patent assignment mpep

37 C.F.R. 1.12 Assignment records open to public inspection.

(1) Separate assignment records are maintained in the United States Patent and Trademark Office for patents and trademarks. The assignment records, relating to original or reissue patents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assignment records. (2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.

(b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14, are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record, or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part. (c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent application preserved in confidence under § 1.14, or any information with respect thereto, must:

(1) Be in the form of a petition including the fee set forth in § 1.17(g); or (2) Include written authority granting access to the member of the public to the particular assignment records from an inventor, the applicant, the assignee or an assignee of an undivided part interest, or a patent practitioner of record.

(d) An order for a copy of an assignment or other document should identify the reel and frame number where the assignment or document is recorded. If a document is identified without specifying its correct reel and frame, an extra charge as set forth in § 1.21(j) will be made for the time consumed in making a search for such assignment.

» 302 Recording of Assignment Documents

• MPEP 300 (Ed9 08.2017)
• 301 Ownership/Assignability of Patents and Applications
• 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
• 302.07 Assignment Document Must Be Accompanied by a Cover Sheet
• 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
• 307 Issue to Non-Applicant Assignee
• 308 Issue to Applicant
• 309 Restrictions Upon Employees of U.S. Patent and Trademark Office
• 313 Recording of Licenses, Security Interests, and Other Documents Other Than Assignments
• 315 Indexing Against a Recorded Certificate
• 317.01 Recording Date
• 317.02 Correction of Unrecorded Returned Documents and Cover Sheets
• 317.03 Effect of Recording
• 323 Procedures for Correcting Errors in Recorded Assignment Document
• 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
• MPEP 300 Workbook Quiz

• Public Quick Reference Guide
• Public User Manual
• E9_R-11.2013
• E9_R-07.2015
• E9_R-08.2017.
• E9_R-10.2019
• E9_R-07.2022 (Current)

Foreword ᐅ

Title Page E8r8 e8r9 E9_R-11.2013 E9_R-07.2015 E9_R-08.2017. E9_R-10.2019 E9_R-07.2022 (Current)

Manual of PATENT EXAMINING PROCEDURE

Original Eighth Edition

August 2001

Latest Revision

August 2012

Telephone: 1-800-972-6382 or 571-272-3150

Title Page-Top

• Trademark & Copyright
• Biotechnology
• Chemistry & Materials Science
• Medical Technology
• Pharmaceuticals

Filing an Assignment and Oath/Declaration for a Deceased Inventor

In law, the details are everything.  One slight variation in the facts changes the outcome.  One example is satisfying the assignment and declaration requirements for a deceased inventor in Post-AIA patent applications.

Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent.  35 U.S.C. § 154(a)(1).  Under normal circumstances, the inventors are considered the owners of a patent but can assign their ownership rights by an instrument in writing, and the assignment of the patent, or patent application, transfers to the assignee(s) an alienable ownership interest in the patent or application.  35 U.S.C. § 261 .

Assignment from Deceased Inventor

When there are joint inventors and one or more is deceased, assigning ownership becomes a more complex process.  The chain of ownership should be established from the deceased to his heirs and then from the heirs to the assignee.  This can be accomplished, for example, by using court documents confirming the heirs of the deceased inventor and having those heirs assign their rights to the assignee.  In addition, the remaining living inventors should also transfer their ownership rights to the assignee.

Oath/Declaration Requirement for Deceased Inventor

Under 35 U.S.C. § 117, legal representatives of deceased inventors may make application for a patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.  In addition, a person to whom a deceased inventor was under an obligation to assign the invention – such as an employer – may also make application for a patent.  35 U.S.C. § 118.  To satisfy the oath or declaration requirement, a Substitute Statement (USPTO form AIA/02) must be executed by someone authorized to do so.  37 C.F.R. 1.64(a).

Once you have all of the above elements, fulfilling the assignment requirements is as easy as uploading to the USPTO and recording the three separate assignments – living inventors, documents establishing heirship, and the heir’s assignment.  Similarly, fulfilling the oath or declaration requirements is as easy as submitting oaths/declarations from living inventors and a Substitute Statement executed on behalf of a deceased inventor.

