uspto assignment continuation application

29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

Intellectual Property
Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”).

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent.

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP, implement strong hiring policies that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an employment agreement that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

Advance assignment of any IP created while employed by your company, or using your company’s resources
An obligation to disclose any IP created while employed by your company, or using your company’s resources
An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

Independent contractors: Some inventors may be self-employed, or they may be employed by one of your service providers.
Joint collaborators: Some inventors may be employed by, say, a subsidiary or service company instead of your company.
Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

uspto assignment continuation application

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should also get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you can execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

Be in writing: Oral agreements to assign patent rights are typically not enforceable in the United States
Clearly identify all parties: Include the names, addresses, and relationship of the assignor(s) and assignee
Clearly identify the patent being assigned: State the patent or patent application number, title, inventors, and filing date
Be signed by the assignors
Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases.

So the patent owner (the Assignee) should should record the assignment through the USPTO’s Assignment Recordation Branch . They can use the Electronic Patent Assignment System (EPAS) to file a Recordation Cover Sheet along with a copy of the actual patent assignment agreement.

They should submit this paperwork within three months of the assignment’s date. If it’s recorded electronically, the USPTO won’t charge a recordation fee .

Need to check who owns a patent? The USPTO website publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a continuation-in-part , or in a non-provisional application that adds new matter to a provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an employee agreement , company policy , invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation.

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An experienced patent professional can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments — contact us now to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

Don't miss a new article. Henry Patent Law's Patent Law News + Insights blog is designed to help people like you build smart, scalable patent strategies that protect your intellectual property as your business grows. Subscribe to receive email updates every time we publish a new article — don't miss out on key tips to help your business be more successful.

PatentTrademarkBlog

How to file a continuation application: when is the continuation deadline, when must a continuation application be filed.

Known as a child application , a continuation must be filed while the parent application is still pending. A pending patent application is one that has not been abandoned or granted. In some cases, there may be no exact deadline for when a continuation must be filed because the parent application may be pending for a long time. For example, you may be waiting for a first Office Action which can take a couple of years. In other cases, the urgency may be high as the parent application is about to issue.

Timing is critical here. There is no second chance after a patent is granted. You can file a standalone patent application with new matter, but you will not be able to file a continuation after the parent application has been issued. You must maintain pendency of a parent application in order to file child patent applications.

Need to file a patent continuation application? Contact Vic at [email protected] or call (949) 223-9623 to request a flat rate cost estimate for filing your child application.

When should you file a continuation when your patent application is allowed?

A Notice of Allowance sets a 3-month deadline for paying the issue fee. Once the issue fee is paid, your patent will grant in roughly one month. Consider paying the issue fee later to give yourself more time to decide whether or not to file a continuation.

To err on the side of caution, we prefer filing the continuing application before paying the issue fee if possible. Sometimes, you will not have that luxury if the issue fee deadline is rapidly approaching. During those times when an issue fee payment must be made to meet the deadline, consider filing the continuation within one or two weeks of the payment date if possible.

After payment of the issue fee, the USPTO will send an Issue Notification setting forth the exact date on which the patent will be granted, which will always be a Tuesday . Unless it’s a holiday, the Monday before the issue date will typically be the last safe day to file a continuation. Though you don’t want to wait until the last minute, a continuation may be filed on the same day that the parent patent issues .

Is it safe to pay the issue fee before filing a continuing application? It depends. We don’t blame clients for wanting their patents granted as soon as possible. In fact, we typically share that desire to get the patent right away. To minimize risk in those situations, try to get the continuation application filed within one or two weeks of the issue fee payment if possible.

When should you file a continuing application when an Office Action is outstanding?

At times, it may make sense to file a continuing application in addition to, or in lieu of, responding to an Office Action. For example, you may realize that certain features are not shown in the cited prior art references. You would like to claim those features, but they might not be adequately described in your specification . In these situations, you might consider filing a CIP to add those features you wish to claim.

A continuing application may be filed within the 3-month deadline of a substantive Office Action without having to pay extension fees. An extension fee will need to be paid in the parent application if you plan to file a continuing application during the extended period calculated from the Office Action date.

Is it too late to file a continuation application after your patent has been granted?

Yes, it is too late to file a child application if the parent patent has been issued. There is no option for filing a late continuation. Instead, you might consider filing a reissue application which would open the door for filing reissue continuations.

Thinking of filing a continuing application?

Contact US patent attorney Vic Lin by email at [email protected] or call (949) 223-9623 to see how we can quickly file a child continuing application while your parent application is still pending.

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Patent Continuation: A Comprehensive Guide to Evolving Your Patent Protection

June 2, 2023

The Intelligent IP Quiz

Whether you are considering filing or have already filed your patent application, it is crucial for inventors and startups alike to have a surface-level understanding of patent applications, patent continuation and the importance of strategic patent filings.

Considering the pace at which technology is constantly advancing, it is often wise to consider continually refining and expanding the scope of your patent claims to capture the full scope of your patentable invention’s potential . While one patent application may protect your existing invention, it is just as important to continue to protect ongoing improvements to your inventions.

This is where continuation patent applications can be particularly useful. This article will highlight everything you need to know about the importance of evolving your patent through a continuation patent application.

Continuation patent applications explained. What is a continuation of a patent?

Continuation patent applications are an essential tool for inventors and startups in the pursuit of deep and prolonged protection of their technologies. In essence, a continuation application is a separate application that allows you to pursue additional claims that are based upon the same description and disclosures as the original patent application; also known as the “parent” application. Continuations may protect previously describe iterations of your invention, or in the case of continuations-in-part, new iterations.

There are several statutory requirements a continuation must satisfy. According to the United States Patent and Trademark Office (USPTO), this second application must be filed before the original application becomes either abandoned or issued. To ensure the continuation remains limited to the disclosures of the original patent application, it should not include or claim anything that would be considered new subject matter if it was inserted into the original application.

Filing a continuation is an effective way to take your initial application and turn it into two or more patents and is a strategy every successful applicant considers. Since you cannot include any new matter in your continuation, the original application should aim to combine claims that are both broad and narrow in scope so that a door is left open for a continuation to address individual claims that may have been objected to or rejected.

Drafting a comprehensive claim set during this initial phase ensures that those who may attempt to use your patented technology later will face significant legal hurdles. In doing so, it is possible that the original application will describe multiple inventions or multiple embodiments of an invention, and it may only receive protections for a subset of the disclosed invention(s).

Thus, before the parent application is issued as a patent, one or more patent continuation applications can be filed to help gain patent coverage for these additional inventions or embodiments disclosed in the initial application. Crucially, there is no limit to the number of continuations an applicant may file.

Once you receive a Notice of Allowance from the USPTO, you should be considering filing a patent continuation application prior to issuance of the parent application. If you choose not to file a continuation prior to issuance of the parent, you will effectively be limiting yourself to the patent protections offered by the original application which may not be broad enough to provide adequate legal protections against competitors or contemplate future improvements of your technology. Therefore, there are a plethora of reasons you should avoid limiting the scope of your parent application’s protections and consider filing a continuation application.

