300

Printed page 1

Printed page 2

Printed page 3

OCR transcription for search; preserved printed pages are authoritative

# Chapter 300 Ownership and Assignment

## 301 Assignability of Patents and Applications 301.01 Accessibility of Assignment Records

302 Effect of Recording

303 Endorsing Assignments on Pending Applications

304 Conflicting Subject Matter in Two Applications
of Same Inventor, One of Which Is Assigned
305 Different Inventors, Common Ownership

305.02 Claimed Subject Matter the Same or Not
Patentably Different
306 Assignment of Division, Continuation, Substitute,
and Continuation-in-Part in Relation to Parent
Case

307
Issue to Assignee

308
Notice of Allowance Where Application Is As-
signed

309 Restriction Upon Employees of Patent and
Trademark Office

## 301 Assignability of Patents and Appli- cations [R-43]

35 U.S.C. 261. Ownership; assignment. Subject to
the provisions of this title, patents shall have the
attributes of personal property.

Applications for patent, patents, or any interest
therein, shall be assignable in law by an instrument
in writing. The applicant, patentee, or his assigns or
legal representatives may in like manner grant and
convey an exclusive right under his application for
patent, or patents, to the whole or any specified part
of the United States.

A certificate of acknowledgment under the hand and
official seal of a person authorized to administer oaths
within the United States, or, in a foreign country, of a
diplomatic or consular officer of the United States or
an officer authorized to administer oaths whose author-
ity is proved by a certificate of a diplomatic or consular
officer of the United States, shall be prima face evidence
of the execution of an assignment, grant or conveyance
of a patent or application for patent.

An assignment, grant, or conveyance shall be void
as against any subsequent purchaser or mortgagee for
valuable consideration, without notice, unless it is
recorded in the Patent and Trademark Office within
three months from its date or prior to the date of such
subsequent purchase or mortgage.

35 U.S.C. 262. Joint owners. In the absence of any
agreement to the contrary, each of the joint owners
of a patent may make, use or sell the patented inven-
tion without the consent of and without accounting to
the other owners.

Rule 331. Recording of assignments. (a) Assign-
ments, including grants and conveyances, of patents or
applications for patents under 35 U.S.C. 261, will be

recorded in the Patent and Trademark Office. Other
instruments affecting title to a patent or application
for patent, and licenses, even though the recording
thereof may not serve as constructive notice under 35
U.S.C. 261, will be recorded as provided in this rule
or in the discretion of the Commissioner.

(b) No instrument will be recorded which is not
in the English language and which does not amount
to an assignment, grant, mortgage, lien, incumbrance,
or license, or which does not affect the title of the
patent or invention to which it relates, and which
does not identify the patent or application to which
it relates, except as ordered by the Commissioner.

(c) An instrument relating to a patent should iden-
tify the patent by number and date (the name of the
inventor and title of the invention as stated in the
patent should also be given) ; an instrument relating
to an application should identify the application by
serial number and date of filing (the name of the
inventor and title of the invention as stated in the
application should also be given) but if an assignment
is executed concurrently with or subsequent to the
execution of the application but before the application
is filed or before its serial number and filing date are
ascertained, it should adequately identify the applica-
tion, as by its date of execution and name of the
inventor and title of the invention ; so that there can
be no mistake as to the patent or application intended.

Rule 333. Conditional assignments. Assignments
which are made conditional on the performance of
certain acts or events, as the payment of money or
other condition subsequent, if recorded in the Office
are regarded as absolute assignments for Office pur-
poses until cancelled with the written consent of both
parties or by the decree of a competent court. The
Office has no means for determining whether such
conditions have been fulfilled.