More Insights

• Patent Laws, Regulations, Policies & Procedures
• Manual of Patent Examining Procedure
• Chapter 0600
• Section 605

605 Applicant [R-11.2013]

Effective September 16, 2012, the Office revised the rules of practice to permit a person to whom the inventor has assigned or is under an obligation to assign an invention to file and prosecute an application for patent as the applicant, and to permit a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute an application for patent as the applicant on behalf of the inventor. See MPEP § 605.01 for information regarding the applicant in applications filed on or after September 16, 2012.

For applications filed before September 16, 2012, a person to whom the inventor assigned an invention could file and prosecute an application for patent, but the inventor is considered the applicant. See MPEP § 605.02 for information regarding the applicant in applications filed before September 16, 2012.

605.01 Applicant for Application filed on or after September 16, 2012 [R-10.2019]

[Editor Note: See MPEP § 605.02 for information regarding the applicant in applications filed before September 16, 2012.]

The owner or assignee of a patent property can take action in a patent application as the applicant. The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom in the absence of an assignment. 37 CFR 3.73 . 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. See MPEP § 325 .

37 CFR 1.42 Applicant for patent.

• (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 .
• (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and not the inventor.
• (c) If fewer than all joint inventors are applying for a patent as provided in § 1.45 , the phrase "the applicant" means the joint inventors who are applying for the patent without the omitted inventor(s).
• (d) Any person having authority may deliver an application and fees to the Office on behalf of the applicant. However, an oath or declaration, or substitute statement in lieu of an oath or declaration, may be executed only in accordance with § 1.63 or 1.64 , a correspondence address may be provided only in accordance with § 1.33(a) , and amendments and other papers must be signed in accordance with § 1.33(b) .
• (e) The Office may require additional information where there is a question concerning ownership or interest in an application, and a showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

37 CFR 1.43 Application for patent by a legal representative of a deceased or legally incapacitated inventor.

If an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. If an inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. See § 1.64 concerning the execution of a substitute statement by a legal representative in lieu of an oath or declaration.

37 CFR 1.45 Application for patent by joint inventors.

• (a) Joint inventors must apply for a patent jointly, and each must make an inventor's oath or declaration as required by § 1.63 , except as provided for in § 1.64 . If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See § 1.64 concerning the execution of a substitute statement by the other joint inventor or inventors in lieu of an oath or declaration.
• (1) They did not physically work together or at the same time;
• (2) Each inventor did not make the same type or amount of contribution; or
• (3) Each inventor did not make a contribution to the subject matter of every claim of the application.
• (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116 . If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116 .

37 CFR 1.46 Application for patent by an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.

[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012. See 37 CFR 1.46 (pre-AIA) for the rule otherwise in effect.]

• (a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
• (1) If the applicant is the assignee or a person to whom the inventor is under an obligation to assign the invention, documentary evidence of ownership ( e.g. , assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention) should be recorded as provided for in part 3 of this chapter no later than the date the issue fee is paid in the application.
• (i) The fee set forth in § 1.17(g) ;
• (ii) A showing that such person has sufficient proprietary interest in the matter; and
• (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.
• (1) Correction or update in the name of the applicant. Any request to correct or update the name of the applicant under this section must include an application data sheet under § 1.76 specifying the correct or updated name of the applicant in the applicant information section ( § 1.76(b)(7) ). in accordance with § 1.76(c)(2) . A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.
• (2) Change in the applicant. Any request to change the applicant under this section after an original applicant has been specified must include an application data sheet under § 1.76 specifying the applicant in the applicant information section ( § 1.76(b)(7) in accordance with § 1.76(c)(2) ) and comply with §§ 3.71 and 3.73 of this title.
• (d) Even if the whole or a part interest in the invention or in the patent to be issued is assigned or obligated to be assigned, an oath or declaration must be executed by the actual inventor or each actual joint inventor, except as provided for in § 1.64 . See § 1.64 concerning the execution of a substitute statement by an assignee, person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter.
• (e) If a patent is granted on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest. Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in § 3.81 . Where a real party in interest has filed an application under § 1.46 , the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest.
• (f) The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette .

37 CFR 1.42 defines who is the applicant for a patent. The word “applicant” when used in title 37 refers to the inventor or all joint inventors, or to the person applying for a patent as provided in 37 CFR 1.43 , 1.45 , or 1.46 . If a person is applying for a patent as provided in 37 CFR 1.46 , the word “applicant” refers to the assignee, the person to whom the inventor is under an obligation to assign, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for the patent under 37 CFR 1.46 and not the inventor. If fewer than all joint inventors are applying for the patent as provided in 37 CFR 1.45 , the phrase “the applicant” means the joint inventors who are applying for the patent without the omitted inventor(s).

37 CFR 1.43 provides that if an inventor is deceased or under legal incapacity, the legal representative of the inventor may make an application for patent on behalf of the inventor. See also MPEP § 409.01(a) .

37 CFR 1.45 pertains to an application filed by joint inventors. Joint inventors must apply for a patent jointly and each joint inventor must make the inventor’s oath or declaration required by 37 CFR 1.63 , except as provided for in 37 CFR 1.64 . See 35 U.S.C. 116(a) and 37 CFR 1.45(a) . If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the other joint inventor or inventors may make the application for patent on behalf of themselves and the omitted inventor. See 35 U.S.C. 116(b) and 37 CFR 1.45(a) . See also MPEP § 409.02 .

37 CFR 1.46 provides for the filing of an application for patent by an assignee, a person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter under 35 U.S.C. 118 . If an application under 35 U.S.C. 111 is made by a person other than the inventor under 37 CFR 1.46(a) , the application must contain an application data sheet under 37 CFR 1.76 specifying in the applicant information section the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter. While identifying the party making the application for patent (the applicant) in an application data sheet is not a filing date requirement, a delay in naming the applicant under 37 CFR 1.46 may cause it to appear that applicant is the inventor and thus requiring the party to file a request under 37 CFR 1.46(c) to become the applicant, which requires compliance with 37 CFR 3.71 and 3.73 . See MPEP § 325 . If an assignee is filing an application under 37 CFR 1.46 , but the assignee is not the assignee of the entire right, title and interest in the application, then the assignee would need to be named as the applicant under 37 CFR 1.46 together with the other party who has an ownership interest. For example, if there are two joint inventors, and one inventor has assigned his rights in the invention to the assignee, but the other inventor has not assigned his rights in the invention and is under no obligation to assign his rights, the assignee and the other inventor should be identified as the applicant in the applicant information section of the application data sheet. See 37 CFR 3.71 . Under the example provided, the assignee would have an undivided interest in the entirety of the one inventor’s interest but would not be the owner of the entire right, title and interest in the invention. Because of this, the assignee cannot be named as the sole applicant in the application. All parties having any portion of the ownership in the patent must act together as a composite entity in patent matters before the Office. See MPEP § 301 .

If the applicant is the assignee or person to whom the inventor is under an obligation to assign the invention, the documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for an obligated assignee) should be recorded as provided for in 37 CFR part 3 no later than the date the issue fee is paid. See 37 CFR 1.46(b)(1) .

If the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (1) the fee set forth in 37 CFR 1.17(g) ; (2) a showing that such person has sufficient proprietary interest in the matter; and (3) a statement that making the application for patent by a person who otherwise shows sufficient proprietary interest on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties. See 37 CFR 1.46(b)(2) . A discussion of the evidence necessary for a showing that a person has sufficient proprietary interest in the matter is set forth in MPEP § 409.05 . The Office may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette . See 37 CFR 1.46(f) .