Benefits of Continuation Patent Applications

By filing at least one continuation application, also known as the “child” application, the patentee will retain the ability to update or modify their claimed subject matter which will expand presence in the marketplace. There are several reasons you should consider pursuing a continuation application as part of your patent prosecution strategy.

First, continuations allow you to claim multiple inventions. This is because the USPTO often determines that an application describes multiple inventions, and a patent can only claim one. In such circumstances, the USPTO may issue a restriction requirement which distinguishes each invention and requests that the applicant only select one for final examination. Through techniques like a divisional patent application, for example, an inventor can claim any inventions left unclaimed in a parent application.

Likewise, continuation applications allow you to seek broader protection of your claims. Since the scope of your claims while your parent application is pending is uncertain, a continuation can help keep the scope ambiguous for your competitors. Often, patent protection is granted for claims that provide only narrow coverage. When faced with an objection from an examiner for instance, an applicant might react swiftly and try expediting their claims to limit them to a specific embodiment of their invention or accepting the limitation offered by the examiner on their pending claims. In this scenario, an applicant can leverage a continuation application to pursue significantly broader protection of their claim set.

Continuation applications are also inherently beneficial with respect to how rapidly technology is advancing. Having a pending continuation application in your back pocket can open to door to tailor your application to cover future technological advances so long as covered in the original parent application. Savvy inventors and corporations often keep at least one continuation application pending at all times to maintain a strategic advantage over competitors.

Finally, circumstances may arise where you find it necessary to try deferring a decision on your parent application and costs of your invention overall. Continuation applications can be useful in such a case by essentially resetting the examination timeline by abandoning the original parent application in favor of a continuation application containing similar claims, while also maintaining your original filing date.

Drawbacks of Continuation Patent Applications

There are a few disadvantages to filing a continuation application compared to an entirely new patent application. First, a continuation application will not provide an earlier priority date for any claims containing new subject matter presented. Any new claims addressing new subject matter will receive a priority date corresponding to the date on which the continuation application itself was filed, while claims presented in the parent application will retain the same priority date as when that application was filed.

Thus, any new claims in the continuation application to the same 20-year protection term that is based on the given date the parent application was filed. This shortened term of protection can prove problematic down the line considering the lifetime on many types of patent applications lasts a few years.

Another issue that may arise with continuation applications is that any given description or statement in the parent application will be used to narrowly construe the language of the continuation application. This becomes particularly problematic if the claim set of the parent application is not broad enough to enable a strong continuation application. Similarly, if it has been more than one year between the parent and the continuation applications, certain disclosures made in the parent application may be considered prior art as they relate to any new claims in the continuation. In this scenario, an applicant may be leaving themselves open to the USPTO issuing a rejection to their continuation on obviousness grounds.

Working with a skilled patent attorney can help you overcome these disadvantages by tailoring your patent strategy to take advantage of continuations, while avoiding their disadvantages.

How is a Patent Continuation Different from the Original Patent?

The key difference that distinguishes a continuation from the original patent is that a continuation allows the patentee to pursue additional claims present in the original that the patentee’s competitor’s may be trying to mimic. Throughout the filing process on the parent application, it is far more challenging for the inventor to foresee all the possible ways that competitors may attempt to copy the invention without infringing upon it. A continuation application gives the patent holder the chance to leverage this hindsight to tack on new claims present in the original application that competitors may try to recreate later.

When can you file a Patent Continuation?

As previously mentioned, a continuation application must be filed while the original application is pending. A pending patent application is simply one that has not yet been abandoned or issued.

So when should you be filing a continuation application? At times, it may make sense to file it in tandem with a response to a USPTO Office action. Here, you can file a continuing application within the 3-month deadline of substantive Office actions without having to pay any late fees. If you have already received a Notice of Allowance, it is best practice to have your patent attorney work with you to file your continuation application before paying the issue fee.

Continuation vs. Continuation-in-Part vs. Divisional patent applications

There are 3 effective mechanisms through which an inventor may make modifications to the original parent application: A Continuation Application, a Continuation-In-Part Application, and a Divisional Application. These differ strictly in the types of modifications they allow an inventor to make.

As previously mentioned, a continuation allows an inventor to add new claims to a parent application, as long as the application hasn’t been issued or abandoned.

A continuation-in-part (CIP), allows for “repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.” CIP applications are a great avenue for protecting new improvements to the invention described in the parent application. Claims in a CIP that recite added matter do not maintain the priority date of the parent application, but can assist in protecting new developments that are so closely related to the parent application that the new developments simply cannot work without the description of the parent application.

By filing a CIP application, the applicant can protect additional inventions or improvements that have been made since the filing of the original application. This allows for the broadening of the scope of protection and ensures that the latest developments related to the original invention are included in the patent application.

A divisional application is commonly filed to divide or split a previously filed patent application into separate applications. It is typically filed when the original application covers multiple inventions or multiple aspects of an invention, which may be restricted to different applications by the USPTO. A divisional application retains the filing date and priority of the original application, which means that it benefits from the same priority rights and is subject to the same rules and regulations as the original application. However, it is treated as a separate application and undergoes its own examination process.

By filing a divisional application, the applicant can pursue separate protection for different inventions or aspects of the original application. This allows for greater flexibility in obtaining patent protection and enables the applicant to tailor the claims and scope of protection to each individual invention.

What are the costs associated with filing a patent continuation?

The Rapacke Law group charges between $3,500-$6,500 per continuation, CIP, or divisional but cost can vary based on the law firm or filing strategy. The Rapacke Law Group’s fees are flat-rate which means no surprise billing for hourly rates, government fees, or unexpected costs.

Speak with an experienced patent attorney

If you’re considering filing a patent application, continuation, CIP, or divisional, consult a Rapacke Law Group patent attorney free of charge.

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Ant-Like Persistence

Is it important to record assignments in divisional and continuation cases?

Assume for sake of discussion that a properly worded assignment has been executed and recorded for a US patent application. By this we mean an assignment that indeed settles ownership of of the subject matter of that patent application to the named applicant (typically a corporation or other legal entity that to which the inventors were obligated to assign the invention). Now assume that a continuation or divisional application gets filed pursuant to 35 USC § 120 (in this discussion I do not mean to assume a continuation-in-part). The question posed is:

Is it important, or even necessary, to record the assignment with respect to the child case?

In this blog article I will discuss factors that I can think of that might influence an applicant’s decision as to whether or not to go to the trouble of recording the assignment in the child case. I hope you, dear reader, will consider this question, and I hope you will post a comment below with your thoughts about this.

(I will mention that what prompted me to write this blog article is that a very nice patent firm in China asked me this question.)

So once again let’s make sure that we have our fact pattern fully set up. We are assuming for sake of discussion that the assignment that got recorded in the parent case was “good enough”. We assume that it really did legally serve to convey all rights to the correct entity.

