317 Handling of Documents in the Assignment Recordation Branch [R-01.2024]
All documents and cover sheets submitted for recording are examined for formal requirements in the Assignment Recordation Branch in order to separate documents which are recordable from those which are not recordable.
Documents and cover sheets that are considered not to be recordable are returned to the sender by the Assignment Recordation Branch with an explanation. If the sender disagrees or believes that the document represents an unusual case which justifies recordation, the sender may present the question to the Director by way of petition under 37 CFR 1.181, filed with the Office of Petitions.
After an assignment and cover sheet have been recorded, notification will be sent to the name and address indicated on the cover sheet to receive correspondence, showing the reel and frame number.
317.01 Recording Date [R-08.2012]
37 CFR 3.51 Recording date.
The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office. A document which does not comply with the identification requirements of § 3.21 will not be recorded. Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available. The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document. The procedure set forth in § 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service. If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document. The specified period to resubmit the returned papers will not be extended.
The date of recording of a document is the date the document meeting the requirements for recording set forth in the regulations is filed in the Office. A document which does not comply with the identification requirements of 37 CFR 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 when a correspondence address is available.
317.02 Correction of Unrecorded Returned Documents and Cover Sheets [R-01.2024]
Assignment documents and cover sheets, or copies of the same, which are returned by the Assignment Recordation Branch will indicate the original date of receipt by the Office and 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 receipt of the papers as the date of recording of the document. See 37 CFR 3.51. The certification procedure under 37 CFR 1.8 (see MPEP § 512) or the “Priority Mail Express®” procedure under 37 CFR 1.10 (see MPEP § 513) may be used for resubmissions of returned papers to obtain the benefit of the date of deposit in the United States Postal Service to establish that the papers were returned within the time period specified. If the returned papers are not corrected and resubmitted within the specified period, the date of receipt 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.
317.03 Effect of Recording [R-10.2019]
37 CFR 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.
37 CFR 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 canceled 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.
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 or patent. See Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 862-3 (E.D. Va. 2016). 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. See MPEP §§ 324 and 325.
37 CFR 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 rule 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. A security agreement that does not convey the right, title, and interest of a patent property is not a conditional assignment.
In accordance with the subsequent purchaser provision in 35 U.S.C. 261, if an assignment is not timely recorded at the USPTO, the unrecorded assignment will not be superior to the rights acquired by a third party, i.e. a bona fide purchaser, for valuable consideration if that third party did not have knowledge of the unrecorded assignment. See CMS Industries, Inc. v. L.P.S. International, Ltd., 643 F.2d 289, 217 USPQ 20 (5th Cir. 1981).
