each country where patent protection is to be sought, and these patent applications may then be pursued individually to obtain foreign patents.

These PCT applications are made possible by the Patent Cooperation Treaty (PCT), which is an international agreement administered by the World Intellectual Property Organisation (WIPO) and covers most of the major industrial countries of the world. See our information sheet entitled PCT Member States.

Note that the PCT system does not examine patent applications fully and it does not grant patents. However, the PCT system does enable you to delay the very expensive step of filing many individual foreign patent applications, and it does provide you with some information for assessing the prospects of actually obtaining granted patents, and their potential scope of protection, before major costs are incurred.

Details of PCT Member States can be found here .

Patent protection abroad

Usually, an applicant begins by filing a patent application at the local national patent office, for example the UK Intellectual Property Office. This establishes a priority date. If patent protection is required abroad, it is necessary to file foreign patent applications. If these foreign patent applications are filed within one year from the priority date (the priority period), then they count as if they had been filed on the priority date.

International patent applications

Instead of filing many individual foreign patent applications, it is possible to file a single "international" or "PCT" patent application, if all of the required countries/regions are members of the PCT. For a period, referred to as the International Phase, this PCT application takes the place of the many individual foreign patent applications that would otherwise have been required.

Afterwards, in a period referred to as the National/Regional Phase, the PCT application is converted into many individual foreign patent applications, one in each country where patent protection is to be sought.

The International Phase

The International Phase begins with the filing of the PCT application and ends when the PCT application is taken into ("enters") the National/Regional Phase. The International Phase consists of a Chapter I Phase and, if an optional Demand has been filed, a Chapter II Phase.

PCT applications are automatically subject to both search and examination. The examination may be without interaction between the applicant and the Examiner (under Chapter I) or with interaction between the applicant and the Examiner (under Chapter II).

The Chapter I Phase includes: filing the PCT application; preparation of the International Search Report (ISR) and the Written Opinion of the International Search Authority (WOISA); the optional filing of amended claims in response to the ISR; the optional filing of “informal comments” in response to the WOISA; and the publication of the international patent application, with the ISR and any amended claims which have been filed. If a Demand is not filed (see below), the WOISA is later reissued as the International Preliminary Report on Patentability under Chapter I (IPRP/ Chapter I).

The optional Chapter II Phase includes the filing of a Demand ( see here for details ), usually with amendments and/or arguments to address any objections raised in the WOISA, and the subsequent preparation of the IPRP/Chapter II.

The Applicant(s)

Not everyone is allowed to file a PCT application. There must be at least one applicant who is a resident or national of a country that is a member of the PCT. The residences and nationalities of the applicants also determine where the PCT application can be filed.

If none of the applicants is a resident or national of a member state, then a PCT application cannot be filed. The UK is a member of the PCT. Thus, a UK company or a UK national or resident is entitled to file a PCT application, and it can be filed at the UK Intellectual Property Office. If none of the applicants is a UK resident or national, but at least one applicant is a resident or national of a PCT member state, then a PCT application can still be filed. Depending upon the details, we may still be able to file the PCT application on your behalf, for example at the European Patent Office (EPO) or at the International Bureau (IB) of WIPO in Geneva.

A PCT application automatically covers many countries, and it is possible to have different applicants for different countries.

When any applicant in the PCT application is not also an inventor, we strongly recommend that, at the time of filing the PCT application, the inventor(s) sign an assignment document. This is intended to avoid or reduce possible difficulties of establishing ownership in various countries, later on in the process, for example at the time of entry into the National/Regional Phase, when an inventor may be unavailable or unwilling to sign new documents. If you would like further information on assignments, please let us know.

Filing formalities

If there is at least one applicant who is a UK resident or national, the PCT application is usually filed at the UK Intellectual Property Office. In such cases, the patent specification and the associated formal papers are filed in English.

It is generally necessary to provide the names, contact addresses and nationalities of the applicants, as well as the names and contact addresses of the inventors.