The alert reader will realize that this is not always as easy as it might seem. One can imagine a fact pattern where an inventor previously executed some document that conveyed the patent rights, the result being that if the inventor were to execute a purported assignment today, the document signed today would not actually convey any rights. Another thing to keep in mind is that property law is state law, not federal law. It means that a particular attorney might not be admitted to practice in the state whose law actually applies to some inventor-and-employer fact pattern. But anyway, let’s assume for sake of discussion that somehow an appropriate assignment got prepared and signed and recorded and that it really did accomplish its legal goals.

And now there comes a reason to file a child case. Maybe it is a continuation application, maybe it is a divisional application.

Is it important to record the assignment again in the child case? Is it necessary to record the assignment in the child case? Is there some sense in which it might be said that a practitioner would be remiss if the practitioner were to fail to record the assignment in the child case?

A first thing to recall is why anybody records any assignment at the USPTO. We need to remind ourselves that it is not the recording of an assignment that brings about the change of ownership of the property. It is the execution of the document itself (or the satisfaction of the terms of the document) that brings about the change of ownership of the property. If the document was signed on a Monday and was recorded the next day (Tuesday), and later somebody asks “on what day did the invention actually change hands?” the answer is not Tuesday. The fact that Tuesday was the day that recordation happened does not in any way mean that Tuesday is the day that the change of ownership took place.

There are some countries around the world where if you want to know who owns a patent, the way you get the answer is pretty much by asking the patent office in that country. The patent office has people who review documents such as assignments. Part of the reason for filing an assignment with a patent office in such a country is so that the people in that patent office can review the assignment for this purpose.

But that is not at all what happens at the USPTO. When the USPTO carries out the recordation of an assignment (or a recordation of any other “document pertaining to title”), the USPTO does not actually evaluate the document to arrive at any legal conclusion. The party submitting the document provides a “recordation cover sheet” which sets forth the purported effect of the document. The submitter, in other words, represents to the USPTO that the document supposedly is legally effective to transfer the rights from somebody to somebody else. But there could (to give a silly example) be a “not” in the middle of the document that actually says that the document does not transfer such rights, and if so, there is nobody at the USPTO in the Assignment Branch whose job it is to catch the presence of such a “not” in the middle of the document.

No, if you want to know who owns a US patent, you cannot find out the answer by asking the USPTO. There is no USPTO database that contains the results of document reviews carried out by USPTO personnel on the topic of who owns a particular US patent. Yes, you can obtain what is called an “Abstract of Title” from the USPTO for any US patent. It will list, one by one, every document relating to title that has been recorded at the USPTO for that US patent. It will say that Assignor A has assigned to Assignee B in a first document. It will say that Assignor B has assigned to Assignee C in a second document.

You might think by paying a few dollars to the USPTO for an Abstract of Title, and by receiving the Abstract of Title from the USPTO, and by looking at the Abstract of Title, and by seeing “A to B” and “B to C” in the Abstract of Title, that this means the USPTO is telling you that the owner is C. You might think that this that this means you can relax and now you know who the owner is.

Not in the slightest. For one thing, there might be a “not” in the middle of one of the recorded documents. Nobody at the USPTO was checking for such things.

No, to arrive at a legal conclusion as to who owns that US patent, somebody, probably an attorney, would need to study the Abstract of Title and the underlying documents, and would probably need to review the rest of the context. Only then could the attorney opine as to who actually owns that US patent.

Returning now to why anybody records anything at the USPTO. The point of recording at the USPTO is basically to put third parties on notice that some document exists. The document might be an assignment, it might be a lien, it might be a UCC security interest. But anyway, the point of the recordation is simply to put the world on notice that some document exists. It is then up to any interested party to review the document and to independently evaluate the document as to its legal import. (There might, after all, turn out to be a “not” in the middle of the document.)

A chief reason for recording is to comply with 35 US Code § 261. 35 US Code § 261 says, among other things:

An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a 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.

The alert reader will appreciate that this language means that a practitioner who has his or her hands on a signed assignment should try very hard to get the assignment recorded at the USPTO within three months of the date upon which the assignment was signed. It is arguably malpractice avoidance to get any assignment recorded well before the expiration of three months from the date that the assignment was signed, because of the language of 35 US Code § 261.

The reality is that any member of the public knows, or should know, that the only way to find out who owns any particular patent is by hiring hiring competent counsel who can then opine as to who owns the patent. Stating this another way, any member of the public knows, or should know, that it would be a mistake simply to look at an Abstract of Title as a way of supposedly finding out who is the owner of a particular patent.

So let’s talk about what would happen if the patent of interest happens to be a continuation or divisional patent. One of the first things that competent counsel would notice is indeed that it is a child case of a parent case. Competent counsel would then among other things order up an Abstract of Title of the parent case. This would then put competent counsel on notice of the assignment that had been recorded with respect to the parent case. Probably the wording of the assignment will turn out to cover the invention in the child case as well. If so, then competent counsel will render an opinion that the owner of the child case is the same as the owner of the parent case.

Note that for this conclusion to work out this way, it is not at all necessary that any recordation have taken place in the child case.

But now let’s change the fact pattern a bit. Let’s assume that the member of the public fails to hire competent counsel. Let’s suppose that the member of the public labors under a completely false assumption that one may learn who owns a US patent by ordering up an Abstract of Title from the USPTO for that US patent. And let’s assume that the particular US patent happens to be a continuation or divisional and the applicant chose to record only in the parent case.

What could happen next is that this member of the public could arrive at an incorrect conclusion as to who owns the US patent.

To the extent that we feel like this is a problem that needs fixing (somebody who should have known enough to hire counsel, but failed to do so), we can avert the problem in advance by … yes … recording the assignment at the USPTO in the child case. Recording the assignment in the child case means that the assignment will turn up in an Abstract of Title in the child case. Putting this in colloquial terms, recording the assignment in the child case means that even people who do not know enough to hire competent counsel will be saved from the mistake of having failed to hire competent counsel, and will be put on notice of assignments in situations like this.

But from this discussion we can see a point of view from which it is quite unnecessary to carry out any recordation in a continuation or divisional case, so long as a satisfactory recordation was carried out in the parent case. After all, any member of the public who is well informed will know to hire counsel when investigating ownership of a patent, and counsel will know to check ownership of a parent case.

When I was first in practice, any recordation of a patent assignment required payment of a government fee to the USPTO. It was thus a natural reaction on the part of a practitioner to try to figure out ways to save money for the client in terms of government fees. So far as recordations of assignments were concerned, in those days what I would do included:

almost never recording any assignment in any continuation or divisional case (so as to avoid having to pay the associated government fee), and
saving up recently signed assignments from various inventors to record them all at once in a batch (so as to pay just one government fee instead of several government fees for several distinct recordations).

But about ten years ago, the USPTO stopped charging any government fee for e-filed patent assignments. So to the extent that a goal of saving money on government fees might once have been a reason for refraining from recording in child cases, that reason no longer applies.

