37 C.F.R. PART 3—ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
Title 37 - Patents, Trademarks, and Copyrights
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
Source: 57 FR 29642, July 6, 1992, unless otherwise noted.
Editorial Note: Nomenclature changes to part 3 appear at 68 FR 14337, Mar. 25, 2003.
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 §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 §3.11. Registration means a trademark registration issued by the Office. [69 FR 29878, May 26, 2004] (a) Assignments of applications, patents, and registrations, accompanied by completed cover sheets as specified in §§3.28 and 3.31, will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in §§3.28 and 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director. (b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943–1948 Comp., p. 303) requires the several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assignments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part. (c) A joint research agreement or an excerpt of a joint research agreement will also be recorded as provided in this part. [62 FR 53202, Oct. 10, 1997, as amended at 70 FR 1824, Jan. 11, 2005; 70 FR 54267, Sept. 14, 2005] Before an allegation of use under either 15 U.S.C. 1051(c) or 15 U.S.C. 1051(d) is filed, an applicant may only assign an application to register a mark under 15 U.S.C. 1051(b) to a successor to the applicant's business, or portion of the business to which the mark pertains, if that business is ongoing and existing. [64 FR 48926, Sept. 8, 1999] An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234). If an assignment of a patent application filed under §1.53(b) is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under §1.53(c) is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended. [69 FR 29878, May 26, 2004] (a) For electronic submissions: Either a 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 (b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must 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 [69 FR 29879, May 26, 2004] (a) Documents affecting title. To record documents affecting title to a trademark application or registration, a legible cover sheet (see §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 §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 (2) For paper or facsimile submissions: All documents should be submitted on white and non-shiny paper that is either 8 [69 FR 29879, May 26, 2004] The Office will accept and record non-English language documents only if accompanied by an English translation signed by the individual making the translation. [62 FR 53202, Oct. 10, 1997] 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, P.O. Box 1450, Alexandria, Virginia 22313–1450, unless they are filed together with new applications. [69 FR 29879, May 26, 2004] Each document submitted to the Office for recording must include a single cover sheet (as specified in §3.31) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to §3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted. [70 FR 56128, Sept. 26, 2005] (a) Each patent or trademark cover sheet required by §3.28 must contain: (1) The name of the party conveying the interest; (2) The name and address of the party receiving the interest; (3) A description of the interest conveyed or transaction to be recorded; (4) Identification of the interests involved: (i) For trademark assignments and trademark name changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the Office received the application; or (ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trademark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application; (5) The name and address of the party to whom correspondence concerning the request to record the document should be mailed; (6) The date the document was executed; (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 letters, numbers, and/or punctuation marks between forward slash marks (e.g. /Thomas O'Malley III/) 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. (b) A cover sheet should not refer to both patents and trademarks, since any information, including information about pending patent applications, submitted with a request for recordation of a document against a trademark application or trademark registration will become public record upon recordation. (c) Each patent cover sheet required by §3.28 seeking to record a governmental interest as provided by §3.11(b) must: (1) Indicate that the document relates to a Government interest; and (2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see §3.41(b)). (d) Each trademark cover sheet required by §3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document. (e) Each patent or trademark cover sheet required by §3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee. (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. (g) The cover sheet required by §3.28 seeking to record a joint research agreement or an excerpt of a joint research agreement as provided by §3.11(c) must: (1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form); (2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form); (3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and (4) Indicate the date the joint research agreement was executed. [57 FR 29642, July 6, 1992, as amended at 62 FR 53202, Oct. 10, 1997; 64 FR 48927, Sept. 8, 1999; 67 FR 79523, Dec. 30, 2002; 69 FR 29879, May 26, 2004; 70 FR 1824, Jan. 11, 2005; 70 FR 56128, Sept. 26, 2005] (a) An error in a cover sheet recorded pursuant to §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 §3.41. [69 FR 29879, May 26, 2004] (a) All requests to record documents must be accompanied by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in §1.21(h) of this chapter for patents and in §2.6(b)(6) of this chapter for trademarks. (b) No fee is required for each patent application and patent against which a document required by Executive Order 9424 is to be filed if: (1) The document does not affect title and is so identified in the cover sheet (see §3.31(c)(2)); and (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 §3.27. [63 FR 52159, Sept. 30, 1998, as amended at 69 FR 29879, May 26, 2004] The date of recording of a document is the date the document meeting the requirements for recording set forth in this part is filed in the Office. A document which does not comply with the identification requirements of §3.21 will not be recorded. Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available. The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the document. The procedure set forth in §1.8 or §1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service. If the returned papers are not corrected and resubmitted within the specified period, the date of filing of the corrected papers will be considered to be the date of recording of the document. The specified period to resubmit the returned papers will not be extended. [62 FR 53203, Oct. 10, 1997] The recording of a document pursuant to §3.11 is not a determination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office. Assignments which are made conditional on the performance of certain acts or events, such as the payment of money or other condition subsequent, if recorded in the Office, are regarded as absolute assignments for Office purposes until cancelled with the written consent of all parties or by the decree of a court of competent jurisdiction. The Office does not determine whether such conditions have been fulfilled. (a) The Office will maintain a Departmental Register to record governmental interests required to be recorded by Executive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in §1.12. (b) The Office will maintain a Secret Register to record governmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Register. [62 FR 53203, Oct. 10, 1997] If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder. [67 FR 79522, Dec. 30, 2002] (a) Patents—conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may, after becoming of record pursuant to paragraph (c) of this section, conduct prosecution of a national patent application or a reexamination proceeding to the exclusion of either the inventive entity, or the assignee(s) previously entitled to conduct prosecution. (b) Patents—Assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are: (1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or (2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined. (c) Patents—Becoming of record. An assignee becomes of record either in a national patent application or a reexamination proceeding by filing a statement in compliance with §3.73(b) that is signed by a party who is authorized to act on behalf of the assignee. (d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee's trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with §3.73(b). [65 FR 54682, Sept. 8, 2000] (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). For trademark matters only, 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. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to §3.11; 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. [65 FR 54682, Sept. 8, 2000, as amended at 70 FR 56128, Sept. 26, 2005] (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. [69 FR 29879, May 26, 2004] The certificate of registration may be issued to the assignee of the applicant, or in a new name of the applicant, provided that the party files a written request in the trademark application by the time the application is being prepared for issuance of the certificate of registration, and the appropriate document is recorded in the Office. If the assignment or name change document has not been recorded in the Office, then the written request must state that the document has been filed for recordation. The address of the assignee must be made of record in the application file.
Title 37: Patents, Trademarks, and Copyrights
PART 3—ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
Section Contents
§ 3.1 Definitions.
Documents Eligible for Recording
§ 3.11 Documents which will be recorded.
§ 3.16 Assignability of trademarks prior to filing of an allegation of use.
Requirements for Recording
§ 3.21 Identification of patents and patent applications.
§ 3.24 Requirements for documents and cover sheets relating to patents and patent applications.
§ 3.25 Recording requirements for trademark applications and registrations.
§ 3.26 English language requirement.
§ 3.27 Mailing address for submitting documents to be recorded.
§ 3.28 Requests for recording.
Cover Sheet Requirements
§ 3.31 Cover sheet content.
§ 3.34 Correction of cover sheet errors.
Fees
§ 3.41 Recording fees.
Date and Effect of Recording
§ 3.51 Recording date.
§ 3.54 Effect of recording.
§ 3.56 Conditional assignments.
§ 3.58 Governmental registers.
Domestic Representative
§ 3.61 Domestic representative.
Action Taken by Assignee
§ 3.71 Prosecution by assignee.
§ 3.73 Establishing right of assignee to take action.
Issuance to Assignee
§ 3.81 Issue of patent to assignee.
§ 3.85 Issue of registration to assignee.
§ 3.1 Definitions.
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Documents Eligible for Recording
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§ 3.11 Documents which will be recorded.
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§ 3.16 Assignability of trademarks prior to filing of an allegation of use.
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Requirements for Recording
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§ 3.21 Identification of patents and patent applications.
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§ 3.24 Requirements for documents and cover sheets relating to patents and patent applications.
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§ 3.25 Recording requirements for trademark applications and registrations.
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§ 3.26 English language requirement.
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§ 3.27 Mailing address for submitting documents to be recorded.
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§ 3.28 Requests for recording.
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Cover Sheet Requirements
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§ 3.31 Cover sheet content.
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§ 3.34 Correction of cover sheet errors.
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Fees
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§ 3.41 Recording fees.
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Date and Effect of Recording
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§ 3.51 Recording date.
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§ 3.54 Effect of recording.
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§ 3.56 Conditional assignments.
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§ 3.58 Governmental registers.
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Domestic Representative
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§ 3.61 Domestic representative.
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Action Taken by Assignee
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§ 3.71 Prosecution by assignee.
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§ 3.73 Establishing right of assignee to take action.
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Issuance to Assignee
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§ 3.81 Issue of patent to assignee.
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§ 3.85 Issue of registration to assignee.
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