It is no longer necessary to choose which countries/regions or which types of protection (e.g., patents, utility models, etc.) you wish. Instead, the PCT application provides automatic coverage for all member states and all types of protection available under the PCT at the time of filing the PCT application. At present there are about 150 countries/regions: see our information sheet entitled PCT Member States.

Although in most cases it is no longer necessary to file additional documents (e.g. Appointment of Agent forms) signed by the applicants and inventors, this is still sometimes recommended. Also, it may be necessary to file good quality versions of any drawings.

The ISR and WOISA

Shortly after the PCT application has been filed, a copy will be forwarded to a competent national/regional patent office, who will act as the International Searching Authority (ISA) (for PCT applications filed at the UK Intellectual Property Office, the ISA is the EPO). The ISA will conduct a search of the relevant prior art, and will prepare both an International Search Report (ISR) and a Written Opinion (WOISA).

The ISR may include, for example, documents considered to be relevant for novelty and inventiveness. The WOISA is an initial opinion on the core patentability requirements: novelty, inventiveness and industrial applicability.

It is possible to file amended claims in reply to the ISR. It is also possible to file informal comments in reply to the WOISA. It is also possible to challenge the initial findings in the WOISA by filing a Demand (see below). If a Demand is not filed, the WOISA is later reissued without change as the IPRP/Chapter I.

Publication

The international patent application will be published on a Thursday shortly after 18 months from the priority date. The published claims will form the basis for “provisional protection” in those countries which offer it. If possible, the ISR will be included in the publication. If not, it will be published later. If amended claims are filed in response to the ISR, these too will be published, and they will form the basis for “provisional protection.” The WOISA, and any informal comments filed in reply to the WOISA, will not be published, but will be made available to the public via WIPO’s online file inspection service. Publication can only be prevented by withdrawing the international patent application, no later than about three weeks before the expected publication date.

Chapter II Demand

PCT applications are automatically subject to examination. By default, the examination is performed without interaction between the applicant and the Examiner (under Chapter I). However, if a Demand is filed, examination is performed with interaction between the applicant and the Examiner (under Chapter II). For a more detailed discussion of the Chapter II Phase, please refer to our information sheet entitled Chapter II Demand .

Examination under Chapter II will be of most interest to applicants who wish to address one or more objections expressed in a negative WOISA, and thereby attempt to obtain a more positive IPRP. Also, examination under Chapter II permits central prosecution of the application before a single patent office, and can be used to reduce the number of objections that will need to be addressed later, during the National/Regional Phase, before individual patent offices. This is especially true for the European Regional Phase, where further examination essentially continues from where the international examination stopped.

The deadline for filing the Demand is the later of: 22 months from the priority date, and 3 months from the issuance of the WOISA. Amendments and/or arguments addressing the objections raised in the WOISA must be filed by the same deadline, and are usually filed at the same time as the Demand. The Examiner then reconsiders the WOISA, in view of any amendments and/or arguments that have been filed, and issues the IPRP/Chapter II. In some cases, a second Written Opinion is issued, inviting further reply before the IPRP/Chapter II is issued.

The IPRP, whether under Chapter I or Chapter II, is a nonbinding opinion on the core patentability requirements: novelty, inventiveness and industrial applicability. The IPRP often gives a good indication of the prospects of actually obtaining granted patents, and their potential scope of protection.

Many countries will use the IPRP as the starting point for further examination in the National/Regional phase. However, some countries will ignore the IPRP and will conduct examination in the National/Regional Phase "from scratch".

Entering the National/Regional phase

The PCT application itself will never become a patent. Instead, the PCT application must be taken into the National/Regional Phase in those countries/regions where patent protection is to be sought. This must be done by the appropriate deadline. Each of the resulting individual National/Regional Phase patent applications is then pursued, before the respective national/regional patent offices, in order to obtain individual granted patents.