Another factor that cannot be ignored is that if a child recordation is being carried out by a practitioner, then the practitioner will doubtless feel the need to charge a professional fee.

Consider the client whose point of view is that it is unnecessary to record an assignment in a continuation or divisional case, so long as a satisfactory recordation was carried out in the parent case. Such a client would likely feel that if US counsel were to carry out an (otherwise unnecessary) recordation in a child case, followed by sending a bill to the client, this might count as “churning” the file to run up the bill.

Consider on the other hand the client whose point of view is that of a small start-up company, for which in the near future a due diligence inquiry might take place. And suppose the client wants to provide for the possibility that the due diligence person might not understand very much about how to evaluate patent ownership in the US. The way to be on the safe side is to carry out a recordation in every child case, so that an Abstract of Title for any child case will list the assignment. This will minimize the risk that a poorly informed due diligence person will labor under a misimpression as to whether client has fully attended to its paperwork burdens about recording assignments.

Having said all of this, we can recognize that as a general matter it will almost always turn out that a continuation or divisional application will get filed much more than three months after the date that the assignment got signed in the parent case. This means that the recordation date for any recordation of the assignment in the child case will be far later than the three-month date set forth in 35 US Code § 261. So the three-month period set forth in 35 US Code § 261 will simply almost never play a part in the planning process for recordations in child cases.

Suppose a practitioner is sitting on an assignment that was signed more than three months ago and has not yet been recorded at all. Is it still worthwhile to get it recorded? Yes of course! See this blog article .

Suppose a PCT application was filed at a Receiving Office that is not RO/US. Can an assignment of that PCT application be recorded at the USPTO? Yes. See this blog article .

Now we add one more layer to the discussion. Many an assignment will be seen to contain boilerplate that recites that the assignment not only covers some particular patent application, but also covers “any and all continuations and divisionals thereof”. Does the presence or absence of such boilerplate change any of the factors just discussed? Of course one cannot answer this in a general way without seeing the rest of the language of the document. But assuming that the document has language that conveys something like “the invention set forth in the document” then I suggest it probably conveys the invention set forth in the continuation or divisional.

It is completely a separate question to talk about, for example, a continuation-in-part. A CIP contains subject matter not found in the parent. Barring some surprise about the situation, you are going to want to get a new assignment covering that new matter.

What do you think about all of this? Do you think it is important to record an assignment in a continuation or divisional case? Please post a comment below.

Using Continuation Applications Strategically

If you’re not familiar with patents, read this post first: What You Need to Know About Patents

Continuation applications can be used to bolster your patent portfolio and provide additional patent protection for your inventions, thereby increasing the value of your IP asset. With some careful planning, you can use continuation applications to turn your experiences with the patent office, in combination with your knowledge of the prior art, into multiple patents. Continuation applications can also be used to preserve your opportunity to pursue patent protection of certain aspects of your invention that become commercially important after your original patent application has issued as a patent. In addition, continuation applications offer a mechanism to synchronize your patent procurement with your funding and corporate strategies without sacrificing your patent rights.

What is a continuation application?

A patent application often describes multiple inventions or multiple aspects or embodiments of an invention. It is common that a patent issuing from an initial patent application (the “parent application”) may cover only a subset of the disclosed invention(s), aspects or embodiments. Accordingly, before the parent application issues as a patent, one or more further patent applications can be filed to allow the applicant to “continue” pursuing patent coverage for these other disclosed invention(s), aspects or embodiments.

Continuation applications have the same disclosure as the parent application. However, the scope of the claims in a continuation application must not be identical to (i.e., can be broader or narrower than) the claims in the parent patent. For example, claims in a continuation application can be claims that were cancelled from the parent application. Alternatively, you can pursue claims in a continuation application to cover products and/or services that are not claimed in, and appear in the market after, the parent application has issued as a patent. Both the references cited during the examination and the prosecution history of the initial patent application should be considered when drafting claims for a continuation application in order to expedite the examination.

Why should I file a continuation application?

Continuation applications can be filed to pursue additional patent protection that is not obtained in the parent patent. However, in a continuation application, you cannot claim something that is not disclosed in the parent application.

Moreover, continuation applications can also be used to preserve your chance to obtain patent protection for any invention(s), aspects or embodiments disclosed in the parent application that you do not want (or do not have the resource to pursue) now, but that may potentially be commercially valuable in the future.

When can I file a continuation application?

A continuation application can be filed at any point while at least one patent application in the family is pending.

You can file continuation applications in sequence (e.g., as successive generations of continuation applications), in parallel (e.g., as “sibling” continuation applications), or some combination thereof. As long as one case remains pending in the family, the timing of filing is up to you. This creates great flexibility both in terms of both expanding a patent portfolio quickly (e.g., in response to a competitor’s activities) and incurring cost (e.g., deferring filing and prosecution costs until funding is available). In addition, the incremental cost of preparing and filing a continuation application is relatively small compared to the original filing, which leverages your investment in the parent application.

How can I use a continuing application strategically?

Continuation applications can be used to expand a patent portfolio relatively quickly and inexpensively. They can also be used to generate interlocking patent protection that covers a market or technology more completely and is potentially less susceptible to invalidation in litigation. In addition, because the timing for filing continuation applications is very flexible (as long as at least one patent application is pending in the family), they can be filed based on product developments, market evolution, and/or your budget.

For example, one strategy for a start-up could be to file an initial patent application with claims that cover the first iteration of the product and are of relatively modest scope. Because the claims are modest in scope, they may quickly result in a patent issuance, which can be useful in fundraising, among other things. In addition, prosecution of the initial patent application will identify relevant prior art.

Thus, your knowledge of the prosecution history of the first patent application (including the cited prior art) can offer guidance on how to draft claims for and how to prosecute the continuation application.

Divisional Applications and Continuations-in-Part (CIPs)

In addition to continuation applications, the USPTO also permits two other types of continuing patent applications:

A divisional application also has the same disclosure and priority date as the parent application (like a continuation application), but it includes claims that were filed with—and restricted from—the parent application. If the patent office decides that the parent application includes claims directed to multiple inventions, you may be required to choose claims directed to only one invention for the parent application, while claims directed to the other invention(s) can be file in one or more divisional applications.
A continuation-in-part (CIP) includes additional disclosure not in the parent application. Claims in the CIP that are based solely on the disclosure from the parent application will be entitled to the priority date of the parent application, whereas any claims based on the new disclosure or a combination of the new and old disclosure will only be entitled to the filing date of the CIP application.

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Continuation Patent Applications: 10 Reasons You Should Consider Filing

If you’ve filed for patents in any industry – be it biotech, high tech, manufacturing, or another sector altogether – you’ve likely been faced with a decision on whether to file a “continuation” application at the US Patent and Trademark Office (USPTO). In simple terms, a “continuation” application is a new patent application allowing one to pursue additional claims based upon the same description and priority date(s) as a pending “parent” application. Continuation applications are a flexible tool, useful for furthering numerous business objectives.

