325 Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012 [R-01.2024]

[Editor Note: See MPEP § 324 for establishing the right of assignee to take action in an application filed before September 16, 2012.]

The owner or assignee of a patent property can take action in a patent application as the applicant. However, an owner or assignee that is a juristic entity must be represented by a patent practitioner. See 37 CFR 1.31 and 1.33(b)(3).

An assignee who is not the original applicant must become the applicant under 37 CFR 1.46(a) in order to request or take action in a patent application. A request to change the applicant under 37 CFR 1.46(c)(2) must be filed and must be accompanied by an application data sheet under 37 CFR 1.76 specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 37 CFR 3.73.

As the applicant, the owner or assignee that is not a juristic entity can sign a reply to an Office action (37 CFR 1.33(b)(3)), a request for a continued prosecution application under 37 CFR 1.53(d) (MPEP § 201.06(d)), a disclaimer under 37 CFR 1.321 (MPEP § 1490), Fee(s) Transmittal (PTOL-85B) (MPEP § 1306), or a request for status of an application (MPEP § 102). The owner or assignee can file an application under 37 CFR 1.46, appoint its own registered patent practitioner to prosecute an application (37 CFR 1.32), and grant a power to inspect an application (MPEP § 104). The owner or assignee can consent to the filing of a reissue application (MPEP § 1410.01), and to the correction of inventorship (MPEP § 602.01(c) or MPEP § 1481).

Effective September 16, 2012, juristic entities may sign small entity assertions under 37 CFR 1.27 (MPEP § 509.03 ), disclaimers under 37 CFR 1.321 (MPEP § 1490), submissions under 37 CFR 3.73 to establish ownership, powers of attorney under 37 CFR 1.32 (MPEP § 402) and powers to inspect under 37 CFR 1.14 (MPEP § 104). However, any other paper submitted on behalf of a juristic entity on or after September 16, 2012, must be signed by a patent practitioner.

See subsection VI below for a discussion of when ownership must be established to take action in a patent matter, and subsection VII below for a discussion of when ownership need not be established to sign certain papers.

I. THE ASSIGNEE/OWNER THAT CAN TAKE ACTION IN PATENT MATTERS

The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. 37 CFR 3.73(a).

The provisions of 37 CFR 3.71(b) provide that the assignee(s) who may conduct either the prosecution of a national application for patent as the applicant under 37 CFR 1.46 or a supplemental examination or reexamination proceeding are:

• (1) a single assignee who is the assignee of the entire right, title and interest in the application or patent, or
• (2) all partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent, who together own the entire right, title and interest in the application or patent.

As discussed in subsection II below, all parties having any portion of the ownership must join in “taking action” (i.e., act together as a composite entity) in order to be entitled to conduct the prosecution in patent matters. For a discussion of the applicant for patent, see MPEP § 409 et seq. and § 605 et seq.

A. Individual and Partial Assignees

If there is a single assignee of the entire right, title and interest in the patent application, 37 CFR 3.71(b)(1) provides that the single assignee (i.e., individual assignee) may act alone to conduct the prosecution of an application or other patent proceeding. If the assignee is not already the applicant under 37 CFR 1.46 in the patent application, then the assignee must file a request to change the applicant under 37 CFR 1.46(c)(2).

If there is no assignee of the entire right, title and interest of the patent application, then either:

• (1) The application has not been assigned, 37 CFR 3.71 is not applicable, and the prosecution must be conducted by the applicant. The word "applicant" refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in 37 CFR 1.43, 1.45, or 1.46. See MPEP § 409 et seq. and § 605 et seq.
• (2) The application has been assigned by at least one of the inventors, and there is thus at least one “partial assignee.” As defined in 37 CFR 3.71(b)(2), a partial assignee is any assignee of record who has less than the entire right, title and interest in the application. The application is owned by the combination of all partial assignees and all inventors who have not assigned away their right, title and interest in the application.

Where at least one inventor retains an ownership interest together with the partial assignee(s), the combination of all partial assignees and inventors retaining ownership interest is needed to conduct the prosecution of an application, unless one or more inventors have refused to join in the filing of the application and a petition under 37 CFR 1.46(b)(2) has been granted.

Where a reissue application is filed to correct inventorship in the patent by the deletion of the name of inventor X and inventor X has not assigned their rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the filing of the reissue application, even though inventor X is being deleted; however, inventor X need not sign the reissue oath or declaration. If inventor X has assigned their rights to the patent, then inventor X’s assignee must consent to the filing of the reissue application.

B. Example

Inventors A and B invent a process and file a patent application as the applicant, naming both inventors. Inventors A and B together may conduct prosecution of the application.

