(225) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 2 and 3
[Docket No. 910246-2140]
RIN 0651-AA43
Changes in Patent and Trademark Assignment Practice
Agency: Patent and Trademark Office, Commerce
Action: Final Rule.
Summary: The Patent and Trademark Office (Office) is amending the rules
of practice regarding assignments in patent and trademark cases to
improve and clarify the rules, to codify changes in practice and to
consolidate the rules. The Office has combined the assignment rules
currently in Parts 1 and 2 into a new Part 3 directed to assignments.
Effective Date: Sept. 4, 1992. These rules will be applicable to all
documents filed with the Office on or after the effective date.
For Further Information Contact: Trademark related matters: Lynne
Beresford by telephone at (703) 305-9464 or by mail marked to her
attention addressed to the Commissioner of Patents and Trademarks,
Washington, D.C. 20231.
Patent related matters: Jeffrey V. Nase by telephone at (703) 305-9282
or by mail marked to his attention and addressed to Commissioner of
Patents and Trademarks, Box DAC, Washington, D.C. 20231.
Supplementary Information: In a Notice of Proposed Rulemaking published
in the Federal Register on May 10, 1991 at 56 FR 21641 and in the Patent
and Trademark Office "Official Gazette" of June 4, 1991 at 1127 O.G.
8-16, the Office proposed to amend the rules of practice in patent and
trademark cases to revise, simplify, remove, or clarify existing
assignment rules or to codify certain practices currently in effect.
Changes were proposed for rules relating to the documents that will be
recorded, to the requirements for recording a document, to the effect of
recording, to new cover sheet requirements, to the appointment of
domestic representatives; and to prosecution by assignees and issuance
to assignees. While the existing rules do not require a cover sheet to
accompany each document submitted for recording, typically a cover
letter is submitted to ensure proper processing of the document.
The Office has encouraged the public to use a cover letter containing
specific information concerning the document being submitted with each
document submitted for recording. See "Helpful Hints", 1114 Official
Gazette 77 (May 29, 1990). The public has adopted the suggested
procedure to such an extent that most documents now submitted for
recordation are accompanied by a cover letter which contains the
suggested data. Documents submitted with these cover letters have
enabled the Office to greatly improve the quality and efficiency of the
recording process. To better ensure that the correct data is captured in
recordation and recorded promptly, the Office is making a cover sheet
mandatory. The cover sheet will contain all the information necessary
for the Assignment Branch to properly and promptly process the document.
Written comments were submitted by 12 firms, 2 individuals, 4
corporationsand 1 organization. No one testified at the oral hearing
held on July 17, 1991.
The following includes a brief discussion of the rules being changed
and the reasons for those changes, a detailed section-by-section
analysis of the final rules, and an analysis of the comments received in
response to the notice of proposed rulemaking.
Specific Rules to be Deleted or Added: The existing rules of practice in
Parts 1 and 2 of Title 37 of the Code of Federal Regulations which are
deleted are 1.32, 1.331, 1.332, 1.333, 1.334, 2.185, 2.186 and
2.187. These rules are deleted in their entirety and rewritten and
renumbered under a new Part 3. Table 1 is provided to assist readers in
correlating previous rules with the new rules.
TABLE 1
Old Section New Section
1.32 3.71 & 3.73
1.331(a) 3.11
1.331(b) 3.26
1.331(c) 3.21
1.332 3.51
1.333 3.56
1.334 3.81
2.185(a) 3.11
2.185(a)(1) 3.31
2.185(a)(2) 3.26
2.185(a)(3) 3.41
2.185(a)(4) 3.61
2.185(b) 3.31(b)
2.185(C) 3.51
2.186 3.71 & 3.73
2.187 3.85
Consideration was given to moving 1.12 (Assignment records open to
public inspection.) to Part 3. However, since this section primarily
relates to records maintained by the Office and procedures for accessing
those records, and no comments were received regarding the placement of
1.12, this section remains under the general heading "Records and
Files" of the Patent and Trademark Office.
Discussion of Specific Rules to be Changed or Added: Section 1.12(a) is
revised to reflect the fact that all assignment records related to
pre-1955 trademark records and pre-1957 patent records were transferred
to the National Archives and Records Administration (NARA) during 1990.
All assignments recorded on or after January 1, 1955, for trademarks and
May 1, 1957, for patents continue to be maintained by the Office. The
pre-1955/1957 records have been transferred to NARA to allow for greater
accessibility to the public, improvement of file integrity for the older
records, and preservation of these materials. The pre-1955/1957
assignment cards, digest books, and libers were stored in four
locations: the Assignment Search Room (ASR) at the Office, the Federal
Records Center in Suitland, Maryland, the National Archives in downtown
Washington, D.C., and the National Archives location in Alexandria,
Virginia. Storage of information in these various locations made
searching of old assignment records difficult. The materials located at
the Federal Records Center could be ordered from the ASR. However, many
times it took months to receive the materials.
All assignment records from 1837 to December 31, 1954, for trademarks
and 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. Assignments recorded before
1837 aremaintained at the National Archives and Records Administration,
841 South Pickett Street, Alexandria, Virginia 22304.
All requests for abstracts of title continue to be provided by the
Office upon request and payment of fees set forth in 1.19 and 2.6.
Requests for copies and certified copies of the pre-1955 records for
trademarks and pre-1957 records for patents should be directed to NARA
since those records are not maintained by the Office. Since these
records are maintained by NARA, it is more expeditious to request copies
directly from NARA, rather than 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.
Another change makes clear that separate assignment records are kept
for patents and trademarks, and that an extra charge will be imposed by
the Office on requests for copies of recorded assignments if the correct
reel and frame number are not identified.
Sections 1.17 and 1.46 are amended to make reference to 3.81,
which replaces 1.334, and delete reference to 1.334. The amount of
the fee for recording a document is not affected by this rule change.
Section 1.104(e) is amended to make reference to Part 3, which
replaces 1.331, and delete reference to 1.331.
Section 3.1 is added to set out definitions of terms used in Part 3.
Terms which are defined include "application," "assignment," "document,"
"Office" (meaning Patent and Trademark Office), "recorded document," and
"registration." Definitions are provided to make clear the intended
meanings of the terms used in Part 3. These definitions are intended to
be applicable only to Part 3. For example, the term "application" is
defined, for the purpose of Part 3, to mean a national application for
patent, an international application for patent that designates the
United States of America, or an application to register a trademark,
unless otherwise indicated.
