uspto substitute assignment

37 CFR § 1.64 - Substitute statement in lieu of an oath or declaration.

(a) An applicant under § 1.43 , 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration under § 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63 , or cannot be found or reached after diligent effort.

(b) A substitute statement under this section must:

(1) Comply with the requirements of § 1.63(a) , identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state;

(2) Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet in accordance with § 1.76 , the residence and mailing address of the person signing the substitute statement;

(3) Identify the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration under § 1.63 , namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under § 1.63 ; and

(4) Unless the following information is supplied in an application data sheet in accordance with § 1.76 , also identify:

(i) Each inventor by his or her legal name; and

(ii) The last known mailing address where the inventor customarily receives mail, and last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor who is not deceased or under a legal incapacity.

(c) A person may not execute a substitute statement provided for in this section for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56 .

(d) Any reference to an inventor's oath or declaration includes a substitute statement provided for in this section.

(e) A substitute statement under this section must contain an acknowledgment that any willful false statement made in such statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.

(f) A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under § 1.63 . The submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under § 1.43 , 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.

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• Title 37 —Patents, Trademarks, and Copyrights
• Chapter I —United States Patent and Trademark Office, Department of Commerce
• Subchapter A —General
• Part 1 —Rules of Practice in Patent Cases
• Subpart B —National Processing Provisions
• Oath or Declaration

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35 U.S.C. 2(b)(2) , unless otherwise noted.

24 FR 10332 , Dec. 22, 1959, unless otherwise noted.

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Editorial Note on Part 1

Editorial notes:.

1. In Patent and Trademark Office publications and usage the part number is omitted from the numbers of §§ 1.1 to 1.352 and the numbers to the right of the decimal point correspond with the respective rule numbers.

2. For nomenclature changes to part 1, see 68 FR 14335 , Mar. 25, 2003; 87 FR 68904 , Nov. 17, 2022.

§ 1.64 Substitute statement in lieu of an oath or declaration.

( a ) An applicant under § 1.43 , 1.45 or 1.46 may execute a substitute statement in lieu of an oath or declaration under § 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration under § 1.63 , or cannot be found or reached after diligent effort.

( b ) A substitute statement under this section must:

( 1 ) Comply with the requirements of § 1.63(a) , identifying the inventor or joint inventor with respect to whom a substitute statement in lieu of an oath or declaration is executed, and stating upon information and belief the facts which such inventor is required to state;

( 2 ) Identify the person executing the substitute statement and the relationship of such person to the inventor or joint inventor with respect to whom the substitute statement is executed, and unless such information is supplied in an application data sheet in accordance with § 1.76 , the residence and mailing address of the person signing the substitute statement;

( 3 ) Identify the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration under § 1.63 , namely whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration under § 1.63 ; and

( 4 ) Unless the following information is supplied in an application data sheet in accordance with § 1.76 , also identify:

( i ) Each inventor by his or her legal name; and

( ii ) The last known mailing address where the inventor customarily receives mail, and last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor who is not deceased or under a legal incapacity.

( c ) A person may not execute a substitute statement provided for in this section for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56 .

( d ) Any reference to an inventor's oath or declaration includes a substitute statement provided for in this section.

( e ) A substitute statement under this section must contain an acknowledgment that any willful false statement made in such statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.

( f ) A nonsigning inventor or legal representative may subsequently join in the application by submitting an oath or declaration under § 1.63 . The submission of an oath or declaration by a nonsigning inventor or legal representative in an application filed under § 1.43 , 1.45 or 1.46 will not permit the nonsigning inventor or legal representative to revoke or grant a power of attorney.

[ 77 FR 48819 , Aug. 14, 2012]

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 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.

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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.

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Filing an Assignment and Oath/Declaration for a Deceased Inventor

In law, the details are everything.  One slight variation in the facts changes the outcome.  One example is satisfying the assignment and declaration requirements for a deceased inventor in Post-AIA patent applications.

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).  Under normal circumstances, the inventors are considered the owners of a patent but can assign their ownership rights by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable ownership interest in the patent or application.  35 U.S.C. § 261 .

