Inventorship is always given to the individual who invented the subject matter of the patent. The inventor(s) may sell or transfer the rights to the invention via an assignment. This chapter discusses several topics pertaining to assignments; including the recording and establishing of the assignment by the PTO.

Ownership and assignment are tested on the patent bar exam to a small extent. You may expect a question or two relating to the details of recording assignments. Pay close attention to the section dealing with issuing a patent to an assignee and the proper signatures involved. The PTO loves to ask questions referring to who may or may not sign a particular type of document.

Ownership vs. Inventorship

Important Definitions:
Ownership:
ownership belongs to whomever has the controlling interest in a patent or a patent application:
patents may be bought and sold like property by the inventors
owners can either be corporations or individuals

an owner can control a patent's prosecution and may even exclude the inventor from gaining access to the patent file
if ownership is under dispute, a court interpretation may be required to decide who the actual owner is

Inventorship:
inventorship is a legal definition of the true inventors of a patent:
the Patent Office can determine inventorship by viewing what is stated on the application it must be a person or persons; not a corporation or other entity

inventorship can never be changed or transferred over to anyone else
the inventor has to be the actual inventor, someone who just works at the place it was invented at is not classified as the inventor
inventors may apply for a patent jointly even if they did not make the same type, or amount of contribution, and did not each make a contribution to the subject matter of every claim of the patent

if inventorship is proven wrong, a patent is invalid unless the correct inventor(s) are identified

if all patent rights are assigned, the inventor(s) may lose all privileges to the patent

At a glance
Ownership vs. Inventorship

Ownership:
can be changed
can be a company
is determined by courts

Inventorship:
is a legal definition
must be a person
is determined by the Patent Office

301 Ownership/Assignability of patents and applications
Patents have the attributes of personal property. They may be bought and sold.

joint owners:
unless otherwise stated in a written agreement, joint owners of a patent may make, use, offer to sell or sell the patented invention within the U.S. or import the patented invention to the U.S. without consent of and without accounting to the other owners
in the case of joint owners any inventor can carry out acts that would otherwise infringe on the patent so long as there is no internal agreement between the parties

assignment:
transfer by a party of all or part of its right, title and interest in a patent or patent application
multiple assignees
if held by more than one assignee, each partial assignee must provide a submission in order to take action regarding the patent
if there is a conflict between assignees, the Special Program Law Office will resolve the issue(s)

§ 1.12 Assignment records open to public inspection.
(a) (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 the applicant or applicant's assignee or patent attorney or patent agent 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 the applicant or applicant's assignee or attorney or agent 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.

For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation.

assignment documents relating to patents and published patent applications are open to public inspection

assignment records relating to original or reissue patents for assignments recorded on or after May 1, 1957 are all open to public inspection at the PTO

records of assignments of patents recorded before May 1, 1957 can be obtained from the NARA (National Archives and Records Administration)
these are all also open to the public

assignment records for any pending or abandoned patent application are not open to the public:
for these, written authority from the assignee, patent attorney/agent or the applicant must be gained
a petition with the appropriate fee must be sent in

302 Recording of assignment documents
Recording assignments to the PTO is voluntary. However, it is highly recommended because it will serve as proof in the event problems arise in the future.

in order to be recordable, a document must:
include a cover sheet with the necessary information
include the name of each inventor
include the required fee
be in English
be identified by an application number or patent number and filing date
be on onesided paper

more than one patent or application may be listed in a single assignment

types of descriptions of the interest or transaction that are recorded include:
assignment
security agreement
merger
change of name
license
foreclosure
lien
contract

Cover sheets:
assignments of applications and patents with a complete cover sheet will be recorded in the Office
a cover sheet must go along with each document submitted to the Office for recording

cover sheets must include the:
name of the person requesting information
name and address of party receiving the interest
description of interest conveyed or the transaction recorded
identification of interests by application or patent number
name and address for mailing the request
date the document was executed
signature of the person who submitted the document
must have the number of applications or patents identified in the cover sheet

for cover sheets seeking to record a government interest:
the document should be recorded on a Government Register, or a Secrecy Register if appropriate

requirements for documents and cover sheets:
only use one side
paper should be flexible, strong, white, nonshiny, durable and no larger than 8.5 x 14 inches with a 1 inch margin on all sides

a legal assignment does not need to be in English:
the office will accept and record nonEnglish documents if they are translated and signed by the translator