Section 3.11 replaces and modifies the practice set forth in
1.331(a) and 2.185(a), which specify the documents the Office will
record. This section specifies that assignments of patents and
registrations will be recorded, as well as other documents which affect
title to applications, registrations and patents. Section 3.11 requires
that a completed cover sheet as specified in 3.28 and 3.31 be
submitted with the document to be recorded.
Section 3.16 is added to incorporate the limitation set out in 15
U.S.C. 1060 proscribing the assignment of an intent-to-use trademark
application prior to the filing of a statement of use, except as a part
of the sale of an on-going business. Because the rules in Part 3 are
intended to address all rules relating to assignments, it is appropriate
to refer to the statutory requirements of an assignment of an
intent-to-use trademark application.
Section 3.21 replaces and modifies the practice of 1.331(c).
Section 3.21 sets forth requirements for the identification of patents
or patent applications in documents submitted for recording. An
assignment relating to a patent must identify the patent by number. The
name of the inventor, the issue date, and title of the invention as
stated in the patent may also be given in the assignment to provide
additional information on the patent being assigned. An assignment
relating to a national patent application must identify the national
patent application by application number (consisting of the series code
and the serial number, e.g., 07/123,456) or serial number and filing
date. An assignment relating to an international patent application
which designates the United States of America must identify the
international application number (e.g., PCT/US90/01234). The name of the
inventor, date of filing, and title of the invention as stated in the
patent application may also be given in the assignment. If an assignment
is executed concurrently with, or subsequent to, the execution of the
patent application, but before the patent application is filed, it must
identify the patent application by its date of execution, name of each
inventor, and title of the invention so that there can be no mistake as
to the patent application intended. Assignments submitted for recording
that do not identify the patent or patent application as required by
this section will not be recorded, but will be returned to the
correspondence address that is required to be provided on the cover
sheet by 3.31(e).
Section 3.24 is added to set out formal document requirements to
facilitate and expedite the recording process. This section requires
that documents, either the original or a true copy of the original,
submitted for recording be legible, using only one side of each page.
The paper used should be flexible, white, durable, and preferably no
larger than 21.6 x 33.1 cm. (8 x 14 inches), with a 2.5 cm. (one-inch)
margin on all sides. Documents submitted in this form are camera-ready
and can be recorded expeditiously with little additional handling
required. Documents that fail to meet the legibility and single-sided
paper requirements of this section will be returned as set forth in 3.51.
Section 3.26 replaces and modifies the practice of 1.331(b) and
2.185(a)(2). Section 3.26 provides that the Office will accept and
record non-English documents provided they are accompanied by a verified
English translation signed by the translator. Documents submitted that
fail to meet the requirements of this section will be returned as set
forth in 3.51.
Section 3.27 is added to set out how documents submitted for
recording should be addressed to the Office. To ensure prompt and proper
processing, documents and their cover sheets should be addressed to the
Commissioner of Patents and Trademarks, Box Assignments, Washington,
D.C. 20231, unless they are filed together with new applications or with
a petition under 3.81(b). Petitions under 3.81(b) should be
addressed to the Commissioner of Patents and Trademarks, Box DAC,
Washington, D.C. 20231. New applications and other petitions should be
addressed to the Commissioner of Patents and Trademarks, Washington,
D.C. 20231.
Section 3.28 is added to set out the requirement that all documents
submitted to the Office for recording be accompanied by at least one
coversheet referring either to the patent applications and patents or to
the trademark applications and registrations against which the document
is to be recorded. Only one set of documents and cover sheets to be
recorded should be filed. If a document to be recorded includes
interests in, or transactions involving, both patents and trademarks,
separate patent and trademark coversheets must be submitted. If a
document to be recorded is not accompanied by a completed cover sheet,
the document and any incomplete cover sheet will bereturned to the
correspondence address for proper completion of the cover sheet and
resubmission of the cover sheet and document. While the previous rules
did not require a cover sheet to accompany each document submitted for
recording, typically a cover letter is submitted to ensure proper
processing of the document. The Office is making a cover sheet mandatory
in order to betterensure prompt and proper processing of all documents
submitted for recording. The cover sheet contains all the information
necessary for the Office toprocess the document.
Section 3.31 is added to set out the formal requirements of the cover
sheet. Section 3.31 requires that each patent or trademark cover sheet
must contain (1) the name of the party conveying the interest; (2) the
name and address of the party receiving the interest; (3) a brief
description of the interest conveyed or transaction to be recorded
(e.g., assignment, license, change of name, merger, security agreement,
etc.); (4) each application number, patent number or registration number
against which the document is to be recorded, or an indication that the
document is filed together with a patent application; (5) the name and
address of the party to whom correspondence concerning the document to
be recorded should be mailed; (6) the number of applications, patents or
registrations identified in the cover sheet and the total fee; (7) the
date the document was executed; (8) an indication that the assignee of a
trademark application or registration who is not domiciled in the United
States has designated a domestic representative; (9) a statement by the
party submitting the document that to the best of the person's knowledge
and belief, the information contained on the cover sheet is true and
correct, and (10) the signature of the party submitting the document.
The term "party" as used in this rule means the person whose name
appears on the documents to be recorded, that person's attorney or
registered agent, or a corporate officer where a corporation's name
appears on the document. Sample cover sheets for patent documents and
for trademark documents are shown in Appendices A and B.
Section 3.34 is added to set out the procedure to correct obvious
errors in a recorded cover sheet. This section requires that if a
recorded cover sheet contains an error that is apparent when the cover
sheet is compared with the recorded document, the error will be
corrected only if a corrected cover sheet is filed for recordation. The
corrected cover sheet must be accompanied by the originally-recorded
document or a copy of the originally-recorded document and by a new
assignment recording fee in the appropriate amount.
Section 3.41 replaces and consolidates practice under 1.331(a)
and 2.185(a)(3) regarding recording fees. Section 3.41 requires that all
requests to record documents be accompanied by the appropriate fee. A
fee is charged for each application, patent and registration identified
in the cover sheet. The recording fee for patents and patent
applications is specified in 1.21(h). The recording fee for trademark
registrations and applications is specified in 2.6(q).