The normal deadline for entering the National/Regional Phase is 30 months from the priority date. Individual countries/regions may allow more time and, in practice, the deadline for most countries/regions is either 30 or 31 months from the priority date. In general, you will need to decide in which countries/regions you wish to proceed well before 30 months from the priority date. Note that, if desired, it is possible to enter the National/Regional Phase “early”, before the deadline.

Before April 2002, the deadline for entering the National/Regional Phase was 20 months from the priority date, unless a Chapter II Demand was filed by 19 months from the priority date, in which case the deadline for entering the National/Regional Phase was extended to 30 months from the priority date. In April 2002, the PCT was amended so that the deadline for entering the National/Regional Phase is 30 months from the priority date, whether or not a demand has been filed by 19 months from the priority date. However, some “reservation” countries gave formal notification that their national laws were not compatible with the amended PCT and that the old deadline would continue to apply in their country. Most of these countries have since withdrawn their reservations. As at 1st December 2021, there are only two reservation countries: Luxembourg (LU) and Tanzania (TZ). However, each of these countries can be reached via “Regional Phase” patent applications filed via the European Patent Office (EPO) and the African Regional Property Organisation (ARIPO) by the normal (30 or 31 month) deadline, and so, if the regional route is employed, then it is not necessary to file a Demand. However, if you wish to enter the National Phase in any of these countries (rather than the corresponding Regional Phase), then it is necessary to file a Demand by 19 months from the priority date if you wish to delay the National Phase deadline from 20 to 30 months.

Entry into National/Regional phase

The requirements for entering the National/Regional Phase are different for each country/region, and usually involve appointing a foreign attorney as your representative, filing a few formal documents, paying certain official fees and submitting a translation of the application into a local official language if necessary. Again, it may be necessary to obtain certain formal documents, signed by the applicants and the inventors.

For example, for an English language PCT application, it is necessary to prepare and file a Japanese language translation of the entire application within two months of entering the Japanese National Phase. Note that, for many countries, the translation must be filed no later than the National/Regional Phase deadline, and so you must allow sufficient time, before the deadline, for its preparation.

Further Examination

When the PCT application enters the National/Regional Phase, it is handled according to the usual treatment of patent applications in the countries or regions involved, and all of the local time limits, laws, rules, and procedures must be observed.

Some countries/regions, such as the USA and the EPO, may perform their own supplementary search before examining the application. If the EPO was the ISA, then after entering the European Regional Phase, further examination will almost certainly be performed by the same EPO Examiner who prepared the IPRP. If the IPRP was positive, then there should be no serious problems during the European Regional Phase.

However, after entering the US National Phase, the US Examiner may pay little heed to what happened during the International Phase, and further examination may well be "from scratch".

Advantages and disadvantages

Advantages of the PCT route, as compared to filing individual foreign patent applications, include:

• lower costs at the end of the priority period;
• decisions about where to pursue patent protection, and the substantial costs of filing individual foreign patent applications, are delayed until the end of the International Phase (typically an additional period of about 18 months);
• if the decision to seek foreign patent protection is taken very near to the end of the one year priority period, there may not be sufficient time to prepare and file individual foreign patent applications; instead, a single PCT application, in English, can be filed.

Disadvantages of the PCT route, as compared to filing individual foreign patent applications, include:

• the overall costs are higher;
• it usually takes longer to get patents granted via the PCT route.

As a rough guide, the minimum cost of filing a PCT application (for example, having a total of 50 pages), including the official fees but excluding the costs of drafting the specification, is approximately £4000 (excl.VAT). Typically, the total cost of filing a PCT application is about £5500-£8000 (excl.VAT).

The cost of filing an optional Demand, including the official fees but excluding the costs of filing any arguments and/or amendments in reply to the WOISA, is approximately £2200 (excl.VAT). Usually, about £1000 of this cost will be recouped when entering the European Regional Phase.

The cost of entering the National/Regional Phase in a particular country/region is roughly the same as the cost of filing a "direct" patent application in that country/region. Typically, the cost for each country/region is in the range £1000-£5000 (excl.VAT), plus the cost of preparing a translation into a local official language if necessary. We can provide more precise estimates on a case-by-case basis.