Assignment from Deceased Inventor

When there are joint inventors and one or more is deceased, assigning ownership becomes a more complex process.  The chain of ownership should be established from the deceased to his heirs and then from the heirs to the assignee.  This can be accomplished, for example, by using court documents confirming the heirs of the deceased inventor and having those heirs assign their rights to the assignee.  In addition, the remaining living inventors should also transfer their ownership rights to the assignee.

Oath/Declaration Requirement for Deceased Inventor

Under 35 U.S.C. § 117, legal representatives of deceased inventors may make application for a patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.  In addition, a person to whom a deceased inventor was under an obligation to assign the invention – such as an employer – may also make application for a patent.  35 U.S.C. § 118.  To satisfy the oath or declaration requirement, a Substitute Statement (USPTO form AIA/02) must be executed by someone authorized to do so.  37 C.F.R. 1.64(a).

Once you have all of the above elements, fulfilling the assignment requirements is as easy as uploading to the USPTO and recording the three separate assignments – living inventors, documents establishing heirship, and the heir’s assignment.  Similarly, fulfilling the oath or declaration requirements is as easy as submitting oaths/declarations from living inventors and a Substitute Statement executed on behalf of a deceased inventor.

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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.

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Best practice for recording US patent assignments

I’ll share my notion of the Best Practice for recordation of US patent assignments.  Please post comments below.

As a starting point to this discussion, I will remind the reader that if we receive a signed assignment and if we sit on it too long, we eventually come out on the wrong side of the 3-month period set forth in 35 USC § 261:

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.

So we will take as our starting point that whatever else we do about recording an assignment or postponing the recording of an assignment, we ought to try extremely hard to avoid getting on the wrong side of this three-month period.  (There are similar statutory three-month periods for trademark assignments and copyright assignments.)

Old-timers (or at least, practitioners who were in practice prior to January 1, 2014) will recall the days when it was necessary to pay a government fee to record a patent assignment. In those old days, practitioners would go to great lengths to try to avoid paying two fees if there was a way to squeeze two recordations into a single recordation (so as to pay only one fee).  A practitioner having encountered a problem with an existing recordation filing would go to great lengths to try to salvage the filing so as to avoid having to pony up a second government fee.  If there were two inventors, each of whom was supposed to sign an assignment, and if the signed assignments showed up on different days, most folks would carefully save up the first one and postpone e-filing it until the second signed assignment arrived.  This way, the filer could bunch them together and e-file them all in the same package.

As I say, the overarching goal for most practitioners in those old days was to try as hard as possible to get away with paying only one government fee for multiple assignments.

But the US eliminated the fee on January 1, 2014.  So that is no longer a reason to drag our feet on e-filing a signed assignment if we have it in hand.

A first drawback to intentionally postponing recording a signed assignment is that one might inadvertently permit the three-month period to pass (which I will call a “recordation failure”). By this I mean that to avoid a recordation failure, one needs to aggressively docket the three-month period. The docket steps would be (a) receive the signed assignment from the client; (b) note the date of execution (which might not be the same as the date that we received the signed assignment from the client); (c) add three months to the date of execution to arrive at a drop-dead recordation date, and (d) docket the drop-dead date and one or two warning dates.

If there were a docket failure (failing to set the drop-dead date, or failing to blow whistles loudly enough toward the end of the three-month period) then this would lead to a recordation failure (failing to record the signed assignment within the three-month period set forth in 35 USC § 261).

In our office, we estimate that the internal cost to set and clear a docket is around $50.  So if we can simply do something and get it done, rather than dragging our feet on the task, we don’t need to docket to remember to do whatever it is.  And then we save $50.

So to emphasize the above point, if we record each signed assignment promptly after receiving it, this also avoids having to do the above-mentioned fuss of docketing the three-month period under 35 USC § 261. Once we record the signed assignment, we can stop worrying about setting and clearing dockets to remember to record the signed assignment.

