Editing MPEP 300

{{MPEP Chapter|200|400}}

'''<big>Chapter 300 Ownership and Assignment</big>'''

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301 Ownership/Assignability of Patents 
and Applications [R-3]

35 U.S.C. 261. Ownership; assignment.

Subject to the provisions of this title, patents shall have the 
attributes of personal property.

Applications for patent, patents, or any interest therein, shall be 
assignable in law by an instrument in writing. The applicant, patentee, 
or his assigns or legal representatives may in like manner 
grant and convey an exclusive right under his application for 
patent, or patents, to the whole or any specified part of the United 
States.

A certificate of acknowledgment under the hand and official 
seal of a person authorized to administer oaths within the United 
States, or, in a foreign country, of a diplomatic or consular officer 
of the United States or an officer authorized to administer oaths 
whose authority is proved by a certificate of a diplomatic or consular 
officer of the United States, or apostille of an official designated 
by a foreign country which, by treaty or convention, accords 
like effect to apostilles of designated officials in the United States, 
shall be prima facie evidence of the execution of an assignment, 
grant, or conveyance of a patent or application for patent.

An assignment, grant, or conveyance shall be void as against 
any subsequent purchaser or mortgagee for valuable consideration, 
without notice, unless it is recorded in the Patent and Trademark 
Office within three months from its date or prior to the date 
of such subsequent purchase or mortgage.

35 U.S.C. 262. Joint owners. 

In the absence of any agreement to the contrary, each of the 
joint owners of a patent may make, use, offer to sell, or sell the 
patented invention within the United States, or import the patented 
invention into the United States, without the consent of and without 
accounting to the other owners.

37 CFR 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 § 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.



I. OWNERSHIP

 Ownership of a patent gives the patent owner the 
right to exclude others from making, using, offering 
for sale, selling, or importing into the United States 
the invention claimed in the patent. 35 U.S.C. 
154(a)(1). Ownership of the patent does not furnish 
the owner with the right to make, use, offer for sale, 
sell, or import the claimed invention because there 
may be other legal considerations precluding same 
(e.g., existence of another patent owner with a dominant 
patent, failure to obtain FDA approval of the patented 
invention, an injunction by a court against 
making the product of the invention, or a national 
security related issue).

The ownership of the patent (or the application for 
the patent) initially vests in the named inventors of the 
invention of the patent. See Beech Aircraft Corp. v. 
EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 
1582 (Fed. Cir. 1993). The patent (or patent application) 
is then assignable by an instrument in writing, 
and the assignment of the patent, or patent application, 
transfers to the assignee(s) an alienable (transferable) 
ownership interest in the patent or application. 
35 U.S.C. 261. 



II. ASSIGNMENT

 “Assignment,” in general, is the act of transferring 
to another the ownership of one’s property, i.e., the 
interest and rights to the property. In 37 CFR 3.1, 
assignment of patent rights is defined as “a transfer by 
a party of all or part of its right, title and interest in a 
patent or patent application....” An assignment of a 
patent, or patent application, is the transfer to another 
of a party’s entire ownership interest or a percentage 
of that party’s ownership interest in the patent or 
application. In order for an assignment to take place, 
the transfer to another must include the entirety of the 
bundle of rights that is associated with the ownership 
interest, i.e., all of the bundle of rights that are inherent 
in the right, title and interest in the patent or patent 
application. 



III. LICENSING

 As compared to assignment of patent rights, the 
licensing of a patent transfers a bundle of rights which 
is less than the entire ownership interest, e.g., rights 
that may be limited as to time, geographical area, or 
field of use. A patent license is, in effect, a contractual 
agreement that the patent owner will not sue the licensee 
for patent infringement if the licensee makes, 
uses, offers for sale, sells, or imports the claimed 
invention, as long as the licensee fulfills its obligations 
and operates within the bounds delineated by the 
license agreement. 

An exclusive license may be granted by the patent 
owner to a licensee. The exclusive license prevents 
the patent owner (or any other party to whom the 
patent owner might wish to sell a license) from competing 
with the exclusive licensee, as to the geographic 
region, the length of time, and/or the field of 
use, set forth in the license agreement.

A license is not an assignment of the patent. Even if 
the license is an exclusive license, it is not an assignment 
of patent rights in the patent or application. 