Section 3.51 replaces and modifies the practice of 1.332 and
2.185(c). Section 3.51 sets the date of recording of a document as the
date the document meeting the requirements for recording set forth in
this Part is filed in the Office. A document which does not comply with
the identification requirements of 3.21 will not be recorded. For
documents not accepted for recording, parties can petition under 37 CFR
1.181 and 2.146(a). Other documents not meeting the requirements for
recording, for example, a document submitted without a completed cover
sheet, without the required fee, or without any required translation,
will be returned for correction to the sender when a return address is
available. The returned papers, stamped with the official date of
receipt in the Office, will be accompanied by a letter indicating that
if the returned papers are corrected and resubmitted to the Office
within time specified in the letter, the Office will consider the
original date of filing of the papers as the date of recording of the
papers. Submitters can use the certificate procedure under either 1.8
or 1.10 for resubmissions of returned papers if they desire to have
the benefit of the date of deposit in the United States Postal Service.
If the returned papers are not corrected and resubmitted within the
specified period, the date of filing of the corrected papers will be
considered to be the date of recording of the papers. Extensions of time
will not be available to extend the specified period to resubmit the
returned papers.
Section 3.54 is added to set out the effect of recording a document.
This section states that the recording of a document is not a
determination by the Office of the validity of the document or the
effect that document has on the title to an application, a patent, or a
registration. The Office will determine, when necessary, what effect a
document has, including whether a party has the authority to take an
action in a matter pending before the Office. Examples of when the
Office will need to determine whether a party has the authority to take
an action in a matter pending before the Office include: (1) prosecution
by the assignee as in 3.71; (2) consent of an assignee to the filing
of a reissue application as provided in 1.172; and (3) execution of a
disclaimer under 1.321 by an assignee.
Section 3.56 replaces and modifies the practice of 1.333. Section
3.56 provides that an assignment, which at the time of its execution is
conditional on a given act or event, will be treated by the Office as an
absolute assignment. This section serves as notification as to how a
conditional assignment will be treated by the Office in any proceeding
requiring a determination of the owner of an application, patent or
registration. Since the Office will not determine whether a condition
has been fulfilled, the Office will treat the submission of such an
assignment for recordation as signifying that the act or event has
occurred.
Section 3.61 replaces and modifies the practice of 2.185(a)(4).
Section 3.61 sets forth that an assignee of a trademark application or
registration not domiciled in the United States must designate a
domestic representative in writing to the Office. Assignees of patent
applications or patents may designate domestic representatives if the
assignee is not residing in the United States. 35 U.S.C. 293. The
designation is required to state the name and address of a person
residing within the United States on whom may be served process or
notice of proceedings affecting the application, patent or registration
or rights thereunder.
Section 3.71 replaces and modifies the practice of 1.32 and
2.186. Section 3.71 sets forth that the assignee of record of the entire
right, title and interest in an application for patent is entitled to
conduct the prosecution of the patent application to the exclusion of
the named inventor. Similarly, the assignee of an application for
registration is entitled to conduct the prose-cution of the trademark
application to the exclusion of the applicant.
Section 3.73 is added to set out the procedure by which an assignee
can establish the right to take action in an application, patent or
registration. The inventor is presumed to be the original owner of a
patent application and any patent that may issue therefrom, unless there
is an assignment. The original applicant is presumed to be the original
owner of a trademark application and any registration that may issue
therefrom, unless there is an assignment. Any action before the Office
with respect to an assigned patent application, patent, or reexamination
may be taken by the assignee of the entire right, title, and interest,
provided ownership is established to the satisfaction of the
Commissioner. The assignee may establish ownership by submitting to the
Office documentary evidence of a chain of title from the original owner
to the assignee or by specifying (e.g., reel and frame number, etc.)
where such evidence is recorded in the Office. Additionally, when a
patent assignee is not represented by an attorney or registered agent, a
statement signed by the assignee must also be submitted stating the
evidence has been reviewed and certifying that, to the best of the
party's knowledge and belief, title is in the party seeking to take the
action. Documents submitted to establish ownership may be required to be
recorded in the Office as a condition to permitting the requesting party
to take action in a matter pending before the Office. Any action before
the Office with respect to an assigned trademark registration,
application or post-registration matter, may be taken by the assignee
provided ownership is established to the satisfaction of the
Commissioner by recording an assignment to the assignee or by submitting
other proof of the assignment.
Section 3.81 replaces and modifies the practice of 1.334. Section
3.81 sets forth the procedure for issuance of a patent to an assignee.
If an assignment of the entire right, title, and interest is recorded
before the issue fee is paid for a patent application, the patent may
issue in the name of the assignee. If the assignee holds an undivided
part interest, the patent may issue jointly to the inventor and the
assignee. At the time the issue fee is paid, the name of the assignee
must be provided if the patent is to issue solely or jointly to that
assignee. If the assignment is submitted for recording after the date of
payment of the issue fee, but prior to issuance of the patent, the
assignee may petition that the patent issue to the assignee. Any such
petition must be accompanied by the fee set forth in 1.17(i)(1).
Section 3.85 replaces and modifies the practice of 2.187. Section
3.85 sets forth the procedure for issuance of a registration to an
assignee. The certificate of registration may be issued to the assignee
of the applicant, or in a new name of the applicant, provided that the
party files a written request in the trademark application record by the
time the application is being prepared for issuance of the certificate
of registration, and an appropriate document is recorded in the Office.
If the assignment or name change document has not been recorded in the
Office, then the written request must state that the document has been
filed for recordation. The address of the assignee must be made of
record in the trademark application file.
Response to Comments on the Rules
The comments received in response to the notice of proposed
rulemaking have been given careful consideration and a number of the
suggested modifications have been adopted. The comments and responses
are discussed below.
In this discussion, "Patent and Trademark Office" is abbreviated as
"Office" or "PTO".
Comment: Two comments were received addressed to the overall rule
package. One comment expressed concern over the potential confusion of
instituting a new Part 3. It was suggested that Parts 1 and 2 be amended
to contain the necessary changes. Another comment was concerned that the
rules and specifically the new cover sheet requirement would impede
promptness and accuracy of the recordation process.
Response: The Office has determined that the new rules will result in
greater efficiency and accuracy in the recordation process and improve
the integrity of the records maintained by the PTO. Further, the PTO
believes that a new Part 3, containing all rules relating to
assignments, will be beneficial to the majority of patent and trademark
system users.
Comment: Section 3.1 was proposed to define "application" as an
application for patent or an application to register a trademark. One
comment questioned whether international applications filed under the
Patent Cooperation Treaty were included in the definition of the word
"application."
Two comments were received concerning the definition of "assignment."