Here are ten reasons you should consider filing a US continuation patent application as part of your intellectual property strategy:

Multiple Inventions . The USPTO only allows a patent to claim one invention. However, patent applications are often drafted, or determined by the USPTO, to cover multiple inventions. In such cases, the USPTO may issue a “restriction requirement,” dividing up the inventions and asking the applicant to select one for examination. The other inventions can be pursued in a continuation application called a “divisional.”
Broader Claims . Sometimes, patent applications are allowed with claims providing only “narrow” coverage. For example, an applicant may choose to establish an immediate defense by expediting claims to a specific embodiment of an invention, or accepting an Examiner’s offer to allow a subset of the pending claims. In such circumstances, a continuation application is useful follow-up for pursuing “broader” protection. Continuations might also be filed to cover alternative embodiments of the invention or block design-arounds.
Go On the Offensive . Continuation applications can also be used offensively. For example, one can file a continuation with claims covering a competitor’s product as long as it is described in the original parent application.
Creating Uncertainty . In addition to building clear defensive and offensive positions, continuation applications (usually with broad claims) can be used to create uncertainty around the final scope of patent protection and provide a deterrent to competitors.
Evolving Technology . Technology is constantly evolving. A pending continuation application can provide a vehicle for drafting claims covering future advances, as long as they are supported in the original parent application.
Law in Flux . Similar to technology, the law is in a constant state of flux. Legal developments, such as the Supreme Court’s decisions in Myriad and Alice limiting what is eligible for patent protection, have fundamentally altered the patent landscape. Continuation applications provide a tool for addressing legal developments, for example through new claims that work around, or exploit, the changes.
Litigation . Continuation applications are standard tools for patentees engaged in, contemplating, or expecting litigation. For example, a pending continuation application allows you to react to the lawsuit’s outcome – like drafting new claims to avoid newly discovered prior art.
Maximize Value . When a patent might be sold or licensed in the future, maintaining a continuation application can maximize value by allowing the purchaser or licensee to use the continuation to pursue their objectives.
Defer (Decisions, Costs) . Sometimes, it is necessary to defer a decision or cost. Continuation application can be used to delay prosecution, for example, by “restarting” the examination timeline by abandoning a patent application in favor of a continuation application with the same or similar claims.
Keep Your Options Open . A continuation application must be filed before the parent application issues as a patent. Therefore, filing a continuation application can be viewed like purchasing an “options contract” to pursue new, additional claims for any reason in the future.

Savvy applicants will consider continuation applications as a valuable tool throughout patent prosecution, and will draft their applications to include multiple defensive, offensive, fallback, and alternative positions.

Final Tip : You don’t have to wait until your patent application is allowed – use continuations to react to business, scientific, or legal developments at any time.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

Contributors

Kenneth R. Berman
Patrick J. Concannon
Emmanuel D. Filandrianos
Micah W. Miller
Thomas J. Tuytschaevers

MPEP 602.08(b) Inventor Signature and Name

Ninth Edition of the MPEP, Revision 07.2022, Last Revised in February 2023

MPEP Chapter Index Chapter 600 : Parts, Form, and Content of Application 602 : Oaths and Declarations 602.08 : Inventor and Application Information

Previous: §602.08(a) | Next: §602.08(c)

602.08(b) Inventor Signature and Name [R-07.2022]

I. signature requirement - execution of inventor’s oaths or declarations.

United States patent applications which have not been prepared and executed in accordance with the requirements of Title 35 of the United States Code and Title 37 of the Code of Federal Regulations may be abandoned. Although the statute and the rules have been in existence for many years, the Office continues to receive a number of applications which have been improperly executed and/or filed. Since the improper execution and/or filing of patent applications can ultimately result in a loss of rights, it is appropriate to emphasize the importance of proper execution and filing.

There is no requirement that a signature be made in any particular manner. See MPEP § 402.03 . It is permissible for an applicant to use a title of nobility or other title, such as "Dr.", in connection with their signature. The title will not appear in the printed patent. If applicant signs their name using non-English characters, then such a signature will be accepted. If the applicant is unable to write, their mark as affixed to the oath or declaration must be attested to by a witness. In the case of the oath, the notary’s signature to the jurat is sufficient to authenticate the mark. See MPEP § 602 .

Applications filed through the USPTO patent electronic filing system must also contain an oath or declaration personally signed by the inventor.

It is improper for an applicant to sign an oath or declaration which is not attached to or does not identify the application (e.g., a specification and drawings) to which it is directed.

Attached does not necessarily mean that all the papers must be literally fastened. It is sufficient that the specification, including the claims, and the oath or declaration are physically located together at the time of execution. Physical connection is not required. Copies of declarations are encouraged. See MPEP § 502.01 , § 502.02 , § 602, and § 602.05(a) .

An oath or declaration under 37 CFR 1.63 by each actual inventor must be presented. Each inventor need not execute the same oath or declaration. For nonprovisional international design applications, see also 37 CFR 1.1021(d) and 1.1067 . For applications filed before September 16, 2012, each oath or declaration executed by an inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity. Where individual declarations are executed, they must be submitted as individual declarations rather than combined into one declaration (by combining the signature pages).

The provisions of 35 U.S.C. 363 for filing an international application under the Patent Cooperation Treaty (PCT) which designates the United States and thereby has the effect of a regularly filed United States national application, except as provided in pre-AIA 35 U.S.C. 102(e), are somewhat different than the provisions of 35 U.S.C. 111 . The oath or declaration requirements for an international application before the Patent and Trademark Office are set forth in 35 U.S.C. 371(c)(4) and 37 CFR 1.497 .

37 CFR 1.52(c) states that "[i]nterlineation, erasure, cancellation, or other alteration of the application papers may be made before or after the signing of the inventor's oath or declaration referring to those application papers, provided that the statements in the inventor's oath or declaration pursuant to § 1.63 remain applicable to those application papers. A substitute specification ( § 1.125 ) may be required if the application papers do not comply with paragraphs (a) and (b) of this section."

An inventor is not required to re-execute a new inventor’s oath or declaration after alteration of the application papers provided that the changes are minor, for example, correction of typographical errors, grammatical problems, and clarifying sentences. If the changes would amount to the introduction of new matter had the change been made to a filed application, however, then the inventor should execute a new oath or declaration after reviewing the amended application. The rule permits alterations to the specification without the inventor re-executing an oath or declaration only where the statements in the executed declaration remain applicable. Additionally, an inventor must before executing the oath or declaration (i) review and understand the contents of the application; and (ii) be aware of their duty of disclosure. See 37 CFR 1.63(c) . If the changes made to the specification before an application is filed result in substantial alterations to the application, then an inventor may not understand the contents of the application or be aware of their duty to disclose information relating to the substantial alteration.

The signing and execution by the applicant of oaths or declarations in certain continuation or divisional applications may be omitted. See MPEP § 201.06 , § 201.07 , and § 602.05(a) . For the signature on a reply, see MPEP §§ 714.01(a) , 714.01(c) , and 714.01(d) .