Process of a Typical PCT Application

T his information is simplified and must not be taken as a definitive statement of the law or practice.

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In the United States, where an inventor must assign ownership of patent rights to his or her employer or another company, he or she signs an assignment document that can be recorded at the United States Patent and Trademark Office. This document is often executed early in the pendency of the application and can control ownership rights of the U.S. application, any later-filed "children" U.S. applications, and foreign applications such as Patent Cooperation Treaty (PCT) applications. However, due to differences between U.S. and European law, the assignment may not be sufficient in Europe—and errors cannot be fixed retroactively.

In Europe,  an assignment of a patent application must be in writing and "shall require the signature of the parties to the contract." (Emphasis added.) Thus, according to European law, which was highlighted in a Board of Appeals of the European Patent Office (EPO) on November 14, 2006 , both the assignor and the assignee must sign the assignment document. While contract law in the U.S. and in a number of other countries consider a contract signed by the conveying party to be valid for this type of one-way conveyance, this is not true everywhere in Europe. In many parts of Europe, contract law requires that both parties sign for all conveyances. Thus, an assignment signed only by the inventor may not be effective in countries such as Great Britain and France.

Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it . This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. If, for example, a PCT application claims priority to an earlier-filed U.S. application, the claim must be made by the identical legal person who filed the earlier priority application or a successor in title. This identity or relationship must be valid at the time the PCT application is filed. Where a U.S. priority document is filed in the name of the inventors and the PCT application is filed in the name of the owner, there must be an assignment from the inventors to the owner prior to the filing of the PCT application. This can be particularly problematic when a provisional application is used as a priority document. The provisional application never becomes a patent and does not need to be assigned. Thus, assignments are often only executed after a non-provisional application is filed. While problems with valid claims to priority should be eased under the America Invents Act (AIA) because U.S. applications can now be filed in the name of the owner instead of the inventor , care should be taken to ascertain a proper right to claim priority particularly if there is any difference in the identity of the applicant.

As a practice tip, practitioners should make sure all assignments are signed and dated before the PCT filing date and are signed by both the assignee and assignor. If this cannot be done, or if the right to claim priority is at all uncertain, practitioners should file the PCT application in the name of the "person" who filed the priority application and provide any correction later. Practitioners should also make sure that the assignment specifies the priority application(s) with particularity, includes an assignment of the right to claim priority, and make sure each signature is either witnessed or notarized. These measures should be taken to prevent complications in various jurisdictions, such as some countries in Europe.

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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Japan: Q&A: How To Record An Assignment Of Patent Rights In A PCT-JP Application

We have been asked what to do about recording a new applicant for a patent application that started in the PCT international phase but will be entering Japan. This may particularly take place after the original applicant(s) assign rights to another party. Here are some thoughts.

I gained rights to this PCT application but have not submitted a Recording of Change under PCT Regulation, Rule 92bis. What should I do to be treated as applicant in the Japanese national phase?

We would generally strongly recommend an applicant to try to get a 92bis Recording of Changes filed during the PCT international phase, before the 30 months after priority date pass, if at all able to do so.

For your information, we have dealt with a case when a 92bis was submitted to the International Bureau (IB) of the World Intellectual Property Organization (WIPO) before the 30-month deadline but only received after the deadline, so extra amendment was necessary in the national phase. Therefore, please try to get the 92bis Recording filed quickly (online, perhaps). If it does end up being late although it was submitted on time, redress for this issue may be possible for your case.

What is the problem with filing a change after the national phase entry?

It is possible to file an Assignment after entry to Japanese national phase. However, this would mean extra cost and effort. The advantage of using a 92bis Recording during the international phase is that it may be applied for all countries where the applicant enters national phase, saving the hassle of meeting individualized countries or regions' requirements to register an assignment of patent rights.

