[Federal Register: June 27, 2003 (Volume 68, Number 124)]
[Proposed Rules]
[Page 38258-38266]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr27jn03-32]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 3
[Docket No.: 2003-P-019]
RIN 0651-AB63
Clarification of Power of Attorney Practice, and Revisions to
Assignment Rules
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rule making.
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SUMMARY: The United States Patent and Trademark Office (Office) is
proposing changes to the rules of practice to allow for more efficient
processing of powers of attorney and assignment documents within the
Office. For example, the Office proposes to require applicants to use
the Office's Customer Number practice if a power of attorney is to be
given to more than ten registered patent practitioners. In addition,
the Office proposes to discontinue the current Office practice of
returning patent and trademark assignment documents submitted by mail
for recording in the assignment database, and to dispose of the
documents according to a record retention schedule after scanning.
DATES: To be ensured of consideration, written comments must be
received on or before August 26, 2003. No public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail over the Internet
addressed to: AB63.comments@uspto.gov. Comments may also be submitted
by mail addressed to: Mail Stop Comments--Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or by facsimile to
(703) 872-9411, marked to the attention of Karin Ferriter. Although
comments may be submitted by mail or facsimile, the Office prefers to
receive comments via the Internet. If comments are submitted by mail,
the Office would prefer that the comments be submitted on a DOS
formatted 3\1/2\-inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Office
of Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy, located at Room 3D65 of Crystal Plaza 3/4,
2201 South Clark Place, Arlington, Virginia, and will be available
through anonymous file transfer protocol (ftp) via the Internet
(address: http://www.uspto.gov). Since comments will be made available
for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: Karin Ferriter ((703) 306-3159)
(Office of the Deputy Commissioner for Patent Examination Policy, Mary
Hannon ((703) 308-8910, ext. 137) (Office of the Commissioner for
Trademarks), or Robert J. Spar ((703) 308-5107) (Office of the Deputy
Commissioner for Patent Examination Policy), directly by phone, or by
facsimile to (703) 872-9411, or by mail addressed to: Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450.
SUPPLEMENTARY INFORMATION: The rules pertaining to access to assignment
documents and other records related to assignments are proposed to be
clarified. In addition, the rules pertaining to power of attorney are
proposed to be revised to reflect Customer Number practice, a practice
wherein an applicant or an assignee of the entire interest in an
application can give power of attorney to a list of registered patent
practitioners associated with a Customer Number. See Manual of Patent
Examining Procedure (8th ed. 2001) (Rev. 1, Feb. 2003) (MPEP), Section
403 for a description of Customer Number practice. The rules are also
proposed to be revised to explain the requirements of a power of
attorney and to limit the number of attorneys who may be given a power
of attorney without using Customer Number practice. Furthermore, the
rules are proposed to be amended to discontinue the ``associate'' power
of attorney practice, to clarify the procedures related to revocation
of power of attorney, and to clarify how a registered practitioner may
sign a document in a representative capacity.
Documents affecting the title to a patent or trademark property
(e.g., assignments, or security interests) are currently recorded in
the Office's assignment database, upon submission of the document with
the appropriate cover sheet and the fee required by 35 U.S.C. 41(d)(1).
In addition, Government Interests are recorded, upon submission of the
document, as required by Executive Order 9234 of February 18, 1944 (9
FR 1959, 3 CFR 1943-1948 Comp., p. 303). Since 1995, assignment
documents have been recorded in the Office's Assignment database
without stamping or otherwise marking the document that was submitted
for recordation. The automated system that receives documents for
recordation assigns the reel and frame number to the document and
places the recordation stampings on the images that are stored in the
automated system.
Currently, the Office returns an assignment document only if it was
mailed to the Office. The Office does not return assignment documents
that are submitted by facsimile or electronically. When the Office
returns the document submitted by mail for recordation, the document
that is returned is exactly the same as the document that was
submitted, except that assignment documents submitted with an
application may also contain a bar code for the application number and
a mail room date stamp. The Office does not stamp or otherwise indicate
the reel and frame number on the actual document that is submitted for
recordation. See Facsimile Submission of Assignment Documents is Now
Available to PTO Customers posted on the Office's Internet Web site at:
http://www.uspto.gov/web/offices/ac/ido/opr/ptasfax.pdf (Jan. 5, 2000),
and Update on Facsimile Submission of Assignment Documents to the
USPTO, 1237 Off. Gaz. Pat. Office 81 (Aug. 15, 2000). The Office's
electronic filing system for patent applications is discussed at Legal
Framework for the Use of the Electronic Filing System, 1263 Off. Gaz.
Pat. Office 60, 61 (Oct. 8, 2002).
As part of an effort to transform the Office into a quality-
focused, highly productive, responsive organization supporting a
market-driven intellectual property system, the Office is migrating to
electronic files from paper files. See Changes To Implement Electronic
Maintenance of Official Patent Application Record, 68 FR 14365 (Mar.
25, 2003), 1269 Off. Gaz. Pat. Office 166 (Apr. 22, 2003) (proposed
rule). As part
[[Page 38259]]
of this migration, all papers received in the Office on paper will be
scanned and transmitted electronically within the Office. With this new
procedure, the Office will be unable to forward some paper copies of
documents to one part of the Office (e.g., assignments to Assignment
Services Division) and otherwise store other papers (e.g., retain the
paper copies of amendments according to the retention schedule). All
documents will need to be processed in the same manner; as a result,
the Office cannot accept 8\1/2\ by 14-inch paper for assignment
documents but only 8\1/2\ by 11-inch paper for all other
correspondence.
Currently, an assignment document cannot be faxed to the Office
unless the patent application number or patent number, trademark serial
number or trademark registration number is provided. As a result, on
filing a patent application, applicants routinely include a copy of an
assignment with the original application papers. Under the proposed new
practice, applicants may continue to file a copy of the assignment
document with the application papers, but should not anticipate a
return of the submitted copy of the assignment document; only a Notice
of Recordation will be transmitted to the party requesting recordation
by the Office. To assist applicants in matching the Notice of
Recordation transmitted by the Office with applications known to have
been filed on a certain day, the Notice of Recordation will be revised
to indicate the title of invention.