IV. INDIVIDUAL AND JOINT OWNERSHIP

 Individual ownership - An individual entity may 
own the entire right, title and interest of the patent 
property. This occurs where there is only one inventor, 
and the inventor has not assigned the patent property. 
Alternatively, it occurs where all parties having 
ownership interest (all inventors and assignees) assign 
the patent property to one party.

Joint ownership - Multiple parties may togetherown the entire right, title and interest of the patent 
property. This occurs when any of the following cases 
exist: 

(A)Multiple partial assignees of the patent property; 


(B)Multiple inventors who have not assigned 
their right, title and interest; or 




 

(C)A combination of partial assignee(s), and 
inventor(s) who have not assigned their right, title and 
interest.

 Each individual inventor may only assign the interest 
he or she holds; thus, assignment by one joint 
inventor renders the assignee a partial assignee. A 
partial assignee likewise may only assign the interest 
it holds; thus, assignment by a partial assignee renders 
a subsequent assignee a partial assignee. All parties 
having any portion of the ownership in the patent 
property must act together as a composite entity in 
patent matters before the Office. 



V. MAKING THE ASSIGNMENT OF 
RECORD

 An assignment can be made of record in the United 
States Patent and Trademark Office (Office) in two 
different ways, for two different purposes. The differences 
are important to note: 

(A)An assignment can be made of record in the 
assignment records of the Office. Recordation of the 
assignment provides legal notice to the public of the 
assignment. It should be noted that recording of the 
assignment is merely a ministerial act; it is not an 
Office determination of the validity of the assignment 
document nor the effect of the assignment document 
on the ownership of the patent property. See 37 CFR 
3.54 and MPEP § 317.03; and 

(B)An assignment can be made of record in the 
file of a patent application, patent, or other patent proceeding 
(e.g., reexamination proceeding). This step is 
necessary to permit the assignee to “take action” in 
the application, patent, or other patent proceeding 
under the conditions set forth in 37 CFR 3.73 and 
MPEP § 324. Recordation of an assignment in the 
assignment records of the Office does not, by itself, 
permit the assignee to take action in the application, 
patent, or other patent proceeding. For a patent to 
issue to an assignee, the assignment must have been 
recorded or filed for recordation in accordance with 
37 CFR 3.11. See 37 CFR 3.81(a). 

301.01Accessibility of AssignmentRecords [R-3]

37 CFR 1.12. Assignment records open to public 
inspection.



(a)(1) Separate assignment records are maintained in the 
United States Patent and Trademark Office for patents and trademarks. 
The assignment records, relating to original or reissue patents, 
including digests and indexes (for assignments recorded on 
or after May 1, 1957), and published patent applications are open 
to public inspection at the United States Patent and Trademark 
Office, and copies of patent assignment records may be obtained 
upon request and payment of the fee set forth in § 1.19 of this 
chapter. See § 2.200 of this chapter regarding trademark assignment 
records.

(2)All records of assignments of patents recorded 
before May 1, 1957, are maintained by the National Archives and 
Records Administration (NARA). The records are open to public 
inspection. Certified and uncertified copies of those assignment 
records are provided by NARA upon request and payment of the 
fees required by NARA.



(b)Assignment records, digests, and indexes relating to any 
pending or abandoned patent application, which is open to the 
public pursuant to § 1.11 or for which copies or access may be 
supplied pursuant to § 1.14, are available to the public. Copies of 
any assignment records, digests, and indexes that are not available 
to the public shall be obtainable only upon written authority of the 
applicant or applicant’s assignee or patent attorney or patent agent 
or upon a showing that the person seeking such information is a 
bona fide prospective or actual purchaser, mortgagee, or licensee 
of such application, unless it shall be necessary to the proper conduct 
of business before the Office or as provided in this part.

(c)Any request by a member of the public seeking copies of 
any assignment records of any pending or abandoned patent application 
preserved in confidence under §
 
1.14, or any information 
with respect thereto, must:

(1)Be in the form of a petition including the fee set forth 
in § 1.17(g); or

(2)Include written authority granting access to the member 
of the public to the particular assignment records from the 
applicant or applicant’s assignee or attorney or agent of record.

