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1410.01 Reissue Applicant, Oath or Declaration, and Consent of all Assignees [R-7] - 1400 Correction of Patents
1410.01 Reissue Applicant, Oath or Declaration, and Consent of all Assignees [R-7]
37 CFR 1.172 Applicants, assignees.
(a) A reissue oath must be signed and sworn to or declaration made by the inventor or inventors except as otherwise provided (see §§ 1.42, 1.43, 1.47), and must be accompanied by the written consent of all assignees, if any, owning an undivided interest in the patent, but a reissue oath may be made and sworn to or declaration made by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent. All assignees consenting to the reissue must establish their ownership interest in the patent by filing in the reissue application a submission in accordance with the provisions of § 3.73(b) of this chapter.
(b) A reissue will be granted to the original patentee, his legal representatives or assigns as the interest may appear.
37 CFR 3.73 Establishing right of assignee to take action.
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(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.
The reissue oath must be signed and sworn to by all the inventors, or declaration made by all the inventors, except as otherwise provided in 37 CFR 1.42 , 1.43, and 1.47 (see MPEP § 409 ). Pursuant to 37 CFR 1.172, where the reissue application does not seek to enlarge the scope of any of the claims of the original patent, the reissue oath may be made and sworn to, or declaration made, by the assignee of the entire interest. Depending on the circumstances, either Form PTO/SB/51, Reissue Application Declaration by the Inventor, or Form PTO/SB/52, Reissue Application Declaration by the Assignee, may be used to prepare a declaration in a reissue application. These forms are reproduced in MPEP § 1414.
If an inventor is to be added in a reissue application, a proper reissue oath or declaration including the signatures of all of the inventors is required. If one or more inventors are being deleted in a reissue application, an oath or declaration must be supplied over the signatures of the remaining inventors. Note that although an inventor being deleted in a reissue application need not sign the oath or declaration, if that inventor to be deleted has any ownership interest in the patent (e.g., that inventor did not assign away his/her rights to the patent), the signature of that inventor must be supplied in *>a< consent to >the< filing >of< the reissue application. See MPEP § 1412.04 as to correction of inventorship via reissue.
I. CONSENT TO THE REISSUE
Where no assignee exists, applicant should affirmatively state that fact. This can be done by simply checking the "NO" box of item 7 of Form PTO/SB/50 (which form may be signed by the inventors, or by a registered practitioner). If the file record is silent as to the existence of an assignee, it will be presumed that an assignee does exist. This presumption should be set forth by the examiner in the first Office action alerting applicant to the requirement. It should be noted that the mere filing of a written assertion of small entity status in no way relieves applicant of the requirement to affirmatively state that no assignee exists.
Where a written assertion of small entity status, or other paper in file indicates that the application/patent is assigned, and there is no consent by the assignee named in the written assertion of small entity, the examiner should make inquiry into the matter in an Office action, even if the record otherwise indicates that the application/patent is not assigned.
The reissue oath or declaration must be accompanied by *>a< written consent of all assignees. 35 U.S.C. 111(a) and 37 CFR 1.53(b) provide, however, for according an application a filing date if filed with a specification, including claim(s), and any required drawings. Thus, where an application is filed without an oath or declaration, or without the consent of all assignees, if the application otherwise complies with 37 CFR 1.53(b) and the reissue rules, the Office of *Patent **>Application Processing (OPAP)< will accord a filing date and send out a notice of missing parts setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 1.16(f). If the reissue oath or declaration is filed but the assignee consent is lacking, the surcharge is required because, until the consent is filed, the reissue oath or declaration is defective, since it is not apparent that the signatures thereon are proper absent an indication that the assignees have consented to the filing.
The consent of assignee must be signed by a party authorized to act on behalf of the assignee. See MPEP § 324 for a discussion of parties authorized to act on behalf of the assignee. The consent to the reissue application may use language such as:
The XYZ Corporation, assignee of U.S. Patent No. 9,999,999, consents to the filing of reissue application No. 09/999,999 (or the present application, if filed with the initial application papers) for the reissue of U.S. Patent No. 9,999,999.
_______________
Lilly M. Schor
Vice President,
XYZ Corporation
Where the written consent of all the assignees to the filing of the reissue application cannot be obtained, applicant may under appropriate circumstances petition to the Office of Petitions (MPEP § 1002.02(b)) for a waiver under 37 CFR 1.183 of the requirement of 37 CFR 1.172, to permit the acceptance of the filing of the reissue application. The petition fee under 37 CFR 1.17(f) must be included with the petition.