World Intellectual Property Organization. " Rule 92bis of the Regulations under the PCT ," accessed July 10, 2018.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Q&A: How to Record an Assignment of Patent Rights in a PCT-JP Application

Keisen Associates > Patent > Amendments > Q&A: How to Record an Assignment of Patent Rights in a PCT-JP Application

We have been asked what to do about recording a new applicant for a patent application that started in the PCT international phase but will be entering Japan. This may particularly take place after the original applicant(s) assign rights to another party. Here are some thoughts.

I gained rights to this PCT application but have not submitted a Recording of Change under PCT Regulation, Rule 92bis. What should I do to be treated as applicant in the Japanese national phase?

We would generally strongly recommend an applicant to try to get a 92bis Recording of Changes filed during the PCT international phase, before the 30 months after priority date pass, if at all able to do so.

For your information, we have dealt with a case when a 92bis was submitted to the International Bureau (IB) of the World Intellectual Property Organization (WIPO) before the 30-month deadline but only received after the deadline, so extra amendment was necessary in the national phase. Therefore, please try to get the 92bis Recording filed quickly (online, perhaps). If it does end up being late although it was submitted on time, redress for this issue may be possible for your case.

What is the problem with filing a change after the national phase entry?

It is possible to file an Assignment after entry to Japanese national phase. However, this would mean extra cost and effort. The advantage of using a 92bis Recording during the international phase is that it may be applied for all countries where the applicant enters national phase, saving the hassle of meeting individualized countries or regions’ requirements to register an assignment of patent rights.

  * For questions or consultation, please contact us for more information. ** The information provided on this website is for informational purposes only and is not intended as legal advice. Taro Yaguchi

World Intellectual Property Organization. “ Rule 92bis of the Regulations under the PCT ,” accessed July 10, 2018.

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301 Ownership/Assignability of Patents and Applications [R-10.2019]

35 u.s.c. 261   ownership; assignment..

Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.

Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths whose authority is proved by a certificate of a diplomatic or consular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent.

An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for 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.

35 U.S.C. 262   Joint owners.

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

37 CFR 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.

Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1) . Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same (e.g., existence of another patent owner with a dominant patent, failure to obtain FDA approval of the patented invention, an injunction by a court against making the product of the invention, or a national security related issue).

For applications filed on or after September 16, 2012, the original applicant is presumed to be the owner of the application for an original patent. See 37 CFR 3.73(a) . For applications filed before September 16, 2012, the ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993). A patent or patent application is assignable by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable (transferable) ownership interest in the patent or application. 35 U.S.C. 261 .

“Assignment,” in general, is the act of transferring to another the ownership of one’s property, i.e., the interest and rights to the property. The U.S. Patent and Trademark Office cannot explain or interpret laws that govern assignments and related documents, nor can it act as counselor for individuals. Assignments and other documents are contracts that are governed by the relevant state or jurisdictional law.

In 37 CFR 3.1 , assignment of patent rights is defined as “a transfer by a party of all or part of its right, title and interest in a patent [or] patent application....” An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application. In order for an assignment to take place, the transfer to another must include the entirety of the bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inherent in the right, title and interest in the patent or patent application. 35 U.S.C. 261 requires transfer of ownership by an assignment to be in writing. See Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 859 (E.D. Va. 2016).

As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use. A patent license is, in effect, a contractual agreement that the patent owner will not sue the licensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obligations and operates within the bounds delineated by the license agreement.

An exclusive license may be granted by the patent owner to a licensee. The exclusive license prevents the patent owner (or any other party to whom the patent owner might wish to sell a license) from competing with the exclusive licensee, as to the geographic region, the length of time, and/or the field of use, set forth in the license agreement.

A license is not an assignment of the patent. Even if the license is an exclusive license, it is not an assignment of patent rights in the patent or application.

Individual ownership - An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inventor, and the inventor has not assigned the patent property. Alternatively, it occurs where all parties having ownership interest (all inventors and assignees) assign the patent property to one party.