As proposed, 3.1 defines "assignment" of a trademark in terms of a
"trademark application" or "registration." The comments suggested that
because Section 10 of the Trademark Act, 15 U.S.C. 1060, speaks in
terms of a "registered mark" or a "mark for which application to
register has been filed," which was reflected in previous trademark rule
2.186, the different terminology may be construed to permit assignment
of a trademark without assignment of the underlying goodwill.
Response: The wording of 3.1 has been changed to include both
national applications for patent and international applications that
designate the United States in the term "application."
Also to avoid any potential confusion over the definition of a
trademark assignment, the Office adopted the suggestion to reflect
Section 10 of the Trademark Act and to refer to a "registered mark" or a
"mark for which application to register has been filed" in its
definition of assignment.
Comment: As proposed, 3.16 provides that an application to
register a mark under 15 U.S.C. 1051(b) cannot be assigned before a
statement of use is filed except to a successor to an ongoing business
of the original applicant. One comment suggested 3.16 be further
amended to correct a legislative oversight and permit assignment of the
application after an amendment to allege use is filed.
One other comment suggested the PTO define the statutory language
"successor to the business of the applicant."
Response: As proposed, Rule 3.16 merely restates the statute. To
permit the filing of an assignment to a successor to an on-going
business before an amendment to allege use has been filed would make the
rule inconsistent with the statute.
As to the definition of "successor to the business of the applicant,"
it has been determined that in the absence of any statutory definition,
it is better left to case law to establish the meaning. A business, or
portion thereof, can be transferred or assigned in a variety of ways,
and the question of valid ownership might arise in a variety of
circumstances. For the PTO to define what constitutes a successor may be
duly restrictive.
Accordingly, the suggested modifications have not been adopted.
Comment: Section 3.21, as proposed, provides that an assignment of a
patent or patent application must be identified by number. One comment
requested a further amendment to allow the filing of a patent assignment
after filing an application for patent but before knowing the
application number by allowing identification by the execution date,
inventors and title of the invention instead of the application number.
Another comment suggested that assignments relating to trademark
applications and registrations should also be required to have the
identifying serial and registration numbers within the body of the
assignment document.
One comment questioned whether the patent identification number was
required in the document or whether the number could just appear on the
cover sheet.
Response: Providing the identifying number in the assignment document
allows for greater efficiency and accuracy in recording assignments.
However, unlike patents, trademarks can have an indefinite life.
Assignments may be recorded years after an assignment has occurred to
clear up the chain of title. It may not be possible to execute a new
assignment to include identifying numbers in the document years later.
Accordingly, it is preferable for the PTO to be more flexible in
recording trademark assignments which may contain the identifying number
in the cover sheet rather than in the document itself. Because of the
nature of a patent, less flexibility is permitted. Patent rights, unlike
trademark rights, do not exist apart from the issued patent.
Accordingly, when an interest in a patent is transferred, the patent
identifying number must be in the assignment document. This requirement
only applies to assignments, not to documents other than assignments.
The PTO makes every effort to provide applicants with the application
numbers for newly-filed patent applications as soon as possible. It is
suggested, however, that assignment documents may be written to allow
entry of the identifying number after the execution of the assignment.
An example of acceptable wording is: "I hereby authorize and request my
attorney, (Insert name), of (Insert address), to insert here in
parentheses (Application numberšlhp.5,2pË, filed) the filing date and
application number of said application when known."
Accordingly, the suggested modifications have not been adopted.
Comment: Section 3.24, as proposed, provides the formal requirements
for the documents which are to be recorded and the cover sheet. Three
comments stated that the one-side only requirement was unreasonable in
light of PTO's issuance of two-sided patent and trademark copies and of
the practices of other governments and corporations over which the
submitter would have no control.
One comment requested clarification of "bond weight paper" and
suggested the language used in the rules setting out drawing
requirements be adopted.
One comment stated that the document size requirements should only
pertain to documents prepared and executed by parties who wish to convey
title.
Two comments questioned whether the PTO would permit the filing of
copies or true copies in lieu of the original documents for recording.
Response: The formal requirements set out in 3.24 are related to
PTO's ability to capture on film papers filed with the PTO. The
requirements are not related to the other printing or photocopying
services PTO provides. Micrographics reproduction requires that only one
side of each page be used for efficiency. If the original document is
two-sided or the wrong size, the practitioner can comply with this
requirement by providing a true copy of the original document using only
one side of each page on the correct size paper. The language in 3.24
has been changed to clarify that true copies or originals are
acceptable. Further, the language describing the type of paper to be
used has been changed to be consistent with the drawing requirement
rules.
Comment: Section 3.28, as proposed, provides that all requests to
record a document must be accompanied by the document to be recorded and
at least one cover sheet. One comment expressed confusion over whether
the document must be accompanied by a cover letter as well as a request
for recording. One comment stated the requirement for a cover sheet did
not help the PTO with the documents which are filed with applications
and the commenter did not see the need for an additional paper included
among the papers for a new application.
Response: The first sentence has been rewritten to clarify that only
the document and a cover sheet(s) must be submitted. A separate request
for recording is not required or needed. Because the cover sheet
provides all pertinent information in one place, it will greatly assist
the processing of assignments by the PTO. For those applications which
are filed with an assignment, the additional cover sheet required for
the assignment aids the processing of the assignment.
Comment: Numerous comments were received on the proposed cover sheet
requirements of 3.31. One comment questions whether the form or the
contents of the form are being required and cautioned that the cover
sheet should not become a technical obstacle to recordation.
Two comments claimed the cover sheet requirement would be burdensome
and the documents recorded should speak for themselves.
Two comments objected to the requirement for the characterization of
the interest being conveyed. One of the commentors indicated it was not
the best evidence of what the interest is and may be misleading while
the second comment or was concerned practitioners would be subject to
malpractice claims and be made parties to litigation involving the
transfer.
One comment stated that requiring the assignee's address was
burdensome and excessive. Three comments questioned the lack of
consistency between proposed subsections (a) and (b) of 3.31 which
requires only the name of the conveyor but both the name and address of
the receiver.
Two comments stated that the language of the rule was unclear as to
whether the list of properties within the assignment document should be
retyped on the cover sheet, which would be burdensome and fraught with
potential errors.
One comment was received suggesting that properties be identified
with as much information as possible (i.e., serial number, patent
number, filing date, inventors, etc.).
Four comments stated that the requirement for an execution date of
the document is excessive and burdensome. One of the comments stated
that the execution date may not be as important as the effective date of
the document. One suggested the effective date would be more accurate
and another suggested the document should speak for itself. One
additional comment stated that a nunc pro tunc assignment of the
substantive rights of an assignee or assignor may be unduly affected by
the requirement for recitation of the execution date.