II. SIGNATURE REQUIREMENT - EXECUTION OF OATH OR DECLARATION ON BEHALF OF INVENTOR

A. for applications filed on or after september 16, 2012.

The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided under 37 CFR 1.64 . Only inventors can execute an oath or declaration under 37 CFR 1.63 . The applicant for patent may execute a substitute statement under 37 CFR 1.64 in lieu of an oath or declaration under the permitted circumstances. For information on the execution of a substitute statement, see MPEP § 604 .

B. For applications filed before September 16, 2012

The oath or declaration required by pre-AIA 35 U.S.C. 115 must be signed by all of the actual inventors, except under limited circumstances. 35 U.S.C. 116 provides that joint inventors can sign on behalf of an inventor who cannot be reached or refuses to join. See MPEP § 409.03(a) . 35 U.S.C. 117 provides that the legal representative of a deceased or incapacitated inventor can sign on behalf of the inventor. If a legal representative executes an oath or declaration on behalf of a deceased inventor, the legal representative must state that the person is a legal representative and provide the citizenship, residence, and mailing address of the legal representative. See pre-AIA 37 CFR 1.64 and MPEP § 409.01(b) . Pre-AIA 35 U.S.C. 118 provides that a party with proprietary interest in the invention claimed in an application can sign on behalf of the inventor, if the inventor cannot be reached or refuses to join in the filing of the application. See MPEP § 409.03(b) and § 409.03(f) . The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so. Opinion of Hon. Edward Bates, 10 Op. Atty. Gen. 137 (1861). See also Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976) and In re Striker, 182 USPQ 507 (PTO Solicitor 1973) (In each case, an oath or declaration signed by the attorney on behalf of the inventor was defective because the attorney did not have a proprietary interest in the invention.).

III. INVENTOR’S NAME

For nonprovisional applications filed on or after September 16, 2012, 37 CFR 1.63 requires the identification of the inventor by his or her legal name. 37 CFR 1.63(a)(1) simplifies the requirement for the inventor’s name to be his or her name and no longer refers to a family or given name. The requirement for an inventor’s legal name is sufficient, given that individuals do not always have both a family name and a given name, or have varying understandings of what a "given" name requires.

For nonprovisional applications filed before September 16, 2012, pre-AIA 37 CFR 1.63(a)(2) requires that each inventor be identified by full name, including the family name, and at least one given name without abbreviation together with any other given name or initial in the oath or declaration. For example, if the applicant's full name is "John Paul Doe," either "John P. Doe" or "J. Paul Doe" is acceptable. A situation may arise where an inventor’s full given name is a singular letter, or is a plurality of singular letters. For example, an inventor’s full given name may be "J. Doe" or "J.P. Doe," i.e., the "J" and the "P" are not initials. In such a situation, identifying the inventor by his or her family name and the singular letter(s) is acceptable, since that is the inventor’s full given name. In order to avoid an objection under 37 CFR 1.63(a)(2) , applicant should point out in the oath or declaration that the singular lettering set forth is the inventor’s given name. A statement to this effect, accompanying the filing of the oath or declaration, will also be acceptable.

A. Correction of Name

In an application where the name is typewritten with a middle name or initial, but the signature does not contain such middle name or initial, the typewritten version of the name will be used as the inventor’s name for the purposes of the application and any patent that may issue from the application. No objection should be made in this instance, since the inventor’s signature may differ from their legal name. Any request to have the name of the inventor or a joint inventor in a nonprovisional application corrected or updated, including correction of a typographical or transliteration error in the spelling of an inventor’s name, must be by way of a request under 37 CFR 1.48(f) . A request under 37 CFR 1.48(f) must include (1) an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by their legal name, and (2) the processing fee set forth in 37 CFR 1.17(i) . Requests under 37 CFR 1.48(f) filed on or after September 16, 2012, are treated by the Office of Patent Application Processing (OPAP). If the request complies with 37 CFR 1.48(f) , OPAP will correct the Office records and send a corrected filing receipt.

If the error in the inventor’s name is not detected until after the payment of the issue fee, because amendments are not permitted after the payment of the issue fee, either (A) the application must be withdrawn from issue under 37 CFR 1.313(c)(2) and a request under 37 CFR 1.48(f) to correct the inventor’s name submitted with a request for continued examination (RCE) under 37 CFR 1.114 , or (B) a certificate of correction, along with a petition under 37 CFR 1.182 , must be filed after the patent issues requesting correction of inventor’s name.

Any request to correct or change inventorship, or correct or update the name of the inventor or a joint inventor, in a provisional application must be made pursuant to 37 CFR 1.48(d) . 37 CFR 1.48(d) requires a request signed by a party set forth in 37 CFR 1.33(b) , that identifies each inventor by their legal name, and the processing fee set forth in 37 CFR 1.17(q) . OPAP treats requests under 37 CFR 1.48(d) and will correct the Office records and send a corrected filing receipt if the request complies with 37 CFR 1.48(d) .

B. Change of Name

When an inventor’s name has been changed after the nonprovisional application has been filed and the inventor desires to change their name on the application, they must submit a request under 37 CFR 1.48(f) , including an application data sheet in accordance with 37 CFR 1.76 , that identifies each inventor by their legal name and the processing fee set forth in 37 CFR 1.17(i) . The corrected application data sheet must identify the information being changed as required by 37 CFR 1.76(c)(2) . The Office of Patent Application Processing (OPAP) treats requests under 37 CFR 1.48(f) and will correct the Office records and send a corrected filing receipt if the request complies with 37 CFR 1.48(f) .Since amendments are not permitted after the payment of the issue fee ( 37 CFR 1.312 ), a request under 37 CFR 1.48(f) to change the name of the inventor cannot be granted if filed after the payment of the issue fee.

If the application is assigned, applicant should submit a corrected assignment document along with a cover sheet and the recording fee as set forth in 37 CFR 1.21(h) to the Assignment Division for a change in the assignment record.

C. Order of Joint Inventor Names

For applications filed on or after September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the names appear in the application data sheet if submitted before or with the inventor’s oath or declaration. For applications filed before September 16, 2012, the order of names of joint patentees in the heading of the patent is taken from the order in which the typewritten names appear in the original oath or declaration. Care should therefore be exercised in selecting the preferred order of the typewritten names of the joint inventors, before filing, as requests for subsequent shifting of the names would entail changing numerous records in the Office.

Because the particular order in which the names appear is of no consequence insofar as the legal rights of the joint inventors are concerned, no changes will be made except when a request under 37 CFR 1.48(f) (filed on or after September 16, 2012) is granted. It is suggested that all typewritten and signed names appearing in the application papers should be in the same order as the typewritten names in the oath or declaration. The Office of Patent Application Processing (OPAP) treats requests under 37 CFR 1.48(f) and if the request is granted OPAP will change the order of the names in the Office computer records and send a corrected filing receipt. Because a change to the order of names of joint inventors is an amendment to the application and amendments are not permitted after the payment of the issue fee ( 37 CFR 1.312 ), a request under 37 CFR 1.48(f) to change the order of the names of joint inventors cannot be granted if filed after the payment of the issue fee.