Discussion of Specific Rules
Section 1.1: The Office proposes to revise Sec. 1.1(a)(4) to
delete ``or under Sec. 3.81 of this chapter.'' Under the proposed
rule, the Office will no longer permit the submission of an assignment
document together with the issue fee payment or a request to issue a
patent to an assignee. Instead, the assignment documents (with cover
sheets) should be faxed to (703) 306-5995, submitted through one of the
electronic filing systems, or submitted in a separate envelope and be
sent to Mail Stop Assignment Recordation Services, Director of the
United States Patent and Trademark Office, PO Box 1450, Alexandria, VA
22313-1450. This will permit the assignment document to be recorded
more quickly as it will be directly routed to the appropriate area of
the Office for recording.
Section 1.12: The Office proposes to amend Sec. 1.12(b) to replace
``has not been published under 35 U.S.C. 122(b) are not available to
the public'' with ``is open to the public pursuant to Sec. 1.11 or for
which copies or access may be supplied pursuant to Sec. 1.14 are
available to the public'' in order to clarify the assignment records
that are available to the public. Paragraph (b) of Sec. 1.12 is
further proposed to be amended to provide that copies of any such
assignment records and related information that are not available to
the public shall be obtainable only upon written authority of the
applicant or applicant's assignee, 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 part 1.
As proposed to be revised, Sec. 1.12(b) more clearly provides, for
example, for an application that is relied upon under 35 U.S.C. 120 in
an application that has issued as a patent, any assignment records
relating to the parent application could be considered to relate to the
patent. Without the amendment to Sec. 1.12(b), the rule suggests that
the assignment records for the parent application are not available to
the public. This was not the intended construction, and it is
inconsistent with MPEP Sec. 301.01. Under proposed Sec. 1.12(b), the
assignment records for the parent application of a patent, or an
application that has published under 35 U.S.C. 122(b), would be open to
public inspection.
Section 1.31: The Office proposes to revise the title to refer to
``registered patent attorney or patent agent'' and to revise Sec. 1.31
to introduce the term ``power of attorney.''
Section 1.32: The Office proposes a new Sec. 1.32 to define
``power of attorney'' and ``Customer Number,'' among other things, and
to set forth the requirements for a power of attorney. ``Power of
attorney'' is defined in paragraph (a)(1) of Sec. 1.32 as a written
document by which a principal designates an agent to act on his or her
behalf. A power of attorney includes an authorization of an agent.
``Principal'' is defined in paragraph (a)(2) of Sec. 1.32 as either
the applicant for patent (Sec. 1.41(b)) or the assignee of the entire
interest, and the entity who executes a power of attorney designating
one or more agents to act on his or her behalf. ``Revocation'' is
defined in paragraph (a)(3) of Sec. 1.32 as the cancellation by a
principal of the authority previously given by the principal to an
agent. ``Customer Number'' is defined in paragraph (a)(4) of Sec. 1.32
to be a number that may be used to: (i) Designate the correspondence
address of a patent application such that the correspondence address
for the patent application would be the address associated with the
Customer Number; (ii) designate the fee address (37 CFR 1.363) of a
patent by a Customer Number such that the fee address for the patent
would be the address associated with the Customer Number; and (iii)
specify, in a power of attorney, that each of the practitioners
associated with a Customer Number have a power of attorney.
Paragraph (b) of proposed Sec. 1.32 sets forth the requirements
for a power of attorney, other than a power of attorney in an
international application (see Sec. 1.455 for the power of attorney in
an international application and note that Customer Number practice
cannot be used in an international application). To be valid, the power
of attorney, in an application other than an international application,
must: (1) Be in writing; (2) name as agent either: (i) One or more
joint inventor (see Sec. 1.45), (ii) up to ten registered patent
attorneys, registered patent agents, or other individuals authorized to
practice before the United States Patent and Trademark Office in patent
cases (see Sec. 10.6 and Sec. 10.9(a) and (b) of this subchapter), or
(iii) those registered patent practitioners associated with a Customer
Number; (3) give the agent power to act on behalf of the principal; and
(4) be executed by the principal.
The new Sec. 1.32 is proposed to set a limit on the number of
patent practitioners who can be given a power of attorney without using
Customer Number practice because it is extremely burdensome for the
Office to manually enter a long list of patent practitioners,
particularly where the same list of patent practitioners is to be
entered for a large number of applications. Applicants desiring to
appoint a large number of patent practitioners may continue to do so,
but to appoint more than ten, use of Customer Number practice will be
required. If a power of attorney is submitted listing more than ten
patent practitioners, and the rules are revised as proposed, no patent
practitioners will be entered into the Office's computer systems
because the power of attorney would not comply with the rules.
Furthermore, the power of attorney would not be ``partially accepted''
so as to only accept, for example, the first ten patent practitioners.
This policy is consistent with the Office practice of not entering just
a part of a paper that complies with the rules. As a result, if the
power of attorney lists more than ten patent practitioners and does not
give power of attorney to a Customer Number, then
[[Page 38260]]
applicant will be sent a notice to either submit a power of attorney
with ten or fewer patent practitioners or to use Customer Number
practice. For example, if more than ten patent practitioners have been
named in a combined declaration and power of attorney (e.g., from an
earlier filed application (see Sec. 1.63(d)(1)(iv))), then the Office
of Initial Patent Examination will mail a notice requiring a new power
of attorney. If the application has been assigned, the new power of
attorney should be signed by the assignee of the entire interest.
Although any power of attorney listing more than ten patent
practitioners would be given a paper number and physically entered into
the patent application file, the patent practitioners so listed would
not be of record (entered into the Office computer system or permitted
to sign an express abandonment). Customer Number practice allows the
Office to enter a single five or six digit number into the power of
attorney field instead of a large number of patent practitioners and is
a more appropriate use of Office resources. See MPEP Sec. 403.
