Brief Summary:
Inventorship is always granted to the individual who invented the subject matter of the patent. However, the inventor(s) may sell or transfer the rights to the invention via an assignment.
This chapter discusses several topics pertaining to assignments; including the recording and establishment of the assignment by the PTO.
Key Terms:
| Assignment | Assignment is the transfer of ownership rights of a patent or patent application from one party to another, typically documented through a written agreement. |
| Certificate of Correction | A Certificate of Correction is an official document issued by a patent office to rectify errors in a granted patent, such as typographical mistakes or minor inaccuracies, without altering the patent’s scope. |
| Inventorship | Inventorship refers to the identification of individuals who have made a significant inventive contribution to the conception of the claimed invention, determining who is legally recognized as the inventor(s) on a patent application. |
| Joint Owners | Joint Owners are two or more parties who share ownership rights to a patent, each having equal rights to use, license, or sell the patent independently unless otherwise agreed upon. |
| Ownership | Ownership refers to the legal rights held by an individual or entity over a patent, granting them exclusive control over the use, licensing, and enforcement of the patented invention. |
37 CFR (Code of Federal Regulations):
| 37 CFR 3.73 – Establishing right of assignee to take action. |
| 37 CFR 3.73 requires an assignee to establish ownership through documented evidence or recorded statements to take action on a patent application or issued patent, ensuring the assignee’s authority is verified. |
| 37 CFR 1.12 – Assignment records open to public inspection. |
| 37 CFR 1.12 states that assignment records related to patents and patent applications are open to public inspection, allowing transparency in ownership and interest transfers. |
35 USC (United States Code):
| 35 USC 261 – Ownership; assignment. |
| 35 USC 261 states that patents and patent applications are assignable by written instrument, with assignments requiring acknowledgment to serve as prima facie evidence of execution. |
| 35 USC 262 – Joint owners. |
| 35 USC 262 allows each joint owner of a patent to independently make, use, sell, or import the patented invention in the U.S. without needing consent from or accounting to the other owners, unless otherwise agreed. |
Quick Statistics:
Number of Pages: 40pgs
Sections: 301 – 325
List of Sections:
| 301 | Ownership/Assignability of Patents and Applications | |
| • 301.01Accessibility of Assignment Records | ||
| 302 | Recording of Assignment Documents | |
| • 302.01 Assignment Document Must Be Copy for Recording • 302.02 Translation of Assignment Document • 302.03 Identifying Patent or Application • 302.04 Foreign Assignee May Designate Domestic Representative • 302.05 Address of Assignee • 302.06 Fee for Recording • 302.07 Assignment Document Must Be Accompanied by a Cover Sheet • 302.08 Mailing Address for Submitting Assignment Documents • 302.09 Facsimile Submission of Assignment Documents • 302.10 Electronic Submission of Assignment Documents | ||
| 303 | Assignment Documents Not Endorsed on Pending Applications | |
| 306 | Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application | |
| • 306.01 Assignment of an Application Claiming the Benefits of a Provisional Application | ||
| 307 | Issue to Non-Applicant Assignee | |
| 308 | Issue to Applicant | |
| 309 | Restrictions Upon Employees of U.S. Patent and Trademark Office | |
| 310 | Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development | |
| 311 | Filing of Notice of Arbitration Awards | |
| 313 | Recording of Licenses, Security Interests, and Documents Other Than Assignments | |
| 314 | Certificates of Change of Name or of Merger | |
| 315 | Indexing Against a Recorded Certificate | |
| 317 | Handling of Documents in the Assignment Division | |
| • 317.01 Recording Date • 317.02 Correction of Unrecorded Returned Documents and Cover Sheets • 317.03 Effect of Recording | ||
| 318 | Documents Not to be Placed in Files | |
| 320 | Title Reports | |
| 323 | Procedures for Correcting Errors in Recorded Assignment Document | |
| • 323.01 Correction of Error in Recorded Cover Sheet | ||
| • 323.01(a) Typographical Errors in Cover Sheet • 323.01(b) Typographical Errors in Recorded Assignment Document • 323.01(c) Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent • 323.01(d) Expungement of Assignment Records | ||
| 324 | Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012 | |
| 325 | Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012 |