## 301.01 Accessibility of Assignment Records [R-47]

Rule 12. Assignment records open to public inspec-
tion. The assignment records, relating to original or
reissue patents, including digests and indexes, and
assignment records relating to pending or abandoned
trademark applications and to trademark registrations,
are open to public inspection and copies of any instru-
ment recorded may be obtained upon payment of the
fee therefor. Assignment records, digests and indexes,
relating to any pending or abandoned patent applica-
tion are not available to the public. Copies of any such
patent assignment records and information with re-
spect thereto shall be obtainable only upon written au-

thority of the applicant or his assignee or attorney or
agent or upon a showing that the person seeking such
information is a bona fide prospective or actual pur-
chaser, mortgagee or licensee of such application, un-
less it shall be necessary to the proper conduct of
business before the Office or as provided by these rules.
An order for a copy of an assignment should give the
identification of the record. If identified only by the
name of the patentee and number of the patent, or in
the case of a trademark registration by the name of
the registrant and number of the registration, or by
name of the applicant and serial number of the applica-
tion, an extra charge will be made for the time con-
sumed in making a search for such assignment.

Assignments relating to applications for reg-
istration of trademarks are open to public
inspection.

The Office will not open certain parts only of
an assignment document to public inspection.
If such a document contains two or more items,
any one of which, if alone, would be open to
such inspection, then the entire document will
be open. Thus, if an assignment covers either
a trademark or a patent in addition to one or
more patent applications, it will be available
to the public ab initio; and if it covers a number
of patent applications, it will be so available as
soon as any one of them is patented. Assign-
ments relating only to one or more pending
applications for patent will not be open to pub-
lic inspection.

If the application on which a patent was
granted is a division or continuation of an ear-
lier case, the assignment records of that case will
be open to public inspection ; similar situations
involving continuation-in-part applications will
be considered on their individual merits.

Assignment records relating to reissue appli-
cations are open to public inspection.

## 302 Effect of Recording [R-43]

Rule 332. Receipt and recording. Assignments are
recorded in regular order as promptly as possible, and
then transmitted with the date and identification of the
record stamped thereon to the persons entitled to them.
The date of record is the date of the receipt of the
assignment at the Office in proper form and accom-
panied by the full legal fee for recording specified in
35 U.S.C. 41 (a) 10.

The Patent and Trademark Office will accept
and record legible certified copies of original
assignments or other instruments.

The certified copy, if not in the English lan-
guage, will not be recorded unless accompanied
by a translation signed by the translator.

Certification shall be to the fact that the in-
strument submitted is a true copy of the orig-
inal and shall be made by a notary public or, if

in a foreign country, by a consular officer of the
United States or an officer authorized to admin-
ister oaths and authenticated by a consular
officer of the United States. Certification may
also be made in the form of a declaration
(rule /68).

## 303 Endorsing Assignments on Pend- ing Applications [R-43]

The file wrapper of an application ordinarily
does not display the endorsement of an assign-
ment during the period an application is before
an examiner.

The name of the assignee is endorsed on the
file of an application only when it is submitted
to the Assignment Division for a title report.
Therefore, the file wrapper cannot be relied
upon to accurately reflect the assignment status
of an application while it is pending before an
examiner.

Certified copies of patent applications as
filed, do not include an indication of assign-
ments. Applicants desiring an indication of as-
signments of record should request separately
certified copies of assignment documents.

When the determination of the assignment
condition of an application is significant, as in
the factual situations represented by §§ 304
and 305, or when forwarding a form PO-
850 to the Board of Patent Interferences, it is
necessary to submit the application to the As-
signment Division for a title report.

## 304 Conflicting Subject Matter in Two Applications of Same Inventor, One of Which Is Assigned [R- 43]

Where applicant has pending two applica-
tions with overlapping subject matter claimed
therein, and assigns one of the applications in
its entirety, which assignment is duly recorded
in the Patent and Trademark Office, the as-
signed application at once may become a refer-
ence against the second application for all com-
mon subject matter disclosed. irrespective of
the dates of filing of the two applications, and
also of any subsequent assignment of the second
case to another assignee.

## 305 Different Inventors, Common Ownership [R-30]

Where there is a common assignee of two or
more applications by different inventors involv-
ing conflicting subject matter see § 804.03. Note,
that in order to reject on the grounds of double
patenting the cases must have the same inven-
tive entity. See § 804.