Section 1.33: Section 1.33 is proposed to be revised to reflect
Customer Number practice. If applicant provides, in a single document,
both a complete typed address and a Customer number and requests that
both be used for the correspondence address, the address associated
with the Customer Number will be used. Section 1.33(a) is proposed to
be revised to include the following sentence: ``If more than one
correspondence address is specified in a single document, the Office
will establish one as the correspondence address and will use the
address associated with a Customer Number, if the address associated
with a Customer Number is one of the addresses given.'' Applicants will
often specify the correspondence address in more than one paper that is
filed with an application, and the address given in the different
places sometimes conflicts. Where the applicant specifically directs
the Office to use a correspondence address in more than one paper,
priority will be accorded to the correspondence address specified in
the following order: (1) Application data sheet (ADS); (2) Application
transmittal; (3) Oath or declaration (unless power of attorney is more
current); and (4) Power of attorney. Accordingly, if the ADS includes a
typed correspondence address, and the declaration gives a different
address (i.e., the address associated with a Customer Number) as the
correspondence address, the Office will use the typed correspondence
address as included on the ADS. In the experience of the Office, the
ADS is the most recently created document and tends to have the most
current address. After the correspondence address has been entered
according to the above procedure, it will only be changed pursuant to
Sec. 1.33(a)(1).
Paragraph (b)(1) of Sec. 1.33 is proposed to be revised to change
the reference from Sec. 1.34(b) to proposed new Sec. 1.32.
Paragraph (b)(2) of Sec. 1.33 is proposed to be revised to change
Sec. 1.34(a) to Sec. 1.34 to be consistent with the proposal to
revise Sec. 1.34.
Paragraph (c) of Sec. 1.33 is proposed to be revised to change the
cross-reference to Sec. 1.32(b) instead of Sec. 1.34(b) and to change
the reference to Sec. 1.34(a) to Sec. 1.34 to be consistent with the
proposed revision to Sec. 1.34.
Section 1.34: The Office proposes to revise title to ``Acting in a
Representative Capacity.'' The paragraph designation for paragraph (a)
is proposed to be deleted and '', pursuant to Sec. 1.31,'' is proposed
to be deleted for clarity. In addition, ``a registered patent attorney
or patent agent should specify his or her registration number with his
or her signature'' is proposed to be changed to ``a registered patent
attorney or patent agent must specify his or her exact name, as
registered, and the registration number with his or her signature.''
When a registered patent attorney or patent agent acts in a
representative capacity, it should be clear who is signing the paper.
Since signatures are not always legible, it is necessary for the
registered patent attorney or agent to specify his or her registration
number, and also to include his or her exact name so that the identity
of the person who is acting in a representative capacity may be
identified.
Paragraph (b) of Sec. 1.34 is proposed to be deleted. With
Customer Number practice, the associate power of attorney practice set
forth in Sec. 1.34(b) is no longer necessary because once power of
attorney is given to the patent practitioners associated with a
Customer Number, each attorney associated with the Customer Number has
an equal right to change the list of patent practitioners associated
with that Customer Number. Customer number practice is also preferable
to having an associate power of attorney practice because when a
principal attorney gives an associate power of attorney, and the
principal attorney subsequently dies or withdraws as attorney, the
associate power of attorney is terminated. The termination of the
authority of the associate attorney is difficult for the Office to
enforce. When Customer Number practice is used, the death or withdrawal
of an attorney originally associated with the Customer Number has no
impact upon practitioners who later become associated with the Customer
Number, and as a result, Customer Number practice is more efficient for
the Office to administer than the associate power of attorney practice.
Furthermore, an applicant or assignee who gives power of attorney to a
limited number of patent practitioners has expressed a desire to be
represented by only those patent practitioners. As Sec. 1.34 is
proposed to be revised, if Customer Number practice is not used, an
applicant or assignee will be required to sign a new power of attorney
in order for an associate practitioner to be ``of record'' instead of
the specifically identified principal patent practitioner. Of course, a
registered patent practitioner may still act in a representative
capacity pursuant to Sec. 1.34 (by providing his or her exact name and
a registration number with his or her signature), and the proposed rule
changes do not propose to change this flexibility.
Section 1.36: The Office proposes to delete ``or authorization''
from the title and to revise Sec. 1.36 to include new paragraphs (a)
and (b) to address revocation of power of attorney in one paragraph and
withdrawal in another paragraph. In addition, ``or authorization of
agent'' is proposed to be deleted since the term ``power of attorney''
has been defined to include an authorization of an agent. The cross-
reference to Sec. 1.31 is proposed to be changed to Sec. 1.32(b).
Paragraph (a), as proposed to be revised, addresses revocation of a
power of attorney. A registered patent attorney or patent agent will be
notified of the revocation, except that where the power of attorney is
to the patent practitioners associated with a Customer Number, the
notice is only given when the power of attorney to the practitioners
associated with the Customer Number is revoked. When the power of
attorney is revoked, a single notice is mailed to the correspondence
address in effect before the power of attorney was revoked. An
associate registered patent attorney or patent agent whose address is
the same as that of the principal registered patent attorney or patent
agent is not separately informed of a revocation. As a result, the
Office has proposed to delete the suggestion in the rule that such an
associate practitioner would be notified of the revocation of power of
attorney.
When power of attorney is given to the registered patent attorneys
and patent agents associated with a Customer Number, for example with
PTO/SB/81, the list of patent
[[Page 38261]]
practitioners associated with the Customer Number is changed by
changing the data associated with the Customer Number (using, for
example PTO/SB/124 (2 pages 124A & 124B), Request for Customer Number
Data Change). No notice is given to the patent practitioners who are
added or removed from the Customer Number when they are added or
removed.