Patent number:
to identify a particular patent or patent application, a patent number is used:
assignments relating to a national patent application must use an application number (series code and series number)
an assignment relating to an international patent application must have an international number

Facsimile's:
anything sent by fax machine must have:
an identified application or patent number
a cover sheet for each transaction
payment of recordation fee by PTO deposit account

documents that cannot be sent via fax machine include:
assignments for newly filed patent applications
documents with two or more cover sheets requests for corrections to already recorded documents
requests for "at cost" recordation services
payments by credit card

the date of receipt for a fax document is the date the complete transmission is received in the Office

if the fax document is not recordable/readable, the entire document will be sent back via fax
therefore, the customer must have a dedicated line for the fax machine

Assignment and future applications:
assignments recorded for the original application will transfer over to future applications, for example:
provisional to nonprovisional
parent to continuation and divisional
all subject matter is derived from the parent
a new assignment is necessary if a continuationinpart application is filed since there will be new material presented
a new assignment is necessary if any new subject matter is introduced in a provisional application

Importance of recording:
the second buyer of a patent may be awarded the title to the patent over a first buyer when:
the first buyer fails to record the assignment within three months prior to the second assignment, or whichever is later
the second buyer did not know of the first sale

if an individual inherits a patent that was sold, but the sale is not officially recorded, that individual does not own the patent because it was given without consideration (as a gift)
assignments should always be recorded

306 Assignment of division, continuation, substitute, and continuationinpart in relation to parent application

§ 3.81 Issue of patent to assignee.
(a) With payment of the issue fee: An application may issue in the name of the assignee consistent with the application's assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office. If the assignment has not been previously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.
(b) After payment of the issue fee: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a certificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17 (i) of this chapter.
(c) Partial assignees.
(1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest in the application, the patent may issue in the names of the assignee and the inventor.
(2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

§ 3.73 Establishing right of assignee to take action.
(a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b) (1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee
(e.g., copy of an executed assignment). The documents submitted to establish
ownership may be required to be recorded pursuant to § 3.11 in the assignment
records of the Office as a condition to permitting the assignee to take action in a
matter pending before the Office; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
(2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.

The official assignment records will only reflect an assignment for a divisional or continuing application if a request for recordation is in compliance. New assignment papers must be recorded for nonprovisional applications that claim new material not included in the previously filed provisional application

307 Issue to assignee
When an application is allowed to issue, it will become a patent. An application without an assignee will issue to the inventor(s), while one with an assignee(s) will issue to the assignee. This process is discussed in this section.

§ 3.81 Issue of patent to assignee.
(a) With payment of the issue fee: An application may issue in the name(s) of the assignee(s) consistent with the application's assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office. If the assignment has not been previously recorded, the request should be accompanied by the assignment and either a direction to record the assignment in the Office pursuant to § 3.28, or a statement under § 3.73(b).
(b) After payment of the issue fee: An application may issue in the name(s) of the assignee(s) consistent with the application's assignment where a request for such issuance along with the processing fee set forth in § 1.17(i) of this chapter is submitted after the date of payment of the issue fee, but prior to issuance of the patent, provided the assignment has been previously recorded in the Office. If the assignment has not been previously recorded, the request should be accompanied by the assignment and either a direction to record the assignment in the Office pursuant to § 3.28, or a statement under § 3.73(b).
(c) Partial assignees.
(1) If one or more assignee(s) together with one or more inventor(s) hold the entire right, title, and interest in the application, the patent may issue in the names of the assignee(s) and the inventor(s).
(2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.

the assignee will be considered appropriately filed in instances where an assignee has been named by the time the issue fee is paid

if the issue fee has been paid before the assignee is named, then the assignee will have to petition under 37 C.F.R. 3.81

only the first appearing name of an assignee will appear on a patent, the other names will be listed on the Issue Fee Transmittal form (they will still maintain joint rights to the patent, they just aren't listed on the patent to conserve space)
if an assignee's name is on the Issue Fee Transmittal form, the patent will issue to the assignee even if the assignee did not help with prosecuting the application

Incorrect assignment in issued patent:
If the wrong assignee is listed on a patent, the assignment may be corrected by filing a Certificate of correction.