## 305.02 Claimed Subject Matter the Same or Not Patentably Dif- ferent [R-27]

Where the applications by different inven-
tors but of common ownership claim the same
subject matter or subject matter that is not
patentably different, questions of interference
therebetween and with third parties are han-
dled as indicated in §§ 804.03 and 1101.01(b).

## 306 Assignment of Division, Contin- uation, Substitute and Continua- tion-in-Part in Relation to Parent Case [R-47]

After the payment of the issue fee, a divi-
sional, continuation, or substitute application is
sent to the Assignment Division where the as-
signment of the original application is applied
without charge to the later application, pro-
vided the date of the assignment of the original
application was before the filing of the later
application.

In the case of a continuation-in-part, a prior
assignment of the original application is not
applied to the continuation-in-part application
because the assignment of the original applica-
tion gives the assignee only the subject matter
common to both applications. Continuation-
in-part applications require separate assign-
ments if they are to be issued to an assignee.

The front page of the printed patent includes
all identifying parent data of continuation-in-
part, continuation, divisional, and reissue ap-
plications. It should be noted, however, that
inclusion of this information does not neces-
sarily indicate that the claims are entitled to
the benefit of the earlier filing date.

The Assignment Division has discontinued
mailing notification in cases where there is a
conflict in assignment between an original ap-
plication and its divisional, continuation, sub-
stitute, or continuation-in-part application.
Where there are conflicting assignments, the
patent will normally issue to the applicant.

## 307 Issue to Assignee [R-43]

35 U.S.C. 152. Issue of patent to assignee. Patents
may be granted to the assignee of the inventor of rec-
ord in the Patent and Trademark Office, upon the
application made and the specification sworn to by the
inventor, except as otherwise provided in this title.

Rule 334. Issue of patent to assignee. In case of an
assignment of the entire interest in the invention and
application, or of the entire interest in the patent to
be granted, the patent will normally issue to the as-
signee. If the assignee should hold an undivided part

interest, the patent will normally issue jointly to the
inventor and the assignee. If it is desired that the
patent so issue the assignment in either case must
first have been recorded, and at a day not later than
the date payment is made of the issue fee or portion
thereof specified in the notice of allowance. At the
time of payment of the issue fee, a statement must be
furnished indicating whether or not an assignment has
been filed with the Patent and Trademark Office. In the
event an assignment has been filed, such statement
must include the name of the assignee and indicate
whether or not an acknowledgment of a recorded as-
signment has been received from the Patent and Trade-
mark Office.

For the patent to normally issue to an as-
signee, the assignment must be recorded in the
Patent and Trademark Office at a date not later
than the day on which the issue fee is paid.

Irrespective of whether the assignee partici-
pates in the prosecution of the application, the
patent issues to him unless there are conflicting
assignments.

## 308 Notice of Allowance Where Appli- cation Is Assigned [R-43]

The Issue Fee Transmittal Form portion
(POL-85b) of the Notice of Allowance as re-
vised in December 1969 and May 1973, provides
a space (item 2) for assignment data which
should be completed in order to comply with
rule 334 (37 CFR 1.334) ). Unless an assignee's
name and address are identified in item 2 of the
Issue Fee Transmittal Form POL-85b. the
patent will issue to the applicant. Assignment
data printed on the patent will be based solely
on the information so supplied.

A request for correction of error arising from
incomplete or erroneous information furnished
in item 2 of POL-85b will not be granted as a
matter of course and will be subject to adher-
ence to all the requirements of rule 323 (37
CFR 1.323).

## 309 Restrictions Upon Employees of Patent and Trademark Office [R-47]

35 U.S.C. 4. Restrictions on officers and employees
as to interest in patents. Officers and employees of
the Patent and Trademark Office shall be incapable,
during the period of their appointments and for one
year thereafter, of applying for a patent and of ac-
quiring, directly or indirectly, except by inheritance
or bequest, any patent or any right or interest in any
patent, issued or to be issued by the Office. In patents
applied for thereafter they shall not be entitled to any
priority date earlier than one year after the termina-
tion of their appointment.