300

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

305.01 Unclaimed Subject Matter in the Earlier
Filed Application

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 Office

# 301 1 Assignability of Patents and Appli- cations [R-27]

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 Office within three months from
its date or prior to the date of such subsequent pur-
chase or mortgage.

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 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 dis-
cretion 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-22]

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

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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-24]

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 Office will accept and record legi-
ble 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-24]

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 Branch 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. Title searches are automatically
made in all applications after the payment of
the issue fee.

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 Branch for a title report.

# 304 Conflicting Subject Matter in Two Applications of Same Inventor, One of Which Is Assigned

Where applicant has pending two applica-
tions with overlapping subject matter therein.

and assigns one of the applications in its en-
tirety, which assignment is duly recorded in
the Patent Office, the assigned application at
once may become a reference against the sec-
ond application for all common subject matter
disclosed, irrespective of the dates of filing of
the two applications, and also of any subse-
quent assignment of the second case to an-
other.

# 305 Different Inventors, Common Ownership [R-22]

Where there is a common assignee of two or
more applications by different inventors involy-
ing conflicting subject matter see § 804.03 and
In re Stanley et al., 102 USPQ 234. Note, that
in order to reject on the grounds of double
patenting the cases must have the same inven-
tive entity. See $ 804.

Where the applications disclose and claim
patentably different inventions, there being no
overlap of claims, or where the earlier filed
application has issued as a patent and has be-
come a statutory bar before filing of the other
application, no problems arise.

# 305.01 Unclaimed Subject Matter in the Earlier Filed Application [R-24]

If the second filed application claims subject
matter disclosed but not claimed in the earlier
filed application. 35 U.S.C. 102(e) applies and
the earlier filed application is a reference
(§ 706.02) unless it is removed (§ 715).

## 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-24]

After the payment of the issue fee, a divi-
sional, continuation, or substitute application is
sent to the Assignment Branch where the as-
signment of the original application is applied
without charge to the later application, pro-

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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 heading of the printed patent includes
all identifying parent data of continuation-in-
part, continuation, divisional, substitute, and
reissue applications. It should be noted, how-
ever, that inclusion of this information in the
heading does not necessarily indicate that the
claims are entitled to the benefit of the earlier
filing date.

The Assignment Branch 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-24]

Rule 334. Issue of patent to assignec. 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 hes
been filed with the Patent Office. In the event an
assignment has been filed. such statement must in-
clude the name of the assignee and indicate whether
or not an acknowledgment of a recorded assignment
has been received from the Patent Office.

For the patent to normally issue to an as-
signee, the assignment must be recorded in the
Patent 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-22]

The Notice of Allowance provides for includ-
ing the name of the assignee.

# 309 Restrictions Upon Employees of Patent Office

35 U.S.C. 4. Restrictions on officers and employees
as to interest in patents. Officers and employees of
the Patent Office shall be incapable, during the period
of their appointments and for one year thereafter, of
applying for a patent and of acquiring, directly or in-
directly, 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 there-
after they shall not be entitled to any priority date
earlier than one year after the termination of their
appointment.

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