The reissue application can then be examined, but will not be allowed or issued without the consent of all the assignees as required by 37 CFR 1.172. See Baker Hughes Inc. v. Kirk, 921 F.Supp. 801, 809, 38 USPQ2d 1885, 1892 (D.D.C. 1995), N. B. Fassett, 1877 C.D. 32, 11 O.G. 420 (Comm'r Pat. 1877); James D. Wright, 1876 C.D. 217, 10 O.G. 587 (Comm'r Pat. 1876).
Where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application, and the parent reissue application is not to be abandoned, the copy of the consent should not be accepted. Where a divisional reissue application is filed with a copy of the assignee consent from the parent reissue application, regardless of whether or not the parent reissue application is to be abandoned, the copy of the consent should not be accepted. The copy of the consent from the parent does not indicate that the assignee has consented to the addition of the new invention of the divisional reissue application to the original patent, or to the addition of the new error correction of the continuation reissue application. (Presumably, a new correction has been added via the continuation, *>because< the parent is still pending.) >If, however, a divisional reissue application is being filed in response to a restriction requirement made in the parent reissue application, the assignee need not file a consent to the divided out invention now being submitted in the divisional application because consent has already been provided in the parent reissue application.< As noted above, *>OPAP< will accord a filing date and send out a notice of missing parts stating that there is no proper consent and setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 1.16(f)>.<
Where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application, and the parent reissue application is, or will be abandoned, the copy of the consent should be accepted by the Office.
Form paragraph 14.15 may be used to indicate that the consent of the assignee is lacking.
¶ 14.15 Consent of Assignee to Reissue LackingThis application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
Examiner Note:
1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.
2. If a consent document/statement has been submitted but is insufficient (e.g., not by all the assignees) or is otherwise ineffective (e.g., a conditional consent, or a copy of the consent from the parent reissue application was filed in this continuation reissue application and the parent reissue application is not being abandoned), an explanation of such is to be included following this form paragraph.
3. If the case is otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51).
II. PROOF OF OWNERSHIP OF ASSIGNEE
The assignee that consents to the filing of the reissue application (as discussed above) must also establish that it is the assignee, i.e., the owner, of the patent. See 37 CFR 1.172. Accordingly, a 37 CFR 3.73(b) paper establishing the ownership of the assignee should be submitted at the time of filing the reissue application, in order to support the consent of the assignee. The assignee must establish its ownership in accordance with 37 CFR 3.73(b) by:
(A) filing in the reissue application documentary evidence of a chain of title from the original owner to the assignee; or
(B) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).
Compliance with 37 CFR 3.73(b) may be provided as part of the same paper in which the consent by assignee is provided.
In connection with option (A) above, the submission of the documentary evidence to establish ownership must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owners to the assignee was, or concurrently is, submitted for recordation pursuant to 37 CFR 3.11. Thus, when filing a 37 CFR 3.73(b) statement to establish ownership, an applicant or patent owner must also submit the relied-upon assignment document(s) to the Office for recordation, unless such a submission has already been previously made. If the 37 CFR 3.73(b) statement is not accompanied by a statement affirming that the documentary evidence was, or concurrently is, submitted for recordation pursuant to 37 CFR 3.11, then the 37 CFR 3.73(b) statement will not be accepted, and the assignee(s) will not have established the right to take action in the patent application or the patent for which the 37 CFR 3.73(b) statement was submitted. This could result, for example, in an incomplete response, where a party stated to be the "assignee" signs a consent to the reissue to obviate a requirement for submission of assignee consent made in an Office action.
Upon initial receipt of a reissue application, the examiner should inspect the application to determine whether the submission under 37 CFR 1.172 and 37 CFR 3.73(b) establishing the ownership of the assignee is present and sufficient.
If an assignment document is attached with the 37 CFR 3.73(b) submission, the assignment should be reviewed to ensure that the named assignee is the same for the assignment document and the 37 CFR 3.73(b) statement, and that the assignment document is an assignment of the patent to be reissued to the assignee. If an assignment document is not attached with the 37 CFR 3.73(b) statement, but rather the reel and frame number where the assignment document is recorded in the USPTO is referenced in the 37 CFR 3.73(b) statement, it will be presumed that the assignment recorded in the USPTO supports the statement identifying the assignee. It will not be necessary for the examiner to obtain a copy of the recorded assignment document. If the submission under 37 CFR 1.172 and 37 CFR 3.73(b) is not present, form paragraph 14.16 may be used to indicate that the assignee has not provided evidence of ownership.
¶ 14.16 Failure of Assignee To Establish OwnershipThis application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a). The assignee's ownership interest is established by:
(a) filing in the reissue application evidence of a chain of title from the original owner to the assignee, or
(b) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).
The submission with respect to (a) and (b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. See MPEP § 1410.01.