Nine comments were received objecting to the language of the proposed
verification. Some comments recommended that the verification statement
be deleted. Other comments recommended that the verification statement
be based on "information and belief." The comments indicated (1)
practitioners did not want to be held responsible for the information
entered on the cover sheet, (2) there was no purpose served by signing
the cover sheet because the documents should speak for themselves and
(3) under 37 C.F.R. 10.18, a registered practitioner's signature
indicates that the filing is correct.
One comment suggested that proposed 3.31(i) does not recognize the
right of some non-lawyers to practice in trademark matters before the
PTO.
Additionally, many comments and suggestions were received on the
layout of the sample cover sheets.
Response: The proposed purpose of the cover sheet is to provide a
synopsis of the vital information contained in a recorded document. The
cover sheet form itself is not required, only the information outlined
in 3.31 is required. Use of the sample cover sheet formats appearing
as Appendices A and B to the rule package is encouraged. The Office will
make paper copies of the sample cover sheets available for customer use.
Persons wishing to obtain paper copies of the sample cover sheets should
contact the Public Service Center at (703) 305-HELP. Questions regarding
the sample cover sheets should be directed to the Assignment and
Certification Services Division at (703) 308-9700.
As indicated in the proposed rule package, a majority of documents
presently filed for recording are accompanied by a cover letter
containing much of the information required in 3.31. The PTO does not
believe standardization of the information submitted is an undue burden.
Standardization ensures easy reference to all critical information.
Further, the parties or their representatives are in a better position
to know or ascertain the nature of the interest involved than the PTO.
The document will always speak for itself. However, a characterization
assists in putting others on notice as to the nature of the transaction.
It was determined that a verification is not required. The language
has been changed to a statement on the cover sheet based on "information
and belief." Further, 3.31(i) has been divided into two paragraphs,
one for the statement that is required and one for the signature.
The address of the assignee or receiving party is vital information
for maintaining complete assignment records. The original owner is the
applicant, for which the Office has the address of record. Each
subsequent assignee address is then obtained under this requirement and
is of record if the PTO or public needs to contact the present assignee.
The execution date is required to determine whether an assignment has
been recorded within three months provided in 35 U.S.C. 261 and 15
U.S.C. 1060.
When there is a listing of properties contained within a document,
any listing may be copied and attached to the cover sheet to reduce the
amount of typing necessary. A notation of this attachment can be made in
lieu of entering every property identification number on the cover
sheet. Should submitters provide information in addition to that
required by 3.31, it is always welcome, but not required.
The comments received on the layout of the sample cover sheets have
all been considered and some modifications have been made. However, the
sample cover sheet is not required and it is not part of the rules.
Comment: Section 3.34, as proposed, provides for correction of errors
in a recorded cover sheet when the error is apparent by comparing the
information on the cover sheet with the recorded document itself. One
comment received expressed confusion regarding the correction procedure.
Another comment suggested that corrections should not be limited to
apparent errors.
Response: The PTO will not compare the cover sheet with the original
documents during the recording process except to assure that application
and patent numbers are present in patent assignments. Otherwise, it will
only check to see that the cover sheet is complete. When a submitter
discovers an obvious error on the recorded cover sheet, the PTO will
consider a request to correct it when it receives: (1) the original
recorded document (or a copy); (2) a corrected cover sheet; and (3) the
appropriate fee for each property to be corrected. The PTO will then
compare the cover sheet with the document to determine whether the error
is apparent on its face. If the error is obvious, the corrected cover
sheet will be recorded and the respective Office records corrected. If
the error is not obvious, the procedure set forth in the Manual of
Patent Examining Procedure, MPEP 323 will govern for patents and the
procedure set forth in In re Abacab International Computers Ltd.
(Assignee of IHEC, Ltd.), 21 USPQ2d 1078 (Comm'r Pats. 1987), on
reconsideration, 21 USPQ2d1079 (Comm'r Pats. 1988) will govern for
trademarks. Submitters may also petition under 1.833 or 2.146 for
other corrections. Typographical errors made by the Office will be
corrected without charge when brought to our attention.
Accordingly, the suggested modification has not been adopted. The rule
has only been changed to correct a cross reference.
Comment: As proposed, 3.51 provides that the date of recording is the
date all of the required information is filed in the Office. Incomplete
documents will be returned. If the returned documents are resubmitted
timely, the document will retain the date on which it was received as
incomplete. Two comments were received regarding the time period to be
set by the PTO. One comment indicated that any delay may affect the
requirements of 15 U.S.C. 1060. It was therefore recommended that the
PTO make some type of "conditional entry" in the records indicating an
assignment has been submitted so interested members of the public could
ascertain that there may be an effective recording date. The other
comment suggested the time period for resubmission be long enough to
allow communication with foreign parties, but it should be no longer
than six months.
Response: After a review of the proposed rule, it was determined that
the language of 3.51 should be clarified to reflect that the
originally-submitted papers with the official Office date stamp
indicating the original receipt date in the Office must be returned in
order to retain the original date. It is the intent of the PTO to set
the time for response at one month from the date of mailing of the
returned documents from the PTO. It is believed that most correctable
errors will involve an incomplete cover sheet or the amount of the fee
submitted, both of which can be corrected within one month.
Further, it is the policy of the PTO to make of record only those
documents which meet the requirements for recording. It is not
beneficial to cloud title to properties with potential transfers.
Comment: Section 3.56, as proposed, is a restatement of former 1.333
and is made applicable to trademarks. It provides that an assignment
which is made conditional upon a condition subsequent will be regarded
by the Office as an absolute assignment. One comment was received
inquiring as to whether 3.56 applied to security interests, another
was received requesting a reference in the rules to recording of
security agreements.
Response: Section 3.56 is applicable only to assignments, as they are
defined by 3.1, that is, a transfer of right, title and interest in a
patent or a trademark. A security interest or a security agreement is in
the nature of a lien, not an assignment. Accordingly, 3.56 would not
apply to security interests or security agreements which are also
recordable. It applies to conditional assignments because the Office has
no way of determining whether and when conditions are satisfied and
therefore must address this type of assignment in a uniform manner. The
reference to the recordability of security agreements is referred to
here in the final rule package.