The practitioner who makes a decision to postpone recording an assignment is creating a second risk.  Whenever we sit on a signed assignment without recording it, we create the risk of misplacing the signed assignment . What if the document falls behind a desk?  What if the breeze catches the document and it flies out the window?  What if the file server where we store the PDF document crashes?  What if the file server does not crash, but through some bad luck the PDF document gets stored in the wrong folder?

The USPTO’s assignment recordation system may thus be thought of as an offsite backup for signed assignments. Saying this a different way, the sooner the signed assignment is recorded, the sooner that one may stop worrying about the risk of misplacing it.

A nay-sayer might ask “yes but if I record each inventor’s assignment when it arrives, I will have to fill in the twenty or so fields of the EPAS system twice instead of once!”  The answer to this, of course, is that when we are recording the first assignment, we should save a template.  When the second assignment shows up, we can use the template to auto-populate nearly all of the fields of the EPAS system for that second recordation.

Do you think that what I have described is a Best Practice?  Please post your comment below.

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8 replies to “best practice for recording us patent assignments”.

Fully agree! And file the 373. I docket neither of these, however I do have my own reminder system. Any new file opened automatically asks several questions in red, such as IDS filed? PoA filed? Assignment recorded? 373 filed? When done I turn each green. Because of 261, I treat newly received executed assignments as “drop everything and record this”. It is engrained. Jeff

So what happens if you record it beyond the 3 month execution date? Is it just not enforceable later during any potential litigation? Don’t we record assignments in divisional and cons, when one is recorded already in parent case? Aren’t those going to be more than 3 months from execution date?

The statute quoted in Carl’s post answers the “what if” Missing the three month deadline is almost always no big deal — not recording at all can turn into a HUGE problem! If you miss the three-month deadline for recording, the assignment is

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 three-month deadline is just a “relation back” type rule.

I wish Carl would have replied to this, as he was requesting comments.

Is the order of recordation important? If ownership flowed from inventors to Company A then to Company B, could there be a problem (perhaps later in litigation) with recording the assignment from Company A to Company B first then later recording the assignment from the inventors to Company A?

The order of the recordation is, generally speaking, not important.

A person rendering an opinion as to title will not (or, at least, should not) pay much attention to the sequence in which the recordations took place.

The one limited area where a date of recordation might make some difference is that under 35 U.S. Code § 261 a filer who dawdles for too long (a filer who permits more than three months to pass after the date of execution of an assignment) could possibly end up on the wrong end of a document signed by a second second purchaser or mortgagee.

Question: In the following the statement, “for a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.1.” does “assignee” refer only to assignees who are not the original Applicants, or does it refer to Assignee-Applicants as well?

In other words, if GIZOMOCO was listed on the ADS as the original Applicant and the 373 was submitted at filing along with a copy of the document assigning the rights from the inventor(s)s to GIZMOCO but the assignment to GIZMOCO wasn’t recorded, will the patent issue to the GIZMOCO or to the inventor(s)?

First, there is no need to file a 3.73 if you list GIZOMOCO as the Applicant on the ADS.

Second, as Carl explains above, there is no reason to fail to record the assignment.

To answer your question: the issued patent will list as Assignee whomever is listed in Box 3 of the Issue Fee Transmittal, regardless of who is Applicant. But the Issue Fee Transmittal reminds you of the 37 C.F.R. 3.81 requirement you quote: to list an Assignee on the Issue Fee Transmittal, you must have recorded the chain of assignments from the inventors to that Assignee.

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• ► Under AIA, Inventor refuses to sign an assignment

Under AIA, Inventor refuses to sign an assignment

Started by dab2d, 07-08-13 at 11:16 PM

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ThomasPaine

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Quote from: MLM on 07-09-13 at 07:22 PM Not pretty, but not a showstopper IMHO. Assignments are a matter of contract law. If there is an employment agreement that obligates the inventor to assign, you can record a copy of the agreement in lieu of an executed assignment (you can record pretty much any type of document with the USPTO). This has the effect of putting the world on notice that there is a cloud on the title. State law governs whether the prospective assignee has rights to the patent application under the employment agreement. If there is no agreement, then the inventor retains rights.