Joint ownership - Multiple parties may together own the entire right, title and interest of the patent property. This occurs when any of the following cases exist:

• (A) Multiple partial assignees of the patent property;
• (B) Multiple inventors who have not assigned their right, title and interest; or
• (C) A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest.

Each individual inventor may only assign the interest he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.

An assignment can be made of record in the United States Patent and Trademark Office (Office) in two different ways, for two different purposes. The differences are important to note:

• (A) An assignment can be made of record in the assignment records of the Office as provided for in 37 CFR Part 3 . Recordation of the assignment provides legal notice to the public of the assignment. It should be noted that recording of the assignment is merely a ministerial act; it is not an Office determination of the validity of the assignment document or the effect of the assignment document on the ownership of the patent property. See 37 CFR 3.54 , MPEP § 317.03 , and Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 862-3 (E.D. Va. 2016). For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.11 . See 37 CFR 3.81(a) .
• (B) An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding). This step may be necessary to permit the assignee to “take action” in the application, patent, or other patent proceeding under the conditions set forth in 37 CFR 1.46 and 37 CFR 3.81(a) and MPEP § 325 (for applications filed on or after September 16, 2012) or under the conditions set forth in pre-AIA 37 CFR 3.73 and MPEP § 324 (for applications filed before September 16, 2012). Recordation of an assignment in the assignment records of the Office does not , by itself, permit the assignee to take action in the application, patent, or other patent proceeding.

Additionally, for applications filed under 35 U.S.C. 111(a) , 363 , or 385 on or after September 16, 2012, an assignment may contain the statements required to be made in an oath or declaration (“assignment-statement”), and if the assignment is made of record in the assignment records of the Office, then the assignment may be utilized as the oath or declaration. See 35 U.S.C. 115(e) , 37 CFR 1.63(e) , and MPEP §§ 302.07 , 317 , and MPEP § 602.01(a) .

301.01 Accessibility of Assignment Records [R-10.2019]

37 cfr 1.12  assignment records open to public inspection..

• (1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records.
• (2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.
• (b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14 , are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.
• (1) Be in the form of a petition including the fee set forth in § 1.17(g) ; or
• (2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.
• (d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

Assignment documents relating to patents, published patent applications, registrations of trademarks, and applications for registration of trademarks are open to public inspection. Records related to assignments of patents, and patent applications that have been published as patent application publications are available on the USPTO website. Images of assignment documents recorded June 1998 and later are also viewable on the Office website. To view images of earlier-recorded assignment documents, members of the public must place an order pursuant to 37 CFR 1.12(d) .

The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open. Thus, if a document covers either a trademark or a patent in addition to one or more patent applications, it will be available to the public ab initio; and if it covers a number of patent applications, it will be so available as soon as any one of them is published or patented. Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.

Copies of assignment records relating to pending or abandoned patent applications which are open to the public pursuant to 37 CFR 1.11 or for which copies or access may be supplied pursuant to 37 CFR 1.14 are available to the public. For pending or abandoned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14 , information related thereto is only obtainable upon a proper showing of written authority. For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D). See 37 CFR 1.12 . For applications filed prior to September 16, 2012, the written authority must be from the applicant or applicant’s assignee or from the attorney or agent of either, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application. See pre-AIA 37 CFR 1.12 .

If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14 .

Assignment records relating to reissue applications are open to public inspection because reissue applications are open to public inspection pursuant to 37 CFR 1.11(b) .

Requests for abstracts of title for assignments of patents recorded after May 1, 1957, are provided by the Certification Division upon request and payment of fee required in 37 CFR 1.19 . Requests for copies of pre-1957 records for patents should be directed to the National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA. Payment of the fees required by NARA should accompany all requests for copies.

All assignment records from 1837 to April 30, 1957 for patents are now maintained and are open for public inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Maryland 20746 and at the Civilian Records Division of the National Archives at College Park, 8601 Adelphi Road, College Park, MD 20740-6001. Assignment records from before 1837 are not available. Individuals should check the National Archives website, www.archives.gov , for how to obtain information from these locations.

• 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

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