Comment: The second sentence of 3.71, as proposed, provides: "[t]he
assignee of record of the entire right title and interest in a trademark
application or registration is entitled to conduct the prosecution of
the trademark application or registration to the exclusion of the
original applicant or previous assignee." One comment suggested, as had
been recommended for the definitions in 3.1, that language be adopted
consistent with Section 10 of the Trademark Act, 15 U.S.C. 1060, so
there be no confusion as to what can be assigned in the trademark area
and further, that the language requiring "entire right, title and
interest" be deleted.
Response: As was the case with the PTO's review of 3.1, the language
in 3.71 has also been modified to eliminate any confusion.
Accordingly, 3.71 now provides for assignments of registered marks or
a mark for which an application for registration has been filed, making
it consistent with 3.1. While this change cannot prevent assignments
from being made without the underlying goodwill, it may eliminate some
confusion.
Comment: Section 3.73, as proposed, provided that a full assignee could
take any action before the Office with respect to the assigned
application, patent, or registration provide ownership is established to
the satisfaction of the Commissioner. The rule further provided that
ownership could be established by providing documentary evidence of the
chain of title to the assignee. The assignee was also required to submit
a verified statement stating the evidence had been reviewed and
certifying to the best of the party's belief, title is in the party
seeking to take the action. The Office reserved the right to require
recordation of any ownership documents. One comment suggested the
procedure was too "elaborate" and "confusing" to permit the submitting
party to act rapidly. Another comment suggested the Office use the
language of former 2.186 which only required "the assignment has been
recorded or that proof of the assignment has been submitted" to enable
action by the assignee.
Another comment suggested that a simple statement identifying the
documents thought to place ownership in a party should be sufficient. It
was believed that no additional benefit accrued by having the party
state that they believed they were entitled to take the action because
whether or not a party can act is a determination the PTO must make.
Two comments suggested that a literal reading of the rule would require
every paper filed on behalf of an assignee be accompanied by a proof of
ownership. One comment suggested it was too harsh to preclude a party
from taking action in a trademark matter until proof of ownership is
established to the satisfaction of the Commissioner. Rather, it was
suggested that a party be permitted to take action once documents
establishing ownership are filed.
One comment received pointed to the proposed language of 3.73
providing the statement must be signed by the party or its attorney or
agent of record which was a greater requirement than 1.34(a), if that
was intended.
Another comment suggested that the proposed language be changed by
deleting the provision that ownership must be established to the
satisfaction of the Commissioner and substituting therefore "provided
the assignee is owner of the entire right, title, and interest in the
patent application, patent, registeredmark or mark for which an
application for registration has been filed."
One final comment suggested that 3.73 be changed to specifically set
forth that it applied to secure Office acceptance of a Section 8 or 15
affidavit or a Section 9 application, 15 U.S.C. 1058, 1059, for
trademark filings, and requested examples of the types of documents
necessary to establish ownership.
Response: Ownership need only be established the first time the new
party wants to act in patent and trademark cases, provided the
appropriate documents are recorded. Section 3.73(b) is modified to
provide that a statement of ownership need only be provided when a
patent assignee wishes to act on a matter. For patents, the PTO believes
it is appropriate for the patent assignee to review the documents it
believes establishes its ownership prior to filing a paper signed by
that assignee. Additionally, the statement will certify that to the best
of the assignee's knowledge and belief, title is in that assignee. This
will establish, to the satisfaction of the Commissioner, that the
assignee knows of no other document establishing title in someone other
than the assignee. The PTO will still make the determination of whether
the assignee is entitled to take action after a review of the documents.
For trademarks the action sought to be taken can be submitted
simultaneously by the party. The action will be examined as will the
claim of ownership and the party will be notified whether it is
satisfactory. As in the past, "any action" refers to post-registration
documents as well.
Other Considerations
The rule changes are in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Orders
12291 and 12612 and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501
et seq.
The General Counsel of the Department of Commerce has certified to
the Chief Counsel for Advocacy, Small Business Administration, that
these rule changes will not have a significant adverse economic impact
on a substantial number of small entities (Regulatory Flexibility Act, 5
U.S.C. 605(b)). The principal impact of these changes is to require that
a cover sheet accompany each document submitted for recording. The rule
change includes no additional or increased fees. Substantive rights to
use trademarks and patents are not adversely affected.
The Office has determined that these rule changes are not a major
rule under Executive Order 12291. The annual effect on the economy will
be less than $100 million. Because most of the changes reduce procedural
burdens, there will be no major increase in costs or prices for
consumers; individual industries; Federal, state or local government
agencies; or geographic regions. There will be no significant adverse
effects on competition, employment, investment, productivity, or
innovation, or on the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic or export markets.
These rule changes contain a collection-of-information requirement
subject to the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
The rule changes add a requirement for a cover sheet to be submitted
with each document to be recorded that will expedite the recording
process and improve quality. This collection of information requirement
is cleared under OMB Control No. 0651-0011. The public reporting burden
for this requirement is estimated to be one-half hour per filing,
including the time for reviewing instructions, searching exis-ting data
sources, gathering and maintaining the data needed, and completing and
reviewing the collections of information.
The Office has also determined that this notice has no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of information,
Inventions and patents, Reporting and recordkeeping requirement.
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents,
Trademarks, Reporting and recordkeeping requirement.
For the reasons set out in the preamble and pursuant to the authority
contained in 15 U.S.C. 1123 and 35 U.S.C. 6, parts 1, 2 and 3 of title
37 of the Code of Federal Regulations are amended as set forth below.
PART I - RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 would continue to read as
follows:
Authority: 35 U.S.C. 6, unless otherwise noted.
2. Section 1.12 paragraphs (a) and (d) are revised to read as follows:
1.12 Assignment records open to public inspection.
(a) (1) Separate assignment records are maintained in the 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 assignment records
relating to pending or abandoned trademark applications and to trademark
registrations, for assignments recorded on or after January 1, 1955, are
open to public inspection at the Patent and Trademark Office, and copies
of those assignment records may be obtained upon request and payment of
the fee set forth in 1.19 and 2.6 of this Chapter.
(2) All records of assignments of patents recorded before May 1,
1957, and all records of trademark assignments recorded before January
1, 1955, 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.
****
(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.
3. Section 1.17 is amended by revising paragraph (i)(1) to read as
follows:
1.17 Patent application processing fees.
****
(i)(1) For filing a petition to the Commissioner under a section of
this part listed below which refers to this para-
graph $130.00
1.12 -- for access to an assignment record.
1.14 -- for access to an application.
1.53 -- to accord a filing date.
1.55 -- for entry of late priority papers.