As to proposed paragraph (b) of Sec. 1.36, the paragraph is
proposed to be revised to state that when the power of attorney for an
application is given to a Customer Number, all of the patent
practitioners associated with the Customer Number may not be permitted
to withdraw if an application with the power of attorney to the patent
practitioners associated with the Customer Number has an Office action
to which a reply is due and insufficient time remains in a period for
reply for applicant to prepare a reply. See MPEP Section 402.06.
Section 3.1: The Office proposes to revise Sec. 3.1 to identify
which trademark applications are covered by 37 CFR part 3, and to
delete ``or a transfer of its entire right, title and interest in a''
so that the definition of an assignment includes a transfer of part of
the right, title and interest in a registered mark or a mark for which
an application to register has been filed. The Office also proposes to
revise Sec. 3.1 to add ``United States'' before ``Patent and Trademark
Office'' in the definition of ``Office'' to properly reflect the
current name of the Office in the rule. See 35 U.S.C. 1(a).
Section 3.12: The Office proposes to add Sec. 3.12 to identify
those trademark applications or registrations that are not covered by
37 CFR part 3. In paragraph (a) of Sec. 3.12, with regard to trademark
applications or registrations that are not covered by 37 CFR part 3,
the documents related to a holder's right to dispose of an
international trademark registration are required to be recorded by the
International Bureau of the World Intellectual Property Organization.
New paragraph (b) of Sec. 3.12 provides that when the Office is
notified by the International Bureau of an assignment or restriction of
a holder's right of disposal of an international registration with an
extension of protection to the United States, the Office will take note
of the assignment or restriction in its records.
Section 3.24: The Office proposes to revise Sec. 3.24 to include
two paragraphs, namely, paragraphs (a) and (b).
Proposed new paragraph (a) addresses documents and cover sheets for
electronic submissions, and requires all documents to be submitted
electronically to be submitted as digitized images in Tagged Image File
Format (TIFF). In addition, when printed to a paper size of 8\1/2\ by
11 inches (21.6 by 27.9 cm) (``letter size'') or DIN size A4 (21.0 by
29.7 cm), the document must be legible and a one-inch (2.5 cm) margin
must be present on all sides.
Proposed new paragraph (b) addresses documents and cover sheets for
paper and facsimile submissions. Section 3.24(b) is proposed to provide
that for paper submissions (e.g., documents that are mailed to the
Office) the original document may no longer be submitted.
Proposed new paragraph (b) provides that ``Either a legible true
copy of the original document or a legible extract of the original
document'' may be submitted for recordation. Paragraph (b) also
includes an explanation to explain why original documents should not be
submitted for recording: ``The Office will not return recorded
documents, so original documents must not be submitted for recording.''
As explained above, the Office is moving to uniform processing of
incoming papers, with incoming papers being scanned upon receipt,
electronically routed within the Office, and an appropriate reply being
mailed. With this uniform procedure, the Office will not return
assignment documents submitted for recordation. As a result, the Office
is not permitting the submission of originals of assignment documents,
and instead is requiring that a legible true copy or a legible extract
of an original document be submitted. The term ``an extract of the
original document'' is being added to reflect the current practice of
submitting redacted copies of assignment documents, where part of an
assignment discusses matters other than assignment of interests related
to a patent or a trademark.
The Office further proposes to revise Sec. 3.24 to provide, in
paragraph (b), that documents (copies) submitted for recording must be
on sheets of paper having a size of 8\1/2\ by 11 inches (21.6 by 27.9
cm) (``letter size'') or DIN size A4 (21.0 by 29.7 cm). That is,
``legal-size'' (8\1/2\ by 14 inch or 21.64 by 33.1 cm) sheets of paper
are no longer permissible. If the original assignment document is on
``legal size'' sheets of paper, the assignment document should be
reduced to 8\1/2\ by 11-inch or DIN size A4 paper for submission to the
Office (e.g., by photocopying it onto letter-size paper). Sheets of
paper that are either 8\1/2\ by 11 inches (21.6 by 27.9 cm) or DIN size
A4 (21.0 by 29.7 cm) are required for scanning purposes.
Section 3.25: The Office proposes to amend Sec. 3.25 to delete
paragraph (a)(1) and renumber paragraphs (a)(2) through (4) as (a)(1)
through (3), respectively. Paragraph (a)(1) is being deleted to
prohibit applicants from submitting the original assignment document
(because applicants should retain the original of the assignment
document). The Office also proposes to insert ``original'' before
``document'' in paragraph (a)(1), as renumbered, in order to make it
clear that only a copy of an original assignment document may be
submitted for recording.
The Office further proposes to revise paragraph (c) to add
paragraph (1) to state that electronic submissions must be attached as
a digitized image in Tagged Image File Format (TIFF), to move the
existing requirements for paper submissions into paragraph (2), and
specify that the document (copy) submitted for recording must have a
one-inch margin when printed on 8\1/2\ by 11 inch (21.6 by 27.9 cm) or
DIN size A4 (21.0 cm by 29.7 cm) paper. Legal-size paper is no longer
permitted. See the discussion of this change above for patents (Sec.
3.24).
Section 3.27: The Office proposes to revise Sec. 3.27 to change
``to be recorded'' to ``submitted for recordation by mail'' because
documents and cover sheets submitted for recording may be faxed or
electronically submitted to the Office and need not be mailed. The
proposed language clarifies that only documents submitted by mail need
to be addressed as set forth in the rule. The Office also proposes to
revise Sec. 3.27 to delete ``or with a request under Sec. 3.81''. As
explained with respect to Sec. 3.81, when an applicant requests a
patent to issue to an assignee, the assignment document should be
separately submitted for recordation because inclusion of the
assignment document with the request to issue the patent to the
assignee slows down the recordation process.
Section 3.31: The Office proposes to revise Sec. 3.31(a)(7) to set
forth the requirements for signature of patent and trademark cover
sheets filed electronically. These requirements correspond to the
requirements set forth in Sec. Sec. 1.4(d)(1)(iii) and 2.33(d) of this
chapter for electronically transmitted trademark filings.