Inventor A then assigns all their rights in the application to Corporation X. Corporation X and Inventor B together may conduct prosecution of the application only if Corporation X (now a partial assignee as per 37 CFR 3.71(b)(2)) is made of record in the application as a partial assignee and the applicant is changed under 37 CFR 1.46(c)(2) to Corporation X and Inventor B. Pursuant to 37 CFR 1.46(c)(2), an application data sheet must be filed specifying the applicant (i.e., Corporation X and Inventor B) in the applicant information section, and a statement pursuant to 37 CFR 3.73(c) must be filed establishing that Corporation X is an assignee of an undivided interest in the entirety of the application.

Corporation X and Inventor B then both assign their rights in the application to Corporation Y. Corporation Y is then the sole (one hundred percent) owner and may, by itself, conduct prosecution of the application after Corporation Y (now an assignee of the entire right, title and interest) is made of record in the application as the applicant (by filing a request to change the applicant under 37 CFR 1.46(c)(2), an application data sheet pursuant to 37 CFR 1.76 specifying the applicant as Corporation Y, and a statement pursuant to 37 CFR 3.73(c) establishing that Corporation Y is assignee of the entire right, title and interest).

II. ESTABLISHING OWNERSHIP

An assignee who is not the original applicant must become the applicant under 37 CFR 1.46 in order to request or take action in a patent application. When an assignee who is not the original applicant first seeks to take action in a matter before the Office with respect to a patent application filed on or after September 16, 2012, the assignee must establish its ownership of the property to the satisfaction of the Director. 37 CFR 3.73(c). The assignee must also file a request to change the applicant under 37 CFR 1.46(c)(2) and an application data sheet under 37 CFR 1.76 specifying the applicant in the application information section. When an assignee who was not the original applicant or patent owner first seeks to take action in a matter before the Office with respect to a reissue patent application, patent, reexamination proceeding or supplemental examination proceeding for a patent that issued from an application filed on or after September 16, 2012, the assignee must establish its ownership of the property to the satisfaction of the Director. 37 CFR 3.73(c).

The statement establishing assignee’s ownership under 37 CFR 3.73(c) must be filed in the Office file related to the matter in which action is sought to be taken, and must contain:

• (A) documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment submitted for recording) and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is, submitted for recordation pursuant to 37 CFR 3.11; or
• (B) a statement specifying, by reel and frame number, where such evidence is recorded in the Office.

Documents submitted to establish ownership are required to be recorded, or submitted for recordation pursuant to 37 CFR 3.11, as a condition to permitting the assignee to take action in a matter pending before the Office. 35 U.S.C. 261 requires transfer of ownership by an assignment to be in writing. See Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 859 (E.D. Va. 2016).

The action taken by the assignee, and the 37 CFR 3.73(c) submission establishing that the assignee is the appropriate assignee to take such action, can be combined in one paper.

The establishment of ownership by the assignee (and the request for change of applicant under 37 CFR 1.46(c)(2)) must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. 37 CFR 3.73(c). If the submission establishing ownership and the request for change of applicant are not present, the action sought to be taken will not be given effect. If the submission establishing ownership is submitted at a later date, that date will be the date of the request for action or the date of the assignee’s action taken.

The submission establishing ownership by the assignee must be signed by a party who is authorized to act on behalf of the assignee or a patent practitioner of record. See discussion below. Once 37 CFR 3.73(c) 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(c) submission each time, provided that ownership has not changed.

Where there is more than one assignee (i.e., partial assignees) or a combination of partial assignees and inventors who have not assigned away their right, title and interest in the application, each owner must submit a statement under 37 CFR 3.73(c) that either:

• (A) Specifies (by percentage) the extent of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties. 37 CFR 3.73(c)(2)(i); or
• (B) Identifies the parties including inventors who together own the entire right, title and interest and state that all the identified parties own the entire right, title and interest. 37 CFR 3.73(c)(2)(ii).

The submission establishing ownership by the assignee pursuant to 37 CFR 3.73(c) is generally referred to as the “statement under 37 CFR 3.73(c)” or the “37 CFR 3.73(c) statement.” A duplicate copy of the 37 CFR 3.73(c) statement is not required and should not be submitted. See 37 CFR 1.4(b)and MPEP § 502.04.

III. CONTINUING APPLICATIONS

When an assignee files a continuing application under 37 CFR 1.53(b), the application papers must:

• (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c) in the parent application; or
• (B) contain a newly executed statement under 37 CFR 3.73(c).

When a CPA under 37 CFR 1.53(d) is filed in a design application, the statement filed under pre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c) in the parent application will serve as the statement for the CPA.