(d)An order for a copy of an assignment or other document 
should identify the reel and frame number where the assignment 
or document is recorded. If a document is identified without specifying 
its correct reel and frame, an extra charge as set forth in § 
1.21(j) will be made for the time consumed in making a search for 
such assignment.

Assignment documents relating to patents, published 
patent applications, registrations of trademarks, 
and applications for registration of trademarks are 
open to public inspection. Records related to assignments 
of patents, and patent applications that have 




 

been published as patent application publications are 
available on the USPTO Internet web site. To view the 
recorded assignment document itself, members of the 
public must place an order pursuant to 37 CFR 
1.12(d). 

The Office will not open only certain parts of an 
assignment document to public inspection. If such a 
document contains two or more items, any one of 
which, if alone, would be open to such inspection, 
then the entire document will be open. Thus, if a document 
covers either a trademark or a patent in addition 
to one or more patent applications, it will be 
available to the public ab initio; and if it covers a 
number of patent applications, it will be so available 
as soon as any one of them is published or patented. 
Documents relating only to one or more pending 
applications for patent which have not been published 
under 35 U.S.C. 122(b) will not be open to public 
inspection.

Copies of assignment records relating to pending or 
abandoned patent applications which are open to 
the public pursuant to 37 CFR 1.11 or for which copies 
or access may be supplied pursuant to 37 CFR 
1.14 are available to the public. For pending or abandoned 
applications which are not open to the public 
pursuant to 37 CFR 1.11 or for which copies or access 
may not be supplied pursuant to 37 CFR 1.14, information 
related thereto is only obtainable upon a 
showing of written authority from the applicant or 
applicant’s assignee or from the attorney or agent of 
either, or upon a showing that the person seeking such 
information is a bona fide prospective or actual purchaser, 
mortgagee, or licensee of such application.

If the application on which a patent was granted is a 
division , continuation, or continuation-in-part
of an earlier application, the assignment records of 
that earlier application will be open to public inspection 
because copies or access may be supplied to 
the earlier application pursuant to 37 CFR 1.14.

Assignment records relating to reissue applications 
are open to public inspection since reissue applications 
are open to public inspection pursuant to 37 
CFR 1.11(b).

Requests for abstracts of title for assignments of 
patents recorded after May 1, 1957, are provided by 
the Certification Division upon request and payment 
of fee required in 37 CFR 1.19. Requests for copies of 
pre-1957 records for patents should be directed to the 
National Archives and Records Administration 
(NARA). Since these records are maintained by 
NARA, it is more expeditious to request copies 
directly from NARA, rather than from the Office, 
which would then have to route the requests to 
NARA. Payment of the fees required by NARA 
should accompany all requests for copies.

All assignment records from 1837 to April 30, 1957 
for patents are now maintained and are open for public 
inspection in the National Archives Research 
Room located at the Washington National Records 
Center Building, 4205 Suitland Road, Suitland, Maryland 
20746. Assignment documents recorded before 
1837 are maintained at the Civilian Records Division 
of the National Archives at College Park, 
8601 Adelphi Road, College Park, MD 20740-6001. 

302Recording of Assignment Documents 
[R-5]

37 CFR 3.11. Documents which will be recorded.

(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 §§
 
3.28and 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.

37 CFR 3.58. Governmental registers.

(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.


Effective September 4, 1992, Part 3 has been added 
to 37 
CFR to set forth Office rules on recording 
assignments and other documents and the rights of an 
assignee.

Effective December 10, 2004, as a result of the 
Cooperative Research and Technology Enhancement 
Act of 2004 (CREATE Act), 37 CFR 3.11(c) has been 
added to provide that the Office will record a joint 
research agreement or an excerpt of a joint research 
agreement.  

302.01Assignment Document Must Be 
 Copy for Recording [R-3]



37 CFR 3.24. Requirements for documents and cover 
sheets relating to patents and patent applications.

(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 1/2 inches 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 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 1/2 inches 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.


The United States Patent and Trademark Office will 
accept and record only a copy of an original 
assignment or other document. See MPEP § 317. 
The document submitted for recordation will not be 
returned to the submitter. If the copy submitted for 
recordation is illegible, the recorded document will be 
illegible. Accordingly, applicants and patent owners 
should ensure that only a legible copy is submitted for 
recordation.