Trademark assignments may be submitted electronically with the
Electronic Trademark Assignment System, which is available on the USPTO
Internet site. See http://etas.uspto.gov/. Patent assignments should
soon be able to be similarly electronically submitted. When submitting
a copy of a trademark assignment using ETAS, the cover sheet is
completed and signed electronically. As with electronic submission of a
[[Page 38262]]
trademark application, a signature may be applied to an Assignment
document in one of the following ways:
(1) The applicant enters a ``symbol'' that the applicant has
adopted as a signature on the electronic assignment document. The
Office will accept any combination of letters, numbers, spaces and/or
punctuation marks as a valid signature if it is placed between forward
slash symbols (e.g., ``/qwert!@/'') and is in a signature
block. The document is saved as a TIFF image; or
(2) The signatory signs paper copies of the assignment document in
the traditional pen-and-ink manner. The attorney scans the document to
create a TIFF image file for electronic submission of the document.
See Trademark Manual of Examining Procedure (TMEP) Sec. 804.05,
Signature of Electronically Transmitted Applications (May 2003).
Although when filing an assignment electronically, the cover sheet may
be ``signed'' as explained in TMEP Sec. 804.05, the assignment
document that is included therewith is an attached TIFF image.
The Office further proposes to revise paragraph (c)(1) of Sec.
3.31 to simplify the requirements for the cover sheet to only require
identification of whether the document to be recorded relates to a
governmental interest.
The Office further proposes to add paragraph (f) of Sec. 3.31,
stating that a trademark cover sheet should include the citizenship of
the parties conveying and receiving the interest, and that if the party
receiving the interest is a partnership or joint venture, the cover
sheet should set forth the names, legal entities, and national
citizenship (or the state or country of organization) of all general
partners or active members. This information is required for purposes
of examination of the application or registration file. Providing this
information when the assignment is recorded may avoid a subsequent
Office action by an examiner.
Section 3.34: The Office proposes to revise Sec. 3.34(b) to delete
``the originally recorded document or'' to thereby provide that it is
``a copy of the document originally submitted for recording'' that must
be submitted. As explained above, the Office is revising the procedure
for handling assignment documents and will no longer be returning the
document that is submitted for recording.
Section 3.41: The Office proposes to revise Sec. 3.41(b)(2) to
include electronic and facsimile submission as a means in which a
statement of Government interest could be submitted for recordation
without incurring a fee. Section 3.41(b)(2) is also proposed to be
revised to change the cross-reference to Sec. 3.27 since Sec. 3.27
was previously revised to delete Sec. 3.27(b).
Section 3.81: The Office proposes to revise Sec. 3.81(a) to change
``name(s)'' to ``name'' and ``assignee(s)'' to ``assignee'' because
under rules of statutory and regulatory construction, the singular
includes the plural unless the context indicates otherwise.
Furthermore, the Office proposes to revise Sec. 3.81(a) to change
``should be accompanied by the assignment and either a direction to
record the assignment in the Office pursuant to Sec. 3.28, or a
statement under Sec. 3.73(b)'' to ``must state that the document has
been filed for recordation as set forth in Sec. 3.11.'' When an
assignment document is submitted for recording, the preferred
submission is by facsimile to (703) 306-5995, or through an electronic
filing system (e.g., ETAS for trademark assignment documents or EFS for
patent assignment documents), and not by mail. Accordingly, the Office
proposes to revise the rules to enable patent applicants to state that
the assignment documents have been filed for recordation, rather than
including the assignment documents for recordation with the request.
Furthermore, the Office proposes to amend Sec. 3.81(a) and (b) to
delete the reference to a statement under Sec. 3.73(b). If the
application has been assigned, the assignment document should be
submitted for recording as set forth in Sec. 3.11 for the patent to
issue showing the name of the assignee. Although during prosecution a
statement under Sec. 3.73(b) can be relied upon to establish that an
assignee is of record, pursuant to Sec. 3.73(b)(1)(i), ``the documents
submitted to establish ownership may be required to be recorded
pursuant to Sec. 3.11 in the assignment records as a condition to
permitting the assignee to take action.'' By the time that a patent
issues, any assignment should be submitted for recording, and reliance
upon Sec. 3.73(b) should not be necessary. Furthermore, although
during prosecution of an application the Office will have an
opportunity to require recordation, at issuance, prosecution has come
to a close and there is no other practical opportunity for the Office
to require recordation before the patent is issued.
The Office proposes to revise Sec. 3.81(b) to read ``[a]fter
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 that a patent be corrected to state the name
of the assignee, must state that the assignment was submitted for
recordation as set forth in Sec. 3.11 before issuance of the patent,
and must include a request for a certificate of correction under Sec.
1.323 of this chapter (accompanied by the fee set forth in Sec.
1.20(a)) and the processing fee set forth in Sec. 1.17(i) of this
chapter.'' This would modify the practice relating to issuance of a
patent to an assignee by requiring that after payment of an issue fee,
a request for a certificate of correction must be filed in order to
obtain issuance of the patent to an assignee. Thus, the patent document
would not set forth such assignment information, but the assignment
information would be set forth in a Certificate of Correction.
Furthermore, this would discontinue the current practice of allowing a
patent to issue to an assignee when an assignment has not been recorded
but a Sec. 3.73(b) statement has been filed. Instead of allowing
submission of a Sec. 3.73(b) statement, correction would be permitted
via a certificate of correction where the assignment has been recorded,
or submitted for recording before issuance of the patent. See MPEP
Sec. 1481.
Section 3.81(c)(1) is proposed to be amended to change
``assignee(s)'' to ``assignee'' and ``inventor(s)'' to ``inventor''
because under rules of statutory and regulatory construction, the
singular includes the plural unless the context indicates otherwise.