IV. REQUESTS FOR CONTINUED EXAMINATION

Where a Request for Continued Examination (RCE) of an application is filed under 37 CFR 1.114, the application is not considered to be abandoned; rather the finality of the Office action is withdrawn and the prosecution continues. Thus, the statement under pre-AIA 37 CFR 3.73(b) or under 37 CFR 3.73(c) in the application will continue to serve as the statement establishing ownership.

V. PARTY WHO MUST SIGN

The submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. The submission under 37 CFR 3.73(c) may be signed on behalf of the assignee in the following manner if the assignee is an organization (e.g., corporation, partnership, university, government agency, etc.):

• (A) The submission may be signed by a person in the organization having apparent authority to sign on behalf of the organization. 37 CFR 3.73(d)(2). An officer (chief executive 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. Modifications of these basic titles are acceptable, such as vice-president for sales, executive vice-president, assistant treasurer, vice-chairman of the board of directors. In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer and is presumed to have the authority to sign on behalf of the organization. A person having a title (administrator, general counsel) that does not clearly set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee. In this situation the Office recommends that when such person is authorized to act on behalf of the assignee, the submission clearly indicate the authority (see paragraph (B), below). A power of attorney (37 CFR 1.32(b)(4)) to a patent practitioner to prosecute a patent application executed by the applicant or the assignee of the entire interest does not make that practitioner an official of an assignee or empower the practitioner to sign the submission on behalf of the assignee.
• (B) The submission may be signed by any person, if the submission sets forth that the person signing is authorized (or empowered) to act on behalf of the assignee, i.e., to sign the submission on behalf of the assignee. 37 CFR 3.73(d)(1) .
• (C) The submission may be signed by a patent practitioner of record. 37 CFR 3.73(d)(3). A patent practitioner will be considered “of record” where the patent practitioner was appointed in a power of attorney already of record, or where the 37 CFR 3.73(c) statement is accompanied by a power of attorney that appoints the patent practitioner who signed the statement. See MPEP § 402.
• (D) The submission may be signed by a person empowered by an organizational resolution (e.g., corporate resolution, partnership resolution) to sign the submission on behalf of the assignee, if a copy of the resolution is, or was previously, submitted in the record.

Where a submission does not comply with (A), (B), (C) or (D) above, evidence of the person’s authority to sign will be required.

VI. WHEN OWNERSHIP MUST BE ESTABLISHED

Examples of situations where ownership must be established under 37 CFR 3.73(c) are when the assignee who is not the applicant: signs a request for status of an application or gives a power to inspect an application (MPEP § 102 and § 104); appoints its own registered attorney or agent to prosecute an application (37 CFR 3.71 and MPEP § 402.07 ); signs a disclaimer under 37 CFR 1.321 (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); or signs a Fee Transmittal (PTOL-85B) (MPEP § 1306 ). Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED

Examples of situations where ownership need not be established under 37 CFR 3.73(c) are when the assignee: signs a small entity statement under 37 CFR 1.27 (MPEP § 509.03); signs a statement of common ownership of two inventions (MPEP § 2146.02); signs a NASA or DOE property rights statement (MPEP § 151 ); signs an affidavit under 37 CFR 1.131(a) where the inventor is unavailable (MPEP § 715.04); signs a certificate under 37 CFR 1.8 (MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 (MPEP § 2210).

VIII. MULTIPLE ASSIGNEES

When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under 37 CFR 3.73(c). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners). 37 CFR 3.73(c)(2)(i). Where there are unspecified percentages of ownership, each partial assignee must submit a statement identifying the parties including inventors who together own the entire right, title and interest and state that all the identified parties own the entire right, title and interest. 37 CFR 3.73(c)(2)(ii). If the extent of the partial assignee’s ownership interest is not set forth in the submission under 37 CFR 3.73(c), the Office may refuse to accept the submission as an establishment of ownership interest.

IX. CONFLICTING 37 CFR 3.73(c) STATEMENTS

Where two or more purported assignees file conflicting 37 CFR 3.73(c) statements in an application or other Office proceeding, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application. 37 CFR 3.73(c)(3). Additionally, if the ownership established as controlling is contested on the record by another party who has submitted a conflicting 37 CFR 3.73(c) statement, then the application or other proceeding shall be forwarded by the Office official in charge of the application or other proceeding to the Office of Patent Legal Administration for resolving any procedural issues. Generally, where there are two or more conflicting 37 CFR 3.73(c) statements in an application, the applicant will be permitted to conduct the prosecution, and the other party that submitted a 37 CFR 3.73(c) statement to establish its ownership may wish to consider filing its own application.

X. FORMS

Form PTO/AIA/96 may be used to establish ownership under 37 CFR 3.73(c).

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