302.02Translation of Assignment Document


37 CFR 3.26. English language requirement.

The Office will accept and record non-English language documents 
only if accompanied by an English translation signed by the 
individual making the translation.

The assignment document, if not in the English language, 
will not be recorded unless accompanied by an 
English translation signed by the translator.

302.03Identifying Patent or Application 
[R-3]



37 CFR 3.21. Identification of patents and patent 
applications.

 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.

The patent or patent application to which an assignment 
relates must be identified by patent number or 
application number unless the assignment is executed 
concurrently with or subsequent to the execution of 
the application but before the application is filed. 
Then, the application must be identified by  the 
name(s) of the inventors, and the title of the invention. 
If an assignment of a provisional application is executed 
before the provisional application is filed, it 




 

must identify the provisional application by name(s) 
of the inventors and the title of the invention.

The Office makes every effort to provide applicants 
with the application numbers for newly filed patent 
applications as soon as possible. It is suggested, however, 
that an assignment be written to allow entry of 
the identifying number after the execution of the 
assignment. An example of acceptable wording is:

“I hereby authorize and request my attorney, (Insert 
name), of (Insert address), to insert here in parentheses 
(Application number , filed ) the filing 
date and application number of said application when 
known.” 

302.04Foreign Assignee May DesignateDomestic Representative [R-3]

35 U.S.C. 293. Nonresident patentee; service and notice.

Every patentee not residing in the United States may file in the 
Patent and Trademark Office a written designation stating the 
name and address of a person residing within the United States on 
whom may be served process or notice of proceedings affecting 
the patent or rights thereunder. If the person designated cannot be 
found at the address given in the last designation, or if no person 
has been designated, the United States District Court for the District 
of Columbia shall have jurisdiction and summons shall be 
served by publication or otherwise as the court directs. The court 
shall have the same jurisdiction to take any action respecting the 
patent or rights thereunder that it would have if the patentee were 
personally within the jurisdiction of the court.



37 CFR 3.61. Domestic representative.

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.

An assignee of a patent or patent application who 
is not domiciled in the United States may, by written 
document signed by such assignee, designate a 
domestic representative. The designation of domestic 
representative should always be a paper separate from 
any assignment document, in order that the paper of 
designation can be retained in the appropriate application 
or patent file. Also, there should be a separate 
paper of designation of representative for each patent 
or application, so that a designation paper can be 
placed in each file. The designation of a domestic representative 
should be directed to the Office of Public 
Records for processing.

302.05Address of Assignee

The address of the assignee may be recited in the 
assignment document and must be given in the 
required cover sheet. See MPEP § 302.07.

302.06Fee for Recording [R-3]

37 CFR 3.41. Recording fees.

(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.

The recording fee set forth in 37 CFR 1.21(h) is 
charged for each patent application and patent identified 
in the required cover sheet except as provided in 
37 CFR 3.41(b).

302.07Assignment Document Must Be 
Accompanied by a Cover Sheet..
[R-5]

37 CFR 3.28. Requests for recording.

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.


37 CFR 3.31. Cover sheet content.

(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. 

Each assignment document submitted to the Office 
for recording must be accompanied by a cover sheet 
as required by 37 CFR 3.28. The cover sheet for patents 
or patent applications must contain:

(A)The name of the party conveying the interest;

(B)The name and address of the party receiving 
the interest;

(C)A description of the interest conveyed or 
transaction to be recorded;

(D)Each patent application number or patent 
number against which the document is to be recorded, 
or an indication that the document is filed together 
with a patent application;

(E)The name and address of the party to whom 
correspondence concerning the request to record the 
document should be mailed;

(F)The date the document was executed; and

(G)The signature of the party submitting the document.


If the document submitted for recordation is a joint 
research agreement or an excerpt of a joint research 
agreement, the cover sheet must clearly identify the 
document as a “joint research agreement” (in the 
space provided for the description of the interest conveyed 
if using Form PTO-1595). The date the joint 
research agreement was executed must also be identified. 
The cover sheet must also identify the name(s) of 
the owner(s) of the application or patent (in the space 
provided for the name and address of the party receiving 
the interest if using Form PTO-1595). The 
name(s) of every other party(ies) to the joint research 




 

agreement must also be identified (in the space provided 
for the name of the party conveying the interest 
if using Form PTO-1595).