In those instances where the joint inventors file separate oaths or declarations in an application filed before September 16, 2012, the order of names is taken from the order in which the several oaths or declarations appear in the application papers unless a different order is requested at the time of filing or a request under 37 CFR 1.48(f) is granted. For applications filed on or after September 16, 2012, the order of inventors is taken from an application data sheet in accordance with 37 CFR 1.76 if filed before or with the inventor’s oath or declaration unless a request under 37 CFR 1.48(f) is granted. A request under 37 CFR 1.48(f) may be filed on or after September 16, 2012 to change the order of the names of joint inventors in a nonprovisional application regardless of the filing date of the application.

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Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights. Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed. This article summarizes the requirements for filing and prosecuting a U.S. patent application filed post-America Invents Act (AIA) without a patent assignment and identifies pitfalls when establishing ownership of patent rights for patent prosecution. Inventors being unavailable may also complicate obtaining the declarations required for U.S. patent prosecution, but solutions are available as we previously discussed here .

Need for an Assignment

For a patent to issue to an assignee, the United States Patent and Trademark Office (the “USPTO”) must be made formally aware of the assignment so that the assignee is recognized as the patent applicant. Filing an Application Data Sheet (ADS) for a patent application identifying the assignee as the applicant provides informal notice to the USPTO. MPEP § 301 discusses ownership/assignability of patents and applications, including formal assignment recordation at the USPTO. Recording an assignment may be necessary to permit the assignee to “take action” in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1.46 ; MPEP §§ 301 , 302 , 605 . In other words, assignees may face obstacles prosecuting a patent without an executed assignment. The assignment(s) must transfer the entirety of patent rights from each of the inventors to the assignee, e.g., corporation, partnership, university, government entity, etc. There can be multiple assignees if different inventors assign their rights to different assignees, a situation that results in two or more partial assignees that must each be identified to the USPTO as an applicant. MPEP § 301 .

As only one patent assignment is required per inventor per patent application, subsequent applications claiming priority may often rely on an earlier assignment (depending on the assignment’s particular language). If new subject matter is introduced in the application being filed, such as in a continuation-in-part application, another assignment may be required.

Persons who may file a Patent Application without an Assignment

Fortunately, applicants may procure a patent even if an inventor is not available to sign an assignment before application filing or during prosecution before payment of the issue fee.

A person to whom the inventor is under the obligation to assign the invention may file a patent application and be identified as the applicant. An assignment can then be subsequently executed and the USPTO notified as discussed above. Alternatively, other documentary evidence of ownership, such as an employment agreement, invention disclosure form, or other documentation, can be recorded with the USPTO in lieu of a signed assignment document. 37 CFR 1.46 . Employment agreements may contain language stating that the inventor assigns all rights, title, and interests in any invention developed while employed by the employer. In some instances, the employment agreement may affirmatively state that the employee is under an obligation to assign the invention to the employer. An invention disclosure form may contain language stating that the inventor’s signature on the form acknowledges the inventor’s assignment of and/or obligation to assign any rights, title, and interest in the invention disclosure to the employer. If the invention disclosure form includes the inventor’s signature, this may be sufficient evidence that the employer is an obligated assignee. 37 C.F.R. 1.46(b)(1) . It is important to examine any documentary evidence of ownership before recordation to identify any information (e.g., industry trend language, discussion of prior art, personal information of an employee, etc.) that may require redaction before recordation and/or may make public recording of the documentary evidence an undesirable option for the applicant.

Also, a person who shows sufficient proprietary interest in the matter may file a patent application and be identified as the applicant upon showing that such an action is appropriate, with the resulting patent being issuable in the applicant’s name. 37 CFR 1.46 . If filing a national stage application, the applicant must have been identified in the international stage of the international application or as the applicant in the publication of the international registration.

Showing Sufficient Proprietary Interest or Obligation to Assign

As provided in 37 CFR 1.46(b)(2) , “[i]f the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (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.” Additionally, as stated in MPEP § 409.05 , “[t]he ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.”

Showing sufficient proprietary interest requires “proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.” 37 CFR 1.46(a) ; 37 CFR 1.424 . Showing sufficient proprietary interest is discussed in MPEP § 409.05 and may be established in various ways depending on the circumstances. MPEP § 409.05 states that

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant. The facts in support of any conclusion that a court would award title to the 37 CFR 1.46 applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

Remember that an applicant as a person who otherwise shows sufficient proprietary interest in the matter must submit the required petition, fee, and information prior to paying the issue fee as set forth in 37 CFR 1.46 .

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights even without execution of a signed assignment by an inventor. Before doing so, however, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

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Successful Inventing: Product development

Are you new to the invention process? If so, register today for the fourth event in the Successful Inventing series, presented by the United States Patent and Trademark Office and the Licensing Executives Society - Silicon Valley Chapter. This event will be hybrid, so you can attend virtually or in person at the USPTO's Silicon Valley Regional Office in San Jose, California.

During the fourth session, focused on product development, we will address the following topics:

Product design vs. product engineering
Design it, develop a complete product, sell it before you make it, obsolete the competition
Determine what people want, before they know they want it
What is your market advantage?

The Successful Inventing series covers various aspects of the invention process. Each biweekly session is held virtually. Participants will hear experts discuss topics that include intellectual property, product development, licensing, funding, and more.

A question-and-answer session will follow the presentation. Please send your questions in advance or during the event to [email protected] .

For more information, please email [email protected] .

Accessibility accommodation

If you are an individual with a disability and would like to request a reasonable accommodation, please submit your request to the contact information listed above.

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IMAGES

USPTO Patent Application Initiatives Timeline
Uspto assignment database
Resources available to support transition to Assignment Center
Continuation Application
Fillable Online njit Revised Continuation Application with Self-Audit
Patent Prosecution Tip: File Your Continuation and Divisional

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DPR3704 Assignment 01 Class 3 25 02 2024
Java Assignment questions Continuation
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Math 101 workbook assignment continuation for 100level