Any request to correct or update the name of the applicant after an applicant has been specified under 37 CFR 1.46(b) must include an application data sheet under 37 CFR 1.76 specifying the correct or updated name of the applicant in in the applicant information section. See 37 CFR 1.46(c)(1) . Thus, if there is no change in the applicant itself but just the applicant’s name (due to a correction or name change), the applicant need only submit an application data sheet specifying the correct or updated name of the applicant in the applicant information section. Any corrected application data sheet must identify the information being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2) . A change in the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii) will be effective to change the name of the applicant in a nonprovisional international design application.

Where no applicant is identified, the Office will, by default, consider the inventor to be the applicant (e.g., to complete processing of the application so that it can be forwarded for examination). Any request to change the applicant must include an application data sheet under 37 CFR 1.76 specifying the applicant in the applicant information section in accordance with 37 CFR 1.76(c)(2) and must comply with 37 CFR 3.71 and 3.73 . See 37 CFR 1.46(c)(2) . Thus, if there is a change of applicant under 37 CFR 1.46 (e.g., from the inventor to the assignee, or from one assignee to another assignee), the new applicant must establish its ownership of the application under 37 CFR 3.71(b) and 3.73 .

37 CFR 1.46(e) provides that if a patent is granted on an application filed under 37 CFR 1.46 by a person other than the inventor, the patent shall be granted to the real party in interest (e.g., the current assignee for an application that has been assigned). Otherwise, the patent may be issued to the assignee or jointly to the inventor and the assignee as provided in 37 CFR 3.81 .

Where a real party in interest has filed an application under 37 CFR 1.46 , the applicant shall notify the Office of any change in the real party in interest no later than payment of the issue fee. The Office will treat the absence of such a notice as an indication that there has been no change in the real party in interest. See 35 U.S.C. 118 and 37 CFR 1.46(e) . The use of box 3 of the Part B – Fee(s) Transmittal form, PTOL-85B will be required where the real party in interest has changed from filing of the application and the application was filed pursuant to 37 CFR 1.46 . Identification of the real party in interest in box 3 of PTOL-85B will not change the applicant of record in the application. For example, where the application was filed pursuant to 37 CFR 1.46 and identified Assignee X as the applicant, but the ownership subsequently changed and box 3 of PTOL-85B identified Assignee Y as the real party in interest, the issued patent would identify Assignee X as the applicant and Assignee Y as the assignee. Assignee Y would only be identified as the applicant if a proper request to change the applicant is filed pursuant to 37 CFR 1.46 no later than payment of the issue fee. Furthermore, a request to change the applicant under 37 CFR 1.46(c)(2) should not be filed after the patent has issued because such a request cannot be granted.

For correction of an inventor’s name, see 37 CFR 1.48 and MPEP § 602.01(c)(2) .

If a minor typographical error in a 37 CFR 1.46 applicant’s name is detected prior to payment of the issue fee, a request to correct the applicant’s name under 37 CFR 1.46(c)(1) should be filed promptly and must be filed no later than payment of the issue fee. The request, which can essentially be a signed transmittal letter, must be filed with an application data sheet under 37 CFR 1.76 specifying the correct name of the applicant in the applicant information section ( 37 CFR 1.76(b)(7) ) and must be shown with appropriate markings (underlining for additions, strikethrough for deletions). The request should be clear that the request is being filed under 37 CFR 1.46(c)(1) rather than 37 CFR 1.46(c)(2) . Neither a fee nor a statement under 37 CFR 3.73(c) is required.

If the minor typographical error in the applicant’s name is not detected until after the payment of the issue fee, the application must be withdrawn from issue or a certificate of correction must be filed, as further described below, because amendments are not permitted after the payment of the issue fee. If the application is withdrawn from issue under 37 CFR 1.313(c)(2) , the request under 37 CFR 1.46(c)(1) to correct the applicant’s name must be submitted with a request for continued examination (RCE) under 37 CFR 1.114 if the application is a utility or plant application. In the case of a design application, the petition to withdraw from issue under 37 CFR 1.313(c)(3) and request under 37 CFR 1.46(c)(1) should be accompanied by a continued prosecution application (CPA) under 37 CFR 1.53(d) . If a certificate of correction is filed, a petition under 37 CFR 1.182 must be filed with the certificate of correction after the patent issues requesting correction of the applicant’s name.

