MPEP Q & A 250: What are examples of situations where ownership must be established?



What are examples of situations where ownership must be established?


Examples of situations where ownership must be established 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;
  • appoints its own registered attorney or agent to prosecute an application;
  • signs a disclaimer;
  • consents to the filing of a reissue application;
  • or signs a Fee Transmittal.

Effective September 16, 2012, a juristic entity (e.g., organizational assignee) must be represented by a patent practitioner.

Chapter Details:

The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment.

The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer come from section 325 of the MPEP.  The following is a brief summary of section 325.

325    Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012

This section outlines the rules for an assignee to take action in an application filed on or after September 16, 2012. Items covered include the documents the owner or assignee (other than a juristic entity) can sign, establishing ownership, and the rules for continuing or divisional applications. In addition, this section also discusses RCE’s, who may sign the submission establishing ownership, when ownership must be established, and when it need not be established. This section also discusses the topic of multiple assignees and conflicting assignment statements.

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