Rule Making Considerations
Administrative Procedure Act: This notice proposes changes to the
rules of practice to simplify the Office procedures involving power of
attorney practice and recording assignment documents. The changes
proposed in this notice are limited to the format for and the manner of
submitting, establishing and changing the power of attorney, for
submitting documents to be recorded in the assignment records, and the
availability of assignment records to the public. Therefore, these
changes involve rules of agency practice and procedure under 5 U.S.C.
553(b)(A). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (DC
Cir. 2001). Therefore, prior notice and opportunity for public comment
are not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law).
Nevertheless, the Office is providing this opportunity for public
comment on the changes proposed in this notice because the Office
desires the benefit of public comment on these proposed changes.
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 (or any other
law), an initial regulatory flexibility analysis under the
[[Page 38263]]
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is not required. See
5 U.S.C. 603.
Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined to be
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This notice involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collection of information involved in
this notice has been reviewed and previously approved by OMB under OMB
control numbers 0651-0027 and 0651-0035. The Office is not resubmitting
an information collection package to OMB for its review and approval
because the changes in this notice would not affect the information
collection requirements associated with the information collection
under OMB control numbers 0651-0027 and 0651-0035.
The title, description and respondent description of each of the
information collections are shown below with an estimate of the annual
reporting burdens. Included in the estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impacts of
the changes in this proposed rule are to: (1) Provide for power of
attorney to a Customer Number and to limit the number of attorneys who
may be given a power of attorney without using a Customer Number; (2)
eliminate associate power of attorney practice; (3) require attorneys
acting in a representative capacity to specify their name and
registration number; (4) allow access to assignment records except
those relating to any pending or abandoned patent application which is
preserved in confidence under Sec. 1.14; (5) provide that assignment
documents submitted for recording must be on certain sizes of paper;
(6) specifically state that the assignment documents that are submitted
for recording will not be returned; (7) for assignments that are
submitted electronically, provide for an electronic signature; (8)
require the citizenship of the parties conveying and receiving the
interest on a trademark assignment cover sheet; and (9) provide that a
request to issue a patent to an assignee filed after issue fee payment
must be accompanied by a request for a certificate of correction.
OMB Number: 0651-0027.
Title: Changes in Patent and Trademark Assignment Practices.
Form Numbers: PTO-1618 and PTO-1619, PTO/SB/15/41.
Type of Review: Approved through June of 2005.
Affected Public: Individuals or households and businesses or other
for-profit institutions.
Estimated Number of Respondents: 311,704.
Estimated Time Per Response: 30 minutes.
Estimated Total Annual Burden Hours: 155,853 hours.
Needs and Uses: The Office records over 300,000 assignments or
documents related to ownership of patent and trademark cases each year.
The Office requires a cover sheet to expedite the processing of these
documents and to ensure that they are properly recorded.
OMB Number: 0651-0035.
Title: Representative and Address Provisions.
Form Numbers: PTO/SB/81/82/83/121/122/123/124A/124B/125A/125B.
Type of Review: Approved through 11/30/2005.
Affected Public: Individuals or households, business or other for-
profit, not for-profit institutions and Federal Government.
Estimated Number of Respondents: 338,280.
Estimated Time Per Response: 3 minutes (0.05 hours) to 1 hour 45
minutes (1.75 hours).
Estimated Total Annual Burden Hours: 31,259 hours.
Needs and Uses: Under 35 U.S.C. 2 and 37 CFR 1.31-1.36 and 1.363,
this information is used to submit a request to grant or revoke power
of attorney in an application or patent, to withdraw as patent attorney
or patent agent of record, or to designate or change the correspondence
address for one or more applications or patents.
Comments are invited on: (1) Whether the collections of information
are necessary for proper performance of the functions of the agency;
(2) the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, Commissioner for Patents, PO Box 1450, Alexandria, VA
22313-1450, or to the Office of Information and Regulatory Affairs,
OMB, 725 17th Street, NW., Washington, DC 20503, (Attn: USPTO Desk
Officer).
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements.
For the reasons set forth in the preamble, 37 CFR parts 1 and 3 are
proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Revise Sec. 1.1(a)(4)(i) to read as follows:
Sec. 1.1 Addresses for correspondence with the United States Patent
and Trademark Office.
(a) * * *
(4) Office of Public Records correspondence--(i) Assignments. All
patent-related or trademark-related documents to be recorded by
Assignment Services Division, except for documents filed together with
a new application, should be addressed to: Mail Stop Assignment
Recordation Services, Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See
Sec. 3.27.
* * * * *
3. Revise Sec. 1.12(b) to read as follows:
Sec. 1.12 Assignment records open to public inspection.
* * * * *
(b) Assignment records, digests, and indexes relating to any
pending or abandoned patent application, which is open to the public
pursuant to Sec. 1.11 or for which copies or access may be supplied
pursuant to Sec. 1.14, are
[[Page 38264]]
available to the public. Copies of any such assignment records and
related information 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.
* * * * *
4. Revise Sec. 1.31 to read as follows:
Sec. 1.31 Applicants may be represented by a registered patent
attorney or patent agent.
An applicant for patent may file and prosecute his or her own case,
or he or she may give a power of attorney so as to be represented by a
registered patent attorney, registered patent agent, or other
individual authorized to practice before the United States Patent and
Trademark Office in patent cases. See Sec. 10.6 and Sec. 10.9(a) and
(b) of this subchapter. The United States Patent and Trademark Office
cannot aid in the selection of a registered patent attorney or patent
agent.
5. Add new Sec. 1.32 to read as follows:
Sec. 1.32 Power of attorney.
(a) Definitions:
(1) Power of attorney means a written document by which a principal
designates an agent to act on his or her behalf.
(2) Principal means either the applicant for patent (Sec. 1.41(b))
or the assignee of the entire interest. The principal executes a power
of attorney designating one or more agents to act on his or her behalf.
(3) Revocation means the cancellation by the principal of the
authority previously given by the principal to an agent.