Quote from: moonman on 07-09-13 at 11:55 PM You may have sorted this out already, but at this point I would be questioning whether I have any ethical basis to file the application on behalf of the alleged assignee. I wouldn't want to end up filing and prosecuting an application by taking instructions from the wrong party.

Quote from: ThomasPaine on 07-09-13 at 08:55 PM "If the recorded contract or whatever document doesn't refer to the application by serial number, the PTO will let the inventor control prosecution." I don't think this is true.  If you file the application with a substitute statement the PTO will correspond with the applicant (i.e. the owner of the application).

Quote from: MLM on 07-10-13 at 12:00 AM I don't think that is a problem, absent an assignment the inventor can always intervene.

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Procedures for Amending Patent Assignment Agreements

Amending a patent assignment agreement requires a structured approach to establish legally binding changes. Begin by reviewing the original agreement to identify ambiguities, outdated provisions, or omissions. Analyze the agreement history to understand the context and concentrate on key aspects, such as scope of assignment, ownership rights, and obligations. Determine necessary changes based on the agreement's terms and conditions, and align them with current needs and expectations. Next, negotiate and collaborate with parties to resolve disputes amicably. Once agreed upon, draft and execute the amendment document, certifying its legal bindingness and enforceability. This is just the starting point for a successful amendment process.

Table of Contents

Reviewing the Original Agreement

A thorough examination of the original patent assignment agreement is necessary to identify potential ambiguities, outdated provisions, or omissions that may necessitate amendments. This meticulous review enables the identification of contract clauses that require updating, clarification, or revision to align with current business objectives, regulatory requirements, or changes in the parties' circumstances.

An in-depth analysis of the agreement history is required to understand the context in which the original agreement was drafted. This involves reviewing the negotiations, communications, and circumstances surrounding the execution of the agreement. By examining the agreement history, parties can identify sections where the original agreement may no longer reflect their intentions or interests.

The review process should concentrate on key aspects of the agreement, including the scope of the assignment, ownership rights, and obligations of the parties involved. A detailed understanding of the original agreement's terms and conditions is imperative to determining the need for amendments and making certain that any revisions align with the parties' current needs and expectations.

Determining the Necessary Changes

When amending a patent assignment agreement, it is vital to determine the necessary changes to verify that the updated document accurately reflects the parties' intentions. This process involves identifying required updates, determining the scope of the amendment, and evaluating the impact of the changes on the rights and obligations of the assignor and assignee. By carefully scrutinizing these factors, parties can certify that the amended agreement effectively addresses their needs and interests.

Identify Required Updates

In light of evolving business needs and changing intellectual property landscapes, a thorough analysis of the existing patent assignment agreement is necessary to determine the required updates. This involves a meticulous review of the agreement's terms, conditions, and provisions to identify sections that need revision or modification.

When examining the agreement, it is vital to contemplate various assignment types, including partial, exclusive, or non-exclusive assignments, to verify that the updates align with the specific type of assignment. Update triggers, such as changes in ownership, mergers and acquisitions, or new patent applications, should also be taken into account. These triggers can necessitate revisions to the agreement's scope, term, or territorial coverage.

A detailed analysis of the agreement will help identify gaps, ambiguities, or inconsistencies that require updating. This step is critical in making certain that the revised agreement accurately reflects the parties' current needs and expectations. By identifying the required updates, parties can develop a clear roadmap for the amendment process, making certain that the revised agreement remains effective and enforceable.

Determine Amendment Scope

The patent assignment agreement's amendment scope must be precisely delineated to confirm that the necessary changes are incorporated, and all stakeholders are aligned on the revisions required to maintain the agreement's validity and relevance. Determining the necessary changes involves defining the amendment goals, which outline the specific objectives to be achieved through the amendments. These goals should be specific, measurable, and achievable, certifying that the revised agreement meets the stakeholders' requirements. It is vital to avoid scope creep, where the amendments stray beyond the original objectives, leading to unnecessary changes and potential disputes. To prevent scope creep, the amendment scope should be clearly defined, and any deviations from the original goals should be carefully evaluated and justified. By establishing a well-defined amendment scope, parties can confirm that the revised agreement accurately reflects the intended changes, reducing the risk of misunderstandings and potential disputes.