An appropriate paper satisfying the requirements of 37 CFR 3.73 must be submitted in reply to this Office action.
Examiner Note:
1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.
2. If otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51).
Just as the consent of assignee must be signed by a party authorized to act on behalf of the assignee, the submission with respect to 37 CFR 3.73(b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. The signature of an attorney or agent registered to practice before the Office is not sufficient, unless that attorney or agent is authorized to act on behalf of the assignee.
If the submission under 37 CFR 3.73(b) to establish ownership is not signed by a party authorized to act on behalf of the assignee, the appropriate paragraphs of form paragraphs 14.16.01 through 14.16.06 may be used.
¶ 14.16.01 Establishment of Ownership Not Signed by Appropriate PartyThis application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a). The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission is an appropriate party to sign on behalf of the assignee. 37 CFR 3.73(b)
A proper submission establishing ownership interest in the patent, pursuant to 37 CFR 1.172(a), is required in response to this action.
Examiner Note:
1. This form paragraph should be followed: by one of form paragraphs 14.16.02 through 14.16.04, and then optionally by form paragraph 14.16.06.
2. See MPEP § 1410.01.
¶ 14.16.02 Failure To State Capacity To SignThe person who signed the submission establishing ownership interest has failed to state his/her capacity to sign for the corporation or other business entity, and he/she has not been established as being authorized to act on behalf of the assignee. See MPEP § 324.
Examiner Note:
1. This form paragraph is to be used when the person signing the submission establishing ownership interest does not state his/her capacity (e.g., as a recognized officer) to sign for the assignee, and is not established as being authorized to act on behalf of the assignee.
2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.
¶ 14.16.03 Lack of Capacity To SignThe person who signed the submission establishing ownership interest is not recognized as an officer of the assignee, and he/she has not been established as being authorized to act on behalf of the assignee. See MPEP § 324.
¶ 14.16.04 Attorney/Agent of Record SignsThe submission establishing ownership interest was signed by applicant's [1]. An attorney or agent of record is not authorized to sign a submission establishing ownership interest, unless he/she has been established as being authorized to act on behalf of the assignee. See MPEP § 324.
Examiner Note:
1. This form paragraph is to be used when the person signing the submission establishing ownership interest is an attorney or agent of record who is not an authorized officer as defined in MPEP § 324 and has not been established as being authorized to act on behalf of the assignee.
2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.
3. In bracket 1, insert either --attorney-- or --agent--.
¶ 14.16.06 Criteria To Accept When Signed by a Non-Recognized OfficerIt would be acceptable for a person, other than a recognized officer, to sign a submission establishing ownership interest, provided the record for the application includes a duly signed statement that the person is empowered to sign a submission establishing ownership interest and/or act on behalf of the assignee.
Accordingly, a new submission establishing ownership interest which includes such a statement above, will be considered to be signed by an appropriate official of the assignee. A separately filed paper referencing the previously filed submission establishing ownership interest and containing a proper empowerment statement would also be acceptable.
Examiner Note:
1. This form paragraph MUST be preceded by form paragraphs 14.16.02, 14.16.03 or 14.16.04.
2. When one of form paragraphs 14.16.02, 14.16.03 or 14.16.04 is used to indicate that a submission establishing ownership interest is not proper because it was not signed by a recognized officer, this form paragraph should be used to point out one way to correct the problem.
3. While an indication of the person's title is desirable, its inclusion is not mandatory when this option is employed.
Where the submission establishes the assignee's ownership as to the patent, ownership as to the reissue application will be presumed. Accordingly, a submission as to the ownership of the patent will be construed to satisfy the 37 CFR1.172 (and 37 CFR 3.73(b)) requirements for establishing ownership of the application. Thus, a terminal disclaimer can be filed in a reissue application where ownership of the patent has been established, without the need for a separate submission under 37 CFR 3.73(b) showing ownership of the reissue application.
Even if the submission states that it is establishing ownership of the reissue application (rather than the patent), the submission should be accepted by the examiner as also establishing ownership in the patent. The documentation in the submission establishing ownership of the reissue application must, of necessity, include chain of title as to the patent.
III. COMPARISON OF ASSIGNEE THAT CONSENTS TO ASSIGNEE SET FORTH IN SUBMISSION ESTABLISHING OWNERSHIP INTEREST
The examiner must inspect both the consent and documentary evidence of ownership to determine whether the requirements of 37 CFR 1.172 have been met. The assignee identified by the documentary evidence must be the same assignee which signed the consent. Also, the person who signs the consent for the assignee and the person who signs the submission of evidence of ownership for the assignee must both be persons having authority to do so. See also MPEP § 324.
The reissue patent will be granted to the original patentee, his or her legal representatives or assigns as the interest may appear.
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