(73) Taking Action in a Patent Matter Before the
Office by the Assignee under 37 CFR 3.73.
When the assignee of the entire right, title and interest first
seeks to take action in a matter before the Office with respect to
a patent application, patent or reexamination proceeding, the assignee
must establish its ownership of the property to the satisfaction of
the Commissioner. 37 CFR 3.73(b). The assignee's ownership may be
established either 1) by submitting to the Office copies of the
documentary evidence of a chain of title from the original inventor
or 2) by specifying, by reel and to the assignee, frame number, for
example, where such documentary evidence is recorded in the Office.
In addition to the establishment of ownership, there is further
requirement that the assignee submit a statement specifying that
the evidentiary documents have been reviewed and certifying that, to the
best of the assignee's knowledge and belief, title is in the assignee
seeking to take action. Once 37 CFR 3.73(b) is complied with by an
assignee, that assignee may continue to take action in that application,
patent or reexamination proceeding without filing a 37 CFR 3.73(b)
statement each time, provided that ownership has not changed.
When an assignee files a continuation or divisional application
(under 37 CFR 1.53, 1.60 or 1.62), reference may be made to a statement
filed under 37 CFR 3.73(b) in the parent application or a copy of that
statement may be filed. A newly executed statement under 37 CFR 3.73(b)
must be filed when a continuation-in-part application is filed by an
assignee.
The statement under 37 CFR 3.73(b) may be signed on behalf of the
assignee in the following two manners if the assignee is an organization
(e.g., corporation, partnership, university, government agency, etc.).
(1) The statement may be signed by a person in the
organization having apparent authority to sign on behalf of the
organization. An officer (president, vice-president, secretary, or
treasurer) is presumed to have authority to sign on behalf of the
organization. The signature of the chairman of the board of directors is
acceptable, but not the signature of an individual director. A person
having a title (manager, director, administrator, general counsel) that
does not clearly set forth that person as an officer of the assignee is
not presumed to be an officer of the assignee or to have authority to
sign the statement on behalf of the assignee. A power of attorney from
the inventors in an organization to a practitioner to prosecute a patent
application does not make the practitioner an official of an assignee or
empower the practitioner to sign the statement on behalf of the assignee.
(2) The statement may be signed by any person, if the statement
includes an averment that the person is empowered to sign the statement
on behalf of the assignee and, if not signed by a registered
practitioner, the statement must be in oath or declaration form. Where a
statement does not include such an averment, and the person signing does
not hold a position in the organization that would give rise to a
presumption that the person is empowered to sign the statement on behalf
of the assignee, evidence of the person's authority to sign will be
required.
Examples of situations where ownership must be established and
the statement under 37 CFR 3.73(b) must be submitted are when the
assignee: signs a request for status of an application or gives a power
to inspect an application; acquiesces to express abandonment of an
application; appoints its own legal representative; signs a terminal
disclaimer; consents to the filing of a reissue application; consents to
the correction of inventorship; files an application under 37 CFR
1.47(b) or 37 CFR 1.475; signs an Issue Fee Transmittal (PTOL-85B); or
signs a response to an Office action.
Examples of situations where ownership need not be established and a
statement under 37 CFR 3.73(b) is not required to be submitted are when
the assignee: signs a small entity declaration; signs an affidavit or
declaration of common ownership of two inventions; signs a NASA or DOE
property rights statement; signs an affidavit under 37 CFR 1.131 where
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the inventor is unavailable; signs a Certificate of Mailing under 37 CFR
1.8; or files a request for reexamination of a patent under 37 CFR 1.510.
An acceptable certification under 37 CFR 3.73(b) is attached to this
notice.
For further information related to actions taken by an assignee in
patent matters, contact Jeffrey V. Nase at (703) 305-9282.
Apr. 30, 1993 CHARLES E. VAN HORN
Patent Policy and Projects Administrator
Office of the Assistant Commissioner
for Patents
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