Each patent cover sheet should contain the number 
of patent applications or patents identified in the 
cover sheet and the total fee.

Examples of the type of descriptions of the interest 
conveyed or transaction to be recorded that can be 
identified are: 

(A)assignment; 

(B)security agreement;

(C)merger;

(D)change of name; 

(E)license; 

(F)foreclosure; 

(G)lien; 

(H)contract; and

(I)joint research agreement.

Cover sheets required by 37 CFR 3.28 seeking to 
record a governmental interest must also (1) indicate 
that the document relates to a governmental interest 
and (2) indicate, if applicable, that the document to be 
recorded is not a document affecting title.

A patent cover sheet may not refer to trademark 
applications or registrations. 

Form PTO-1595, Recordation Form Cover Sheet, 
may be used as the cover sheet for recording documents 
relating to patent(s) and/or patent application(s) 
in the Office.




 



Form PTO-1595. Recordation Form Cover Sheet for PatentsRecordation Form Cover Sheet
Patents Only





 

Form PTO-1595. Recordation Form Cover Sheet for Patents (Guidelines for Completing)Guidelines for Completing Patents Cover Sheet (PTO-1595)





 

Form PTO-1595. Recordation Form Cover Sheet for Patents (Guidelines for Completing)Privacy Act Statment for Patent Assignment Recordation Form Cover Sheet







 

302.08Mailing Address for SubmittingAssignment Documents [R-3]



37 CFR 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, 
P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are 
filed together with new applications.

37 CFR 3.27 sets out how documents submitted for 
recording should be addressed to the Office. In order 
to ensure prompt and proper processing, documents 
and their cover sheets should be addressed to the 
Mail Stop Assignment Recordation Services, Director 
of the U.S. Patent and Trademark Office, P.O. Box 
1450, Alexandria, VA 22313-1450, unless they are 
filed together with new applications. Requests for 
recording documents which accompany new applications 
should be addressed to the  Commissioner 
for Patents, P.O. Box 1450, Alexandria, VA 22313-
1450. 

302.09Facsimile Submission of Assignment 
Documents [R-5]

 Assignments and other documents affecting title 
may be submitted to the Office via facsimile (fax). 
See the USPTO Internet web site or MPEP §
 
1730 for 
the facsimile number. This process allows customers 
to submit their documents directly into the automated 
Patent and Trademark Assignment System and 
receive the resulting recordation notice at their fax 
machine. The customer’s fax machine must be connected 
to a dedicated line because recordation notices 
will be returned automatically to the sending fax number 
through the Patent and Trademark Assignment 
System. If the Office system is unable to complete 
transmission of the recordation notice, the notice will 
be printed and mailed to the sender by U.S. Postal 
Service first class mail. Recorded documents will not 
be returned with the “Notice of Recordation.”

 Any assignment-related document for patent matters 
submitted by facsimile must include: 

(A)an identified application or patent number;

(B)one cover sheet to record a single transaction; 
and 

(C)payment of the recordation fee by a credit 
card (use of the Credit Card form, PTO-2038 (see 
MPEP § 509), is required for the credit card information 
to be kept separate from the assignment records)
or a USPTO Deposit Account.

 The following documents cannot be submitted via 
facsimile:

(A)Assignments submitted concurrently with 
newly filed patent applications;

(B)Documents with two or more cover sheets 
(e.g., a single document with one cover sheet to 
record an assignment, and a separate cover sheet to 
record separately a license relating to the same property);


(C)Requests for corrections to documents 
recorded previously;

(D)Requests for “at cost” recordation services; 
and 

(E)Resubmission of a non-recorded assignment.

 The date of receipt accorded to an assignment document 
sent to the Office by facsimile transmission is 
the date the complete transmission is received in the 
Office. See MPEP § 502.01. The benefits of a certificate 
of transmission under 37 CFR 1.8 are available.

 If a document submitted by fax is determined not 
to be recordable, the entire document, with its associated 
cover sheet, and the Office “Notice of Non-
Recordation” will be transmitted via fax back to the 
sender. Once corrections are made, the initial submission, 
amended, may then be resubmitted by mailing 
the corrected submission to the address set forth in 
37 
CFR 3.27. Timely resubmission will provide the 
sender with the benefit of the initial receipt date as the 
recordation date in accordance with 37 CFR 3.51.