(4) Customer Number means a number that may be used to:
(i) Designate the correspondence address of a patent application
such that the correspondence address for the patent application would
be the address associated with the Customer Number;
(ii) Designate the fee address (Sec. 1.363) of a patent by a
Customer Number such that the fee address for the patent would be the
address associated with the Customer Number; and
(iii) Submit a list of practitioners by Customer Number such that
those registered patent practitioners associated with the Customer
Number would have power of attorney.
(b) A power of attorney, other than a power of attorney in an
international application (Sec. 1.455), must:
(1) Be in writing;
(2) Name as agent either:
(i) One or more joint inventors (Sec. 1.45);
(ii) Up to ten registered patent attorneys, registered patent
agents, or other individuals authorized to practice before the United
States Patent and Trademark Office in patent cases (see Sec. 10.6 and
Sec. 10.9(a) and (b) of this subchapter); or
(iii) Those registered patent practitioners associated with a
Customer Number;
(3) Give the agent power to act on behalf of the principal; and
(4) Be signed by the applicant for patent (Sec. 1.41(b)) or the
assignee of the entire interest.
6. Amend Sec. 1.33 to revise paragraphs (a), introductory text,
(b)(1), (b)(2) and (c) to read as follows:
Sec. 1.33 Correspondence respecting patent applications,
reexamination proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When
filing an application, a correspondence address must be set forth in
either an application data sheet (Sec. 1.76), or elsewhere, in a
clearly identifiable manner, in any paper submitted with an application
filing. If no correspondence address is specified, the Office may treat
the mailing address of the first named inventor (if provided, see
Sec. Sec. 1.76(b)(1) and 1.63(c)(2)) as the correspondence address.
The Office will direct all notices, official letters, and other
communications relating to the application to the correspondence
address. The Office will not engage in double correspondence with an
applicant and a registered patent attorney or patent agent, or with
more than one registered patent attorney or patent agent except as
deemed necessary by the Director. If more than one correspondence
address is specified, in a single document, the Office will establish
one as the correspondence address and will use the address associated
with a Customer Number, if the address associated with a Customer
Number is one of the addresses given. For the party to whom
correspondence is to be addressed, a daytime telephone number should be
supplied in a clearly identifiable manner and may be changed by any
party who may change the correspondence address. The correspondence
address may be changed as follows:
(1) * * *
(b) Amendments and other papers. Amendments and other papers,
except for written assertions pursuant to Sec. 1.27(c)(2)(ii) of this
part, filed in the application must be signed by:
(1) A registered patent attorney or patent agent of record
appointed in compliance with Sec. 1.32(b);
(2) A registered patent attorney or patent agent not of record who
acts in a representative capacity under the provisions of Sec. 1.34;
* * * * *
(c) All notices, official letters, and other communications for the
patent owner or owners in a reexamination proceeding will be directed
to the patent attorney or patent agent of record (see Sec. 1.32(b)) in
the patent file at the address listed on the register of patent
attorneys and patent agents maintained pursuant to Sec. 10.5 and Sec.
10.11 or, if no patent attorney or patent agent is of record, to the
patent owner or owners at the address or addresses of record.
Amendments and other papers filed in a reexamination proceeding on
behalf of the patent owner must be signed by the patent owner, or if
there is more than one owner by all the owners, or by a patent attorney
or patent agent of record in the patent file, or by a registered patent
attorney or patent agent not of record who acts in a representative
capacity under the provisions of Sec. 1.34. Double correspondence with
the patent owner or owners and the patent owner's patent attorney or
patent agent, or with more than one patent attorney or patent agent,
will not be undertaken. If more than one patent attorney or patent
agent is of record and a correspondence address has not been specified,
correspondence will be held with the last patent attorney or patent
agent made of record.
* * * * *
7. Revise Sec. 1.34 to read as follows:
Sec. 1.34 Acting in a Representative Capacity.
When a registered patent attorney or patent agent acting in a
representative capacity appears in person or signs a paper in practice
before the United States Patent and Trademark Office in a patent case,
his or her personal appearance or signature shall constitute a
representation to the United States Patent and Trademark Office that
under the provisions of this subchapter and the law, he or she is
authorized to represent the particular party in whose behalf he or she
acts. In filing such a paper, the registered patent attorney or patent
agent must specify his or her registration number with his or her
signature. Further proof of authority to act in a representative
capacity may be required.
8. Revise Sec. 1.36 to read as follows:
[[Page 38265]]
Sec. 1.36 Revocation of power of attorney; withdrawal of patent
attorney or patent agent.
(a) A power of attorney, pursuant to Sec. 1.32(b), may be revoked
at any stage in the proceedings of a case by the applicant for patent
(Sec. 1.41(b)) or the assignee of the entire interest. A registered
patent attorney or patent agent will be notified of the revocation of
the power of attorney. Where power of attorney is given to the patent
practitioners associated with a Customer Number (Sec.
1.32(b)(2)(iii)), the practitioners so appointed will also be notified
of the revocation of the power of attorney when the power of attorney
to the practitioners associated with the Customer Number is revoked.
The notice of revocation will be mailed to the correspondence address
for the application (Sec. 1.33) in effect before the revocation. An
assignment will not of itself operate as a revocation of a power
previously given, but the assignee of the entire interest may revoke
previous powers and give another power of attorney as provided in Sec.
1.32(b) of the assignee's own selection.
(b) A registered patent attorney or patent agent who has been given
a power of attorney pursuant to Sec. 1.32(b) may withdraw upon
application to and approval by the Director. The applicant or patent
owner will be notified of the withdrawal of the registered patent
attorney or patent agent. Where power of attorney is given to the
patent practitioners associated with a Customer Number, a request to
delete all of the patent practitioners associated with the Customer
Number may not be granted if an applicant has given power of attorney
to the patent practitioners associated with the Customer Number and
insufficient time remains for the applicant to file a reply. See Sec.
1.613(d) for withdrawal in an interference.
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
9. The authority citation for 37 CFR part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
10. Revise Sec. 3.1 to read as follows:
Sec. 3.1 Definitions.