COMMENTS

306-Assignment of Division, Continuation, Substitute, and Continuation
306.01 Assignment of an Application Claiming the Benefits of a Provisional Application [R-07.2015] If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later ...
1895-A Continuation, Divisional, or Continuation- in- Part Application
For example, the intermediate international application file may contain the specific reference in a separate paper filed after publication but during the pendency of the international application, or a decision granting a petition to accept a late benefit claim may be present in the application file. See MPEP § 211.04. The examiner may ...
A Brief Guide to Subsequent Patent Applications in the United States
An applicant may file a continuation, divisional, or continuation-in-part (CIP) application of a prior application, all of which the U.S. Patent and Trademark Office ("USPTO") characterizes as ...
MPEP 201.07: Continuation Application, October 2023 (BitLaw)
An application claiming the benefit of a provisional application under 35 U.S.C. 119 (e) should not be called a "continuation" of the provisional application. M.P.E.P. Section 201.07: Continuation Application. Taken from the 9th Edition of the MPEP, Revision 07.2022, (Last Revised February 2023). Updated in BitLaw in October 2023.
MPEP 306: Assignment of Division, Continuation, Substitute ...
306 Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application [R-07.2015] In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee ...
Implications of Filing Subsequent Patent Applications in the United
A continuation application and a divisional application each still require most of what a 35 USC §111 application requires, although in a continuation and divisional applications the USPTO ...
Continuing patent application
Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application.A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part.Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent ...
Patent Assignment: How to Transfer Ownership of a Patent
A patent assignment is an agreement where one entity (the "assignor") transfers all or part of their right, title and interest in a patent or application to another entity (the "assignee"). In simpler terms, the assignee receives the original owner's interest and gains the exclusive rights to pursue patent protection (through filing ...
How to File a Continuation Application: When is the continuation
Need to file a patent continuation application? Contact Vic at [email protected] or call (949) ... After payment of the issue fee, the USPTO will send an Issue Notification setting forth the exact date on which the patent will be granted, which will always be a Tuesday. Unless it's a holiday, the Monday before the issue date will typically be ...
Patent Continuation: A Comprehensive Guide to Evolving Your Patent
A continuation application gives the patent holder the chance to leverage this hindsight to tack on new claims present in the original application that competitors may try to recreate later. ... which may be restricted to different applications by the USPTO. A divisional application retains the filing date and priority of the original ...
Is it important to record assignments in divisional and continuation
Now assume that a continuation or divisional application gets filed pursuant to 35 USC § 120 (in this discussion I do not mean to assume a continuation-in-part). The question posed is: ... A first thing to recall is why anybody records any assignment at the USPTO. We need to remind ourselves that it is not the recording of an assignment that ...
Using Continuation Applications Strategically
In addition to continuation applications, the USPTO also permits two other types of continuing patent applications: A divisional application also has the same disclosure and priority date as the parent application (like a continuation application), but it includes claims that were filed with—and restricted from—the parent application.
Continuation Patent Applications: 10 Reasons You Should Consider Filing
Maximize Value. When a patent might be sold or licensed in the future, maintaining a continuation application can maximize value by allowing the purchaser or licensee to use the continuation to pursue their objectives. Defer (Decisions, Costs). Sometimes, it is necessary to defer a decision or cost. Continuation application can be used to delay ...
PDF New USPTO Rules for Continuation Applications and Claim ...
August 29, 2007. On August 21, 2007, the United States Patent and Trademark Office (USPTO) published final rules regarding continuation and claim examination practice. Depending on the circumstances of your patent portfolio, these final rules will affect U.S. patent prosecution practice. Though the rules go into effect on November 1, 2007 ...
National Stage Entry or a Bypass Continuation Patents?
They can file what is referred to as a U.S. national stage entry of the PCT application under 35 USC §371, or a bypass continuation under 35 USC §111 claiming priority to the PCT application.
Full Disclosure
The assignment for a parent patent/application may be recorded for a divisional or continuation application, but a continuation-in-part (CIP) application requires a new assignment conveying rights in the CIP. ... When an assignment is recorded, the USPTO simply puts the information on the public record—the USPTO does not make a determination ...
PDF FILING OF A U.S. PATENT APPLICATION Justin J ...
(MPEP 201.06) • Continuation-in-part ("CIP") of - An application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application. (MPEP 201.08)
Procuring U.S. Patents without a Signed Assignment of Patent Rights
Recording an assignment may be necessary to permit the assignee to "take action" in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1.46; MPEP §§ 301, 302, 605 . In other words, assignees may face obstacles prosecuting a patent without an executed assignment.
MPEP 602.08(b)
The signing and execution by the applicant of oaths or declarations in certain continuation or divisional applications may be omitted. See MPEP § 201.06, § 201.07, and § 602.05(a). For the signature on a reply, see MPEP §§ 714.01(a), 714.01(c), and 714.01(d).
US Patents Without a Signed Assignment of Patent Rights
Recording an assignment may be necessary to permit the assignee to "take action" in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1. ...
PDF MPEP
Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application 306 Assignment of an Application Claiming the Benefits of a Pro visional Application 306.01 307 Issue to Non-Applicant Assignee 308 Issue to Applicant Restrictions Upon Employees of U.S. Patent and Trademark Office 309 Government License ...
USPTO publishes Request for Comments regarding the impact of AI on
Check application status. Check patent application status with Patent Center. Fees and payment. Pay maintenance fees and learn more about filing fees and other payments. Patent Trial & Appeal Board. Resolve disputes regarding patents with PTAB. Global Dossier. View international patent filings. More tools & links
New agreement with Namibia will help ensure the protection and
Check patent application status with Patent Center. ... Search recorded assignment and record ownership changes. MPEP. Classification. Guides and manuals. Trademarks. Trademark search. ... "This new agreement marks the continuation of the USPTO's engagement in Africa, building on existing work with Uganda and the African Regional ...
USPTO announces National Strategy for Inclusive Innovation
WASHINGTON— Today at an event on Capitol Hill, the U.S. Patent and Trademark Office (USPTO) is announcing, in conjunction with the agency's work with the Council for Inclusive Innovation (CI 2), a new National Strategy for Inclusive Innovation.The Strategy aims to grow the economy, create quality jobs, and address global challenges by increasing participation in STEM, inventorship, and ...
Successful Inventing: Protection for your innovation
Check application status. Check patent application status with Patent Center. Fees and payment. Pay maintenance fees and learn more about filing fees and other payments. Patent Trial & Appeal Board. Resolve disputes regarding patents with PTAB. Global Dossier. View international patent filings. More tools & links
USPTO updates rules in view of revision to WIPO Standard ST.26
The United States Patent and Trademark Office (USPTO) has issued a final rule updating its regulations concerning patent application disclosures containing nucleotide and/or amino acid sequences. The updated regulations reflect the adoption by the World Intellectual Property Organization (WIPO) of version 1.7 of its Standard ST.26.
SOaR presents: How to use Patent Public Search tool to search like an
Add to Calendar2024-05-29 13:00:002024-05-29 13:00:00SOaR presents: How to use Patent Public Search tool to search like an examiner Are you interested in learning how to use the Patent Public Search tool (PPUBS) to search like an examiner? If so, Stakeholder Offerings and Resources (SOaR) has the training for you. On Wednesday, May 29, at 1 p.m. ET, SOaR will provide virtual training on how to ...
Successful Inventing: Product development
Add to Calendar2024-07-10 14:00:002024-07-10 14:00:00Successful Inventing: Product development Are you new to the invention process? If so, register today for the fourth event in the Successful Inventing series, presented by the United States Patent and Trademark Office and the Licensing Executives Society - Silicon Valley Chapter.