Assess Impact on Rights

Amidst the process of determining necessary changes to the patent assignment agreement, a vital step is to assess the potential impact on rights, verifying that the revisions do not inadvertently compromise or alter the existing rights and obligations of the parties involved. A thorough rights analysis is imperative to identify potential patent risks that may arise from the proposed amendments. This involves a detailed review of the agreement's terms and conditions, including the scope of the assignment, territorial limitations, and exclusivity provisions. The analysis should also consider the impact of the changes on the patent's validity, enforceability, and potential infringement claims. In addition, it is vital to evaluate how the revisions may affect the parties' obligations regarding maintenance fees, patent office communications, and dispute resolution mechanisms. By conducting an exhaustive rights analysis, parties can mitigate potential patent risks and confirm that the amended agreement accurately reflects their intentions and protects their interests.

Negotiating With All Parties

Parties to a patent assignment agreement must engage in thorough negotiations to safeguard that their respective interests are adequately protected and aligned. Effective communication strategies are vital in achieving this goal. It is imperative to establish open and transparent communication channels to facilitate the exchange of information and ideas. This can be achieved through regular meetings, video conferencing, or written correspondence. Additionally, parties should employ active listening skills to verify that all concerns and interests are understood and addressed.

In the event of conflicts or disagreements, parties should employ conflict resolution strategies to resolve disputes amicably. This may involve identifying common goals, compromising on certain terms, or seeking the assistance of a neutral third-party mediator. By adopting a collaborative approach, parties can work together to find mutually beneficial solutions that satisfy their interests. Through effective communication and conflict resolution, parties can secure that their interests are protected and aligned, paving the way for a successful amendment to the patent assignment agreement.

Drafting the Amendment Document

Six vital elements must be carefully incorporated into the draft amendment document to guarantee its validity and enforceability. These elements ensure that the amendment accurately reflects the agreed-upon changes and is legally binding.

When drafting the amendment document, it is essential to utilize established amendment templates and adhere to proper document formatting. This will help maintain consistency and clarity throughout the document.

The following key aspects must be addressed in the draft amendment document:

• Clear identification of the original agreement : The amendment document must explicitly reference the original patent assignment agreement, including its date and relevant details.
• Specific description of the changes : The amendment must clearly and concisely describe the changes being made to the original agreement, including any additions, deletions, or modifications.
• Unambiguous language : The language used in the amendment document must be precise and free of ambiguity to avoid potential disputes or misinterpretations.

Executing the Amended Agreement

With the amendment document drafted, attention turns to the execution of the revised patent assignment agreement, which requires the parties' signatures to formalize the agreed-upon changes. This critical step vitalizes that all parties are bound by the revised terms and conditions. To facilitate a smooth execution process, it is imperative to establish a clear Amendment Timeline, outlining the deadlines for signature and return of the executed agreement. This timeline should be communicated to all parties in advance to avoid any potential delays.

In terms of Signature Requirements, it is key to verify that all necessary parties sign the amended agreement. This may include inventors, assignors, assignees, and any other entities with an interest in the patent. The signatures should be obtained in accordance with the relevant jurisdiction's laws and regulations, and the agreement should be executed in multiple originals, with each party receiving a fully signed copy. By carefully managing the execution process, parties can confirm that the amended agreement is legally binding and enforceable, providing the necessary foundation for future patent-related transactions.

Recording the Amendment

Upon execution of the amended patent assignment agreement, it is vital to properly record the amendment to formally recognize and validate the changes. This involves a meticulous process that includes preparing a detailed checklist, filing the amended agreement with the United States Patent and Trademark Office (USPTO), and updating relevant documents to reflect the changes. By following a structured approach, parties can confirm that the amendment is accurately recorded and all necessary steps are taken to validate the updated agreement.