If a 37 CFR 1.46 applicant’s name changes (e.g., XYZ, LLC changes its name to XYZ, Inc.), a request to update the name of the applicant under 37 CFR 1.46(c)(1) should be filed promptly and must be filed no later than payment of the issue fee. The request, which can essentially be a signed transmittal letter, must be filed with an application data sheet under 37 CFR 1.76 specifying the correct name of the applicant in the applicant information section ( 37 CFR 1.76(b)(7) ) and must be shown with appropriate markings (underlining for additions, strikethrough for deletions). The request should be clear that the request is being filed under 37 CFR 1.46(c)(1) rather than 37 CFR 1.46(c)(2) . Neither a fee nor a statement under 37 CFR 3.73(c) is required, however, applicant may submit a statement under 37 CFR 3.73(c) that includes a reference to the name change document, if desired.

37 CFR 1.46(c)(1) does not provide for deletion of a party who was incorrectly named as the applicant (e.g., Company X was identified in the applicant information section of the application data sheet, but the named inventors neither assigned nor were under an obligation to assign to Company X, and Company X is not a sufficient proprietary interest party). In such a situation, a petition under 37 CFR 1.182 , including the petition fee under 37 CFR 1.17(f) , may be filed and accompanied by an application data sheet under 37 CFR 1.76 specifying the correct name of the applicant in the applicant information section ( 37 CFR 1.76(b)(7) ) in accordance with 37 CFR 1.76(c)(2) . The petition should provide an adequate explanation regarding the identification of a party as the applicant who was not the actual applicant.

605.02 Applicant for Application Filed Before September 16, 2012 [R-07.2015]

[Editor Note: See MPEP § 605.01 for information regarding the applicant in applications filed on or after September 16, 2012.]

37 CFR 1.41 (pre-AIA) Applicant for patent.

• (1) The inventorship of a nonprovisional application is that inventorship set forth in the oath or declaration as prescribed by § 1.63 , except as provided for in §§ 1.53(d)(4) and 1.63(d) . If an oath or declaration as prescribed by § 1.63 is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(b) , unless applicant files a paper, including the processing fee set forth in § 1.17(i) , supplying or changing the name or names of the inventor or inventors.
• (2) The inventorship of a provisional application is that inventorship set forth in the cover sheet as prescribed by § 1.51(c)(1) . If a cover sheet as prescribed by § 1.51(c)(1) is not filed during the pendency of a provisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to § 1.53(c) , unless applicant files a paper including the processing fee set forth in § 1.17(q) , supplying or changing the name or names of the inventor or inventors.
• (3) In a nonprovisional application filed without an oath or declaration as prescribed by § 1.63 or a provisional application filed without a cover sheet as prescribed by § 1.51(c)(1) , the name, residence, and citizenship of each person believed to be an actual inventor should be provided when the application papers pursuant to § 1.53(b) or § 1.53(c) are filed.
• (4) The inventorship of an international application entering the national stage under 35 U.S.C. 371 is that inventorship set forth in the international application, which includes any change effected under PCT Rule 92bis . See § 1.497(d) and (f) for filing an oath or declaration naming an inventive entity different from the inventive entity named in the international application, or if a change to the inventive entity has been effected under PCT Rule 92bis subsequent to the execution of any declaration filed under PCT Rule 4.17(iv) ( § 1.48(f)(1) does not apply to an international application entering the national stage under 35 U.S.C. 371 ).
• (b) Unless the contrary is indicated the word “applicant” when used in these sections refers to the inventor or joint inventors who are applying for a patent, or to the person mentioned in §§ 1.42 , 1.43 or 1.47 who is applying for a patent in place of the inventor.
• (c) Any person authorized by the applicant may physically or electronically deliver an application for patent to the Office on behalf of the inventor or inventors, but an oath or declaration for the application ( § 1.63 ) can only be made in accordance with § 1.64 .
• (d) A showing may be required from the person filing the application that the filing was authorized where such authorization comes into question.