§ 1.323 Certificate of correction of applicant's mistake.
The Office may issue a certificate of correction under the conditions specified in 35 U.S.C. 255 at the request of the patentee or the patentee's assignee, upon payment of the fee set forth in § 1.20(a). If the request relates to a patent involved in an interference, the request must comply with the requirements of this section and be accompanied by a motion under § 1.635.

a Certificate of correction must be directed to the Office of Petitions and should include:
a petition fee 37 C.F.R. 1.17(h)
a request to waive 37 C.F.R. 3.81(a) that allows for the correct name of the assignee
proof that the mistake was an accident
a copy of a Notice of Recordation of Assignment Document

incorrect inventorship in an issued patent may be corrected under 37 C.F.R. 1.48(a) or (b) if it meets the required conditions (MPEP 200)

inventorship of an issued patent may also be properly corrected through 37 C.F.R. 1.324 as listed below

§ 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his or her part, the Commissioner may, on petition, or on order of a court before which such matter is called in question, issue a certificate naming only the actual inventor or inventors. A petition to correct inventorship of a patent involved in an interference must comply with the requirements of this section and must be accompanied by a motion under § 1.634.
(b) Any petition pursuant to paragraph (a) of this section must be accompanied by:
(1) Where one or more persons are being added, a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on his or her part;
(2) A statement from the current named inventors who have not submitted a statement under paragraph (b)(1) of this section either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change;
(3) A statement from all assignees of the parties submitting a statement under paragraphs (b)(1) and (b)(2) of this section agreeing to the change of inventorship in the patent, which statement must comply with the requirements of § 3.73(b) of this chapter; and
(4) The fee set forth in § 1.20(b).
(c) For correction of inventorship in an application see §§ 1.48 and 1.497, and in an interference see § 1.634.

315 Indexing against a recorded certificate
to record a document with respect to other patents or applications (such as the filing of an additional patent related to the first disclosure), the document must:
be submitted to the Assignment Division
be an original document or copy
include a cover sheet
include a fee
the date of the recording of the document is date the document meets all the requirements for recording and is filed in the Office

317 Handling of documents in the assignment division
assignments which are made conditionally (i.e., an agreement to get married) are regarded as absolute assignments for Office purposes:
the Office does not determine whether such conditions have been fulfilled
since the Office will not determine whether a condition has been fulfilled, the Office will treat the submission of such assignment for recordation as signifying that the act or event has occurred
the recording of a document is not a determination by the Office of the validity of the document or the effect that the document has on the title to an application or patent

323 Procedures for correcting errors in recorded assignment document
if there is an error in the recorded assignment document, the PTO will need a "corrective document" to correct it:
an original assignment document with the correction (initialed and dated) will suffice
this will require a new Recordation Form Cover Sheet

324 Establishing right of assignee to take action
The inventor will always be considered the owner of the patent rights unless there is a recorded assignment.

§ 3.73 Establishing right of assignee to take action.
(a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b)
(1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Commissioner. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
(c) For patent matters only:
(1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
(2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.

the assignee must establish ownership to the satisfaction of the Commissioner, which is usually by:
submitting evidence that the owner gave the patent rights to assignees specifying where that evidence is recorded at the Office

if the assignee wants to file a continuing or divisional application, the appropriate papers will
either:
refer to 37 C.F.R. 3.73(b) in the parent application
contain a copy of the statement referring to the assignment in the parent application, or
contain a newly executed statement

Establishing ownership:
ownership will need to be established when:
an assignee signs a request for prosecuting the application if ownership has been changed
an assignee signs a request for the status of application or wants to allow someone to inspect the application
the application becomes abandoned
a legal representative is appointed
a terminal disclaimer is signed
a reissue application is filed
correction of inventor occurs
an application under 37 C.F.R. 1.47(b) is filed
an Issue Fee Transmittal form is signed
a reply to an Office Action is signed

ownership will not need to be established when:
there is an assignee for a continued prosecution application where ownership has not changed
signing a small entity statement
signing a statement of common ownership between two inventions
signing a NASA or DOE property rights statement
signing a certificate under 37 C.F.R. 1.8
filing a request for reexamination of a patent