Amendment Preparation Checklist

During the preparation of a patent assignment amendment, it is vital to compile a thorough checklist to guarantee that all necessary steps are taken to accurately record the amendment. This checklist serves as a safeguard against errors and omissions, ensuring that the amendment is executed correctly and in compliance with relevant laws and regulations.

When developing an Amendment Strategy, it is essential to include the following Checklist Essentials:

• Verify the parties involved : Ensure that all parties to the original patent assignment agreement are aware of and agree to the amendment.
• Define the scope of the amendment : Clearly outline the changes being made to the original agreement, including any revisions to patent rights, obligations, or responsibilities.
• Establish a plan for execution and documentation : Determine the procedure for executing the amendment, including the required signatures, notarization, and documentation, as well as the process for updating records and notifying relevant parties.

Filing With the USPTO

After preparation of the patent assignment amendment, the next crucial step is to record the amendment with the United States Patent and Trademark Office (USPTO). This involves submitting the amended document to the USPTO, along with the required fees, to update the patent assignment records.

The USPTO provides an electronic submission system for recording patent assignments and amendments. This system allows for efficient and secure submission of documents, reducing the risk of lost or misplaced documents.

It is vital to verify accurate and complete submission of the amended patent assignment document to avoid delays or rejections. The USPTO fees for recording patent assignments and amendments vary depending on the submission method and entity size.

Document Update Process

The document update process, also known as recording the amendment, involves a series of steps that must be carefully followed to confirm the successful update of the patent assignment records at the USPTO. This process validates that the patent assignment agreement is accurately reflected in the USPTO's records, thereby maintaining the integrity of the patent portfolio.

To facilitate a seamless document update process, the following steps should be taken:

• Verify the amendment : Carefully review the amended patent assignment agreement to certify accuracy and completeness.
• Obtain digital signatures : Secure digital signatures from all parties involved, authenticating and validating the amended agreement.
• Maintain version control : Keep a detailed record of all changes, including dates and descriptions, to maintain a clear audit trail and facilitate future reference.

Updating Relevant Documents

Upon amending a patent assignment agreement, it is essential to review and revise all relevant documents to confirm consistency and accuracy. This involves updating documents that reference the original agreement, such as employee contracts, invention disclosure forms, and patent applications. Effective document management is fundamental in this process, necessitating that all affected documents are identified and revised accordingly.

In today's digital age, digital storage solutions can greatly facilitate this process. Cloud-based document management systems enable secure, centralized storage and easy access to documents, allowing for efficient collaboration and version control. This minimizes the risk of version conflicts and verifies that all stakeholders have access to the most up-to-date documents. By leveraging digital storage solutions, organizations can streamline their document update process, reducing the time and resources required to update relevant documents. This, in turn, enables a more efficient and accurate amendment process, ultimately protecting the integrity of the patent assignment agreement.

Frequently Asked Questions

Can a patent assignment agreement be amended after a patent's issuance?.

After a patent's issuance, its assignment agreement can be amended, but any changes must not impact patent validity or post-issuance rights, so that the amendment does not compromise the patent's enforceability or legal standing.

Do All Parties Need to Agree to the Amendments Made?

In amending a patent assignment agreement, all parties holding Contract Signatures, particularly in Joint Ownership scenarios, must provide consent to guarantee the validity and enforceability of the revised agreement, as unilateral changes may be deemed invalid.

How Long Does the Amendment Process Typically Take to Complete?

The amendment timeline can vary substantially, often spanning several months to over a year, due to processing delays, complexity of changes, and workload of relevant authorities, necessitating careful planning and proactive communication.

Are There Any Specific Formatting Requirements for the Amendment Document?

When drafting an amendment document, adhere to precise formatting requirements, including font choices such as Arial, Calibri or Times New Roman in 12-point size, with margins allowed of at least one inch on all sides.

Can an Amendment Be Made to Correct a Clerical Error?

In conducting Error Analysis, clerical errors can be corrected through amendments, provided they do not alter the original intent or substance of the agreement. Meticulous Document Scrutiny guarantees accuracy and validity of the corrected document.