37 CFR 1.45 (pre-AIA) Joint inventors.

• (a) Joint inventors must apply for a patent jointly and each must make the required oath or declaration; neither of them alone, nor less than the entire number, can apply for a patent for an invention invented by them jointly, except as provided in § 1.47 .
• (1) They did not physically work together or at the same time,
• (2) Each inventor did not make the same type or amount of contribution, or
• (c) If multiple inventors are named in a nonprovisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter of at least one claim of the application and the application will be considered to be a joint application under 35 U.S.C. 116 . If multiple inventors are named in a provisional application, each named inventor must have made a contribution, individually or jointly, to the subject matter disclosed in the provisional application and the provisional application will be considered to be a joint application under 35 U.S.C. 116 .

Pre-AIA 37 CFR 1.41(a) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63 , except as provided for in 37 CFR 1.53(d)(4) and pre-AIA 37 CFR 1.63(d) . The oath or declaration may be filed on the filing date of the application or on a later date. If an oath or declaration is not filed during the pendency of a nonprovisional application, the inventorship is that inventorship set forth in the application papers filed pursuant to 37 CFR 1.53(b) , unless an applicant files a paper under pre-AIA 37 CFR 1.41(a)(1) accompanied by the processing fee set forth in 37 CFR 1.17(i) supplying or changing the name or names of the inventor or inventors.

For correction of inventorship, see MPEP § 602.01(c) et seq.

For applications filed before September 16, 2012, if the application is filed by another, see MPEP § 409.03 et seq .

For assignments of application by inventor, see MPEP § 301 .

For applications filed before September 16, 2012 by another on behalf of a deceased or legally incapacitated inventor, see MPEP § 409.01(b) . For applications filed before September 16, 2012 where at least one inventor is unavailable, see MPEP § 409.03 et seq.

• 601.01(a)-Nonprovisional Applications Filed Under 35 U.S.C. 111(a)
• 601.01(b)-Provisional Applications Filed Under 35 U.S.C. 111(b)
• 601.01(c)-Conversion to or from a Provisional Application
• 601.01(d)-Application Filed Without All Pages of Specification
• 601.01(e)-Nonprovisional Application Filed Without at Least One Claim
• 601.01(f)-Applications Filed Without Drawings
• 601.01(g)-Applications Filed Without All Figures of Drawings
• 601.02-Power of Attorney
• 601.03(a)-Change of Correspondence Address in Applications Filed On or After September 16, 2012
• 601.03(b)-Change of Correspondence Address in Applications Filed Before September 16, 2012
• 601.04-National Stage Requirements of the United States as a Designated Office
• 601.05(a)-Application Data Sheet (ADS) -- Application Filed On or After September 16, 2012
• 601.05(b)-Application Data Sheet (ADS) in Application Filed Before September 16, 2012
• 602.01(a)-Inventor’s Oath or Declaration in Application Filed On or After September 16, 2012
• 602.01(b)-Inventor’s Oath or Declaration in Application Filed Before September 16, 2012
• 602.01(c)(1)-Correction of Inventorship in an Application – Request Filed On or After September 16, 2012
• 602.01(c)(2)-Correcting or Updating Inventor Name 37 CFR 1.48(f) – Request Filed On or After September 16, 2012
• 602.01(c)(3)-[Reserved]
• 602.02-New Oath or Substitute for Original
• 602.03-Office Finds the Inventor’s Oath or Declaration Defective
• 602.04-Foreign Executed Oath
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How Can I Correct An Assignment?

• Post author By Austen Zuege

Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document .

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b) ) and the U.S. Copyright Office (in Compendium 2308.1 ) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

• Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
• Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
• Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive ( nunc pro tunc ) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed ( nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

• Tags Assignments , Copyrights , Patent Prosecution , Trademark Prosecution