For purposes of this part, the following definitions shall apply:
Application means a national application for patent, an
international patent application that designates the United States of
America, or an application to register a trademark under section 1 or
44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless
otherwise indicated.
Assignment means a transfer by a party of all or part of its right,
title and interest in a patent, patent application, registered mark or
a mark for which an application to register has been filed.
Document means a document which a party requests to be recorded in
the Office pursuant to Sec. 3.11 and which affects some interest in an
application, patent, or registration.
Office means the United States Patent and Trademark Office.
Recorded document means a document which has been recorded in the
Office pursuant to Sec. 3.11.
Registration means a trademark registration issued by the Office.
11. Add Sec. 3.12 to read as follows:
Sec. 3.12 Documents affecting title to international trademark
registration and extension of protection to the United States.
(a) Assignments or restrictions of a holder's right to dispose of
an international trademark registration must be recorded by the
International Bureau of the World Intellectual Property Organization.
(b) When the Office is notified by the International Bureau of an
assignment or restriction of a holder's right of disposal of an
international registration with an extension of protection to the
United States, the Office will take note of the assignment or
restriction in its records.
12. Revise Sec. 3.24 to read as follows:
Sec. 3.24 Requirements for documents and cover sheets relating to
patents and patent applications.
(a) For electronic submissions: Either a true copy of the original
document or an extract of the original document may be submitted for
recording. All documents must be submitted as digitized images in
Tagged Image File Format (TIFF) or another form as prescribed by the
Director. When printed to a paper size of either 21.6 by 27.9 cm (8\1/
2\ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be
legible and a 2.5 cm (one-inch) margin must be present on all sides.
(b) For paper or facsimile submissions: Either a legible true copy
of the original document or a legible extract of the original document
may be submitted for recording.
Only one side of each page may be used. The paper size must be
either 21.6 by 27.9 cm (8\1/2\ by 11 inches) or 21.0 by 29.7 cm (DIN
size A4), and in either case, a 2.5 cm (one-inch) margin must be
present on all sides. For paper submissions, the paper used should be
flexible, strong white, non-shiny, and durable. The Office will not
return recorded documents, so original documents must not be submitted
for recording.
13. Revise Sec. 3.25 to read as follows:
Sec. 3.25 Recording requirements for trademark applications and
registrations.
(a) Documents affecting title. To record documents affecting title
to a trademark application or registration, a legible cover sheet (see
Sec. 3.31) and one of the following must be submitted:
(1) A copy of the original document;
(2) A copy of an extract from the document evidencing the effect on
title; or
(3) A statement signed by both the party conveying the interest and
the party receiving the interest explaining how the conveyance affects
title.
(b) Name changes. Only a legible cover sheet is required (See Sec.
3.31).
(c) All documents.
(1) For electronic submissions: All documents must be submitted as
digitized images in Tagged Image File Format (TIFF) or another form as
prescribed by the Director. When printed to a paper size of either 21.6
by 27.9 cm (8\1/2\ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a
2.5 cm (one-inch) margin must be present on all sides.
(2) For paper or facsimile submissions: All documents should be
submitted on white and non-shiny paper that is either 8\1/2\ by 11
inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-
inch (2.5 cm) margin on all sides in either case. Only one side of each
page may be used. The Office will not return recorded documents, so
original documents should not be submitted for recording.
14. Revise Sec. 3.27 to read as follows:
Sec. 3.27 Mailing address for submitting documents to be recorded.
Documents and cover sheets submitted by mail for recordation should
be addressed to Mail Stop Assignment Recordation Services, Director of
the United States Patent and Trademark Office, PO Box 1450, Alexandria,
Virginia 22313-1450, unless they are filed together with new
applications.
15. Amend Sec. 3.31 to revise paragraphs (a)(7) and (c)(1) and to
add a paragraph (f) to read as follows:
Sec. 3.31 Cover sheet content.
(a) * * *
(7) The signature of the party submitting the document. For an
assignment document or name change filed electronically, the person who
signs the cover sheet must either:
(i) Place a symbol comprised of numbers and/or letters between
forward
[[Page 38266]]
slash marks in the signature block on the electronic submission; or
(ii) Sign the cover sheet using some other form of electronic
signature specified by the Director.
* * * * *
(c) * * *
(1) Indicate that the document relates to a Government interest;
and
* * * * *
(f) Each trademark cover sheet should include the citizenship of
the party conveying the interest and the citizenship of the party
receiving the interest. In addition, if the party receiving the
interest is a partnership or joint venture, the cover sheet should set
forth the names, legal entities, and national citizenship (or the state
or country of organization) of all general partners or active members
that compose the partnership or joint venture.
16. Revise Sec. 3.34 to read as follows:
Sec. 3.34 Correction of cover sheet errors.
(a) An error in a cover sheet recorded pursuant to Sec. 3.11 will
be corrected only if:
(1) The error is apparent when the cover sheet is compared with the
recorded document to which it pertains, and
(2) A corrected cover sheet is filed for recordation.
(b) The corrected cover sheet must be accompanied by a copy of the
document originally submitted for recording and by the recording fee as
set forth in Sec. 3.41.
17. Revise Sec. 3.41(b)(2) to read as follows:
Sec. 3.41 Recording fees.
* * * * *
(b) * * *
(2) The document and cover sheet are either: faxed or
electronically submitted as prescribed by the Director, or mailed to
the Office in compliance with Sec. 3.27.
18. Revise Sec. 3.81 to read as follows:
Sec. 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 Sec.
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 Sec. 3.11 before issuance of
the patent, and must include a request for a certificate of correction
under Sec. 1.323 of this chapter (accompanied by the fee set forth in
Sec. 1.20(a)) and the processing fee set forth in Sec. 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.
Dated: June 20, 2003.
Jon W. Dudas,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 03-16262 Filed 6-26-03; 8:45 am]
BILLING CODE 3510-16-P