1.60 -- to accord a filing date.
1.62 -- to accord a filing date.
1.103 -- to suspend action in application.
1.177 -- for divisional reissues to issue separately.
1.312 -- for amendment after payment of issue fee.
1.313 -- to withdraw an application from issue.
1.314 -- to defer issuance of a patent.
1.666(b) -- for access to interference settlement agreement.
3.81 -- for patent to issue to assignee, assignment submitted
after payment of the issue fee.
****
4. Section 1.32 is removed and reserved.
1.32 [Reserved]
5. Section 1.46 is revised to read as follows:
1.46 Assigned inventions and patents.
In case the whole or a part interest in the invention or in the patent
to be issued is assigned, the application must still be made or
authorized to be made, and an oath or declaration signed, by the
inventor or one of the persons mentioned in 1.42, 1.43, or 1.47.
However, the patent may be issued to the assignee or jointly to the
inventor and the assignee as provided in 3.81.
6. Section 1.104 is amended by revising paragraph (e) to read as follows:
1.104 Nature of examination; examiner's action.
****
(e) Co-pending applications will be considered by the examiner to be
owned by, or subject to an obligation of assignment to, the same person
if:
(1) the application files refer to assignments recorded in the Patent
and Trademark Office in accordance with Part 3 of this chapter which
convey the entire rights in the applications to the same person or
organization; or
(2) copies of unrecorded assignments which convey the entire rights
in the applications to the same person or organization are filed in each
of the applications; or
(3) an affidavit or declaration by the common owner is filed which
states that there is common ownership and states facts which explain why
the affiant or declarant believes there is common ownership; or
(4) other evidence is submitted which establishes common ownership of
the applications.
In circumstances where the common owner is a corporation or other
organization, an affidavit or declaration may be signed by an official
of the corporation or organization empowered to act on behalf of the
corporation or organization.
7. The undesignated center head above 1.331 is revised to read as
follows:
Arbitration Awards
8. Sections 1.331 through 1.334 are removed and reserved.
1.331- 1.334 [Reserved]
Part 2 - RULES OF PRACTICE IN TRADEMARK CASES
9. The authority citation for 37 CFR Part 2 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.
10. The undesignated center head 2.185 is removed.
11. Sections 2.185 through 2.187 are removed and reserved.
2.185-2.187 [Reserved]
12. Part 3 is added to read as follows:
Part 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
Sec.
3.1 Definitions
DOCUMENTS ELIGIBLE FOR RECORDING
3.11 Documents which will be recorded.
3.16 Assignability of trademarks prior to filing of use statements.
REQUIREMENTS FOR RECORDING
3.21 Identification of patents and patent applications.
3.24 Formal requirements for documents and cover sheets.
3.26 English language requirement.
3.27 Mailing address for submitting documents to be recorded.
3.28 Requests for recording.
COVER SHEET REQUIREMENTS
3.31 Cover sheet content.
3.34 Correction of cover sheet errors.
FEES
3.41 Recording fees.
DATE AND EFFECT OF RECORDING
3.51 Recording date.
3.54 Effect of recording.
3.56 Conditional assignments.
šbnDOMESTIC REPRESENTATIVE
3.61 Domestic representative.
šxn
PROSECUTION BY ASSIGNEE
3.71 Prosecution by assignee.
3.73 Establishing right of assignee to prosecute.
ISSUANCE TO ASSIGNEE
3.81 Issue of patent to assignee.
3.85 Issue of registration to assignee.
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
3.1 Definitions.
For purposes of this part, the following definitions shall apply:
Application means a national application for patent, an international
application that designates the United States of America, or an
application to register a trademark unless otherwise indicated.
Assignment means a transfer by a party of all or part of its right,
title and interest in a patent or patent application, or a transfer of
its entire right, title and interest in a 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 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.
DOCUMENTS ELIGIBLE FOR RECORDING
3.11 Documents which will be recorded.
Assignments of applications, patents, and registrations, accompanied by
completed cover sheets as specified in 3.28 and 3.31, will be
recorded in the Office. Other documents, accompanied by completed cover
sheets as specified in 3.28 and 3.31, affecting title to
applications, patents, or registrations, will be recorded as provided in
this Part or at the discretion of the Commissioner.
3.16 Assignability of trademark prior to filing of use statement.
No application to register a mark under 15 U.S.C. 1051(b) is assignable
prior to the filing of the verified statement of use under 15 U.S.C.
1051(d) except to a successor to the business of the applicant, or
portion thereof, to which the mark pertains, if that business is ongoing
and existing.
REQUIREMENTS FOR RECORDING
3.21 Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the
patent number. An assignment relating to a national patent application
must identify the national patent application by the application number
(consisting of the series code and the serial number, e.g., 07/123,456)
or the serial number and filing date. An assignment relating to an
international patent application which designates the United States of
America must identify the international application by the international
application number (e.g., PCT/US90/01234). If an assignment is executed
concurrently with, or subsequent to, the execution of the patent
application, but before the patent application is filed, it must
identify the patent application by its date of execution, name of each
inventor, and title of the invention so that there can be no mistake as
to the patent application intended.
3.24 Formal requirements for documents and cover sheets.
The document and cover sheet must be legible. Either the original
document or a true copy of the original document, may be submitted for
recording. Only one side of each page shall be used. The paper used
should be flexible, strong, white, non-shiny, durable, and preferably no
larger than 21.6 x 33.1 cm. (8 1/4 x 14 inches) with a 2.5 cm.
(one-inch) margin on all sides.
3.26 English language requirement.
The Office will accept and record non-English language documents only if
accompanied by a verified English translation signed by the individual
making the translation.
3.27 Mailing address for submitting documents to be recorded.
Documents and cover sheets to be recorded should be addressed to the
Commissioner of Patents and Trademarks, Box Assignments, Washington,
D.C. 20231, unless they are filed together with new applications or with
a petition under 3.81(b).
3.28 Requests for recording.
Each document submitted to the Office for recording must be accompanied
by at least one cover sheet as specified in 3.31 referring either to
those patent applications and patents, or to those trademark
applications and registrations, against which the document is to be
recorded. If a document to be recorded includes interests in, or
transactions involving, both patents and trademarks, separate patent and
trademark cover sheets must be submitted. Only one set of documents and
cover sheets to be recorded should be filed. If a document to be
recorded is not accompanied by a completed cover sheet, the document and
any incomplete cover sheet will be returned pursuant to 3.51 for
proper completion of a cover sheet and resubmission of the document and
a completed cover sheet.