 The Patent and Trademark Assignment System 
assigns reel and frame numbers and superimposes 
recordation stampings on the processed and stored 
electronic images. Accordingly, copies of all recorded 
documents will have the reel and frame numbers and 
recordation stampings.




 

302.10Electronic Submission of Assignment 
Documents [R-5]

37 CFR 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 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.



37 CFR 1.4. Nature of correspondence and signature 
requirements.



(d)(2) S-signature. An S-signature is a signature 
inserted between forward slash marks, but not a handwritten signature 
as defined by § 1.4(d)(1). An S-signature includes any signature 
made by electronic or mechanical means, and any other 
mode of making or applying a signature not covered by either a 
handwritten signature of § 1.4(d)(1) or an Office Electronic Filing 
System (EFS) character coded signature of §
 
1.4(d)(3). Correspondence 
being filed in the Office in paper, by facsimile transmission 
as provided in §
 
1.6(d), or via the Office Electronic Filing 
System as an EFS Tag(ged) Image File Format (TIFF) attachment, 
for a patent application, patent, or a reexamination proceeding 
may be S-signature signed instead of being personally signed (i.e., 
with a handwritten signature) as provided for in paragraph (d)(1) 
of this section. The requirements for an S-signature under this 
paragraph (d)(2) are as follows.

(i) The S-signature must consist only of letters, or Arabic 
numerals, or both, with appropriate spaces and commas, periods, 
apostrophes, or hyphens for punctuation, and the person 
signing the correspondence must insert his or her own S-signature 
with a first single forward slash mark before, and a second single 
forward slash mark after, the S-signature (e.g., /Dr. James T. 
Jones, Jr./); and

(ii)A patent practitioner (§ 1.32(a)(1)), signing pursuant 
to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration 
number either as part of the S-signature, or immediately below or 
adjacent to the S-signature. The number (#) character may be used 
only as part of the S-signature when appearing before a practitioner’s 
registration number; otherwise the number character may 
not be used in an S-signature.

(iii) The signer’s name must be:

(A) Presented in printed or typed form preferably 
immediately below or adjacent the S-signature, and

(B) Reasonably specific enough so that the identity of 
the signer can be readily recognized.

(3) EFS character coded signature. Correspondence in 
character coded form being filed via the Office Electronic Filing 
System for a patent application or patent may be signed electronically. 
The electronic signature must consist only of letters of the 
English alphabet, or Arabic numerals, or both, with appropriate 
spaces and commas, periods, apostrophes, or hyphens for punctuation. 
The person signing the correspondence must personally 
insert the electronic signature with a first single forward slash 
mark before, and a second single forward slash mark after, the 
electronic signature (e.g., /Dr. James T. Jones, Jr./).

(4) Certifications. (i) Section 10.18 certifications: The 
presentation to the Office (whether by signing, filing, submitting, 
or later advocating) of any paper by a party, whether a practitioner 
or non-practitioner, constitutes a certification under § 10.18 (b) of 
this chapter. Violations of § 10.18 (b)(2) of this chapter by a party, 
whether a practitioner or non-practitioner, may result in the imposition 
of sanctions under § 10.18(c) of this chapter. Any practitioner 
violating § 10.18(b) of this chapter may also be subject to 
disciplinary action. See §§ 10.18 (d) and 10.23 (c)(15) of this 
chapter.

(ii) Certifications as to the signature: (A) Of another: 
A person submitting a document signed by another under paragraphs 
(d)(2) or (d)(3) of this section is obligated to have a reasonable 
basis to believe that the person whose signature is present on 
the document was actually inserted by that person, and should 
retain evidence of authenticity of the signature.

(B) Self certification: The person inserting a signature 
under paragraphs (d)(2) or (d)(3) of this section in a document 
submitted to the Office certifies that the inserted signature 
appearing in the document is his or her own signature.

(C) Sanctions: Violations of the certifications as to 
the signature of another or a person’s own signature, set forth in 
paragraphs (d)(4)(ii)(A) and (B) of this section, may result in the 
imposition of sanctions under § 10.18 (c) and (d) of this chapter.



Assignments and other documents affecting title 
may be submitted to the Office via the Office’s