COVER SHEET REQUIREMENTS
3.31 Cover sheet content.
(a) Each patent or trademark cover sheet required by 3.28 must
contain:
(1) the name of the party conveying the interest;
(2) the name and address of the party receiving the interest;
(3) a description of the interest conveyed or transaction to be
recorded;
(4) each application number, patent number or registration number
against which the document is to be recorded, or an indication that the
document is filed together with a patent application;
(5) the name and address of the party to whom correspondence
concerning the request to record the document should be mailed;
(6) the number of applications, patents or registrations identified
in the cover sheet and the total fee;
(7) the date the document was executed;
(8) an indication that the assignee of a trademark application or
registration who is not domiciled in the United States has designated a
domestic representative (see 3.61); and
(9) a statement by the party submitting the document that to the best
of the person's knowledge and belief, the information contained on the
cover sheet is true and correct and any copy submitted is a true copy of
the original document; and
(10) the signature of the party submitting the document.
(b) A cover sheet may not refer to both patents and trademarks.
3.34 Correction of cover sheet errors.
(a) An error in a cover sheet recorded pursuant to 3.11 will be
corrected only if:
(1) the error is apparent when the cover sheet is compared
with the recorded document to which it pertains and
(2) a corrected cover sheet is filed for recordation.
(b) The corrected cover sheet must be accompanied by the
originally recorded document or a copy of the originally recorded
document and by the recording fee as set forth in 3.41.
FEES
3.41 Recording fees.
All requests to record documents must be accompanied by the appropriate
fee. A fee is required for each application, patent and registration
against which the document is recorded as identified in the cover sheet.
The recording fee is set in 1.21(h) of this Chapter for patents and
in 2.6(q) of this Chapter for trademarks.
DATE AND EFFECT OF RECORDING
3.51 Recording date.
The date of recording of a document is the date the document meeting the
requirements for recording set forth in this Part is filed in the
Office. A document which does not comply with the identification
requirements of 3.21 will not be recorded. Documents not meeting the
other requirements for recording, for example, a document submitted
without a completed cover sheet or without the required fee, will be
returned for correction to the sender where a correspondence address is
available. The returned papers, stamped with the original date of
receipt by the Office, will be accompanied by a letter which will
indicate that if the returned papers are corrected and resubmitted to
the Office within the time specified in the letter, the Office will
consider the original date of filing of the papers as the date of
recording of the document. The certification procedure under either
1.8 or 1.10 of this Chapter may be used for resubmissions of returned
papers to have the benefit of the date of deposit in the United States
Postal Service. If the returned patent was not corrected and resubmitted
within the specified period, the date of filing of the corrected papers
will be considered to be the date of recording of the document. The
specified period to resubmit the returned papers will not be extended.
3.54 Effect of recording.
The recording of a document pursuant to 3.11 is not a determination
by the Office of the validity of the document or the effect that
document has on the title to an application, a patent, or a
registration. When necessary, the Office will determine what effect a
document has, including whether a party has the authority to take an
action in a matter pending before the Office.
3.56 Conditional assignments.
Assignments which are made conditional on the performance of certain
acts or events, such as the payment of money or other condition
subsequent, if recorded in the Office, are regarded as absolute
assignments for Office purposes until cancelled with the written consent
of all parties or by the decree of a court of competent jurisdiction.
The Office does not determine whether such conditions have been
fulfilled.
DOMESTIC REPRESENTATIVE
3.61 Domestic representative.
If the assignee of a trademark application or registration is not
domiciled in the United States, the assignee must designate, in writing
to the Office, a domestic representative. An assignee of a patent
application or patent may designate a domestic representative if the
assignee is not residing in the United States. The designation shall
state the name and address of a person residing within the United States
on whom may be served process or notice of proceedings affecting the
application, patent or registration or rights thereunder.
PROSECUTION BY ASSIGNEE
3.71 Prosecution by assignee.
The assignee of record of the entire right, title and interest in an
application for patent is entitled to conduct the prosecution of the
patent application to the exclusion of the named inventor or previous
assignee. The assignee of a registered trademark or a trademark for
which an application to register has been filed is entitled to conduct
the prosecution of the trademark application or registration to the
exclusion of the original applicant or previous assignee.
3.73 Establishing right of assignee to prosecute.
(a) The inventor is presumed to be the owner of a patent application,
and any patent that may issue therefrom, unless there is an assignment.
The original applicant is presumed to be the owner of a trademark
application unless there is an assignment.
(b) When the assignee of the entire right, title and interest seeks
to take action in a matter before the Office with respect to a patent
application, trademark application, patent, registration, or
reexamination proceeding, the assignee must establish its ownership of
the property to the satisfaction of the Commissioner. Ownership is
established by submitting to the Office documentary evidence of a chain
of title from the original owner to the assignee or by specifying (e.g.
reel and frame number, etc.) where such evidence is recorded in the
Office. Documents submitted to establish ownership may be required to be
recorded as a condition to permitting the assignee to take action in a
matter pending before the Office. In addition, the assignee of a patent
application or patent must submit a statement specifying that the
evidentiary documents have been reviewed and certifying that, to the
best of assignee's knowledge and belief, title is in the assignee
seeking to take the action.
ISSUANCE TO ASSIGNEE
3.81 Issue of patent to assignee.
(a) For a patent application, if an assignment of the entire right,
title, and interest is recorded before the issue fee is paid, the patent
may issue in the name of the assignee. If the assignee holds an
undivided part interest, the patent may issue jointly to the inventor
and the assignee. At the time the issue fee is paid, the name of the
assignee must be provided if the patent is to issue solely or jointly to
that assignee.
(b) If the assignment is submitted for recording after the date of
payment of the issue fee, but prior to issuance of the patent, the
assignee may petition that the patent issue to the assignee. Any such
petition must be accompanied by the fee set forth in 1.17(i)(1) of this
Chapter.
3.85 Issue of registration to assignee.
The certificate of registration may be issued to the assignee of the
applicant, or in a new name of the applicant, provided that the party
files a written request in the trademark application by the time the
application is being prepared for issuance of the certificate of
registration, and the appropriate document is recorded in the Office. If
the assignment or name change document has not been recorded in the
Office, then the written request must state that the document has been
filed for recordation. The address of the assignee must be made of
record in the application file.
June 24, 1992 DOUGLAS B. COMER
Acting Assistant Secretary and
Acting Commissioner of Patents
and Trademarks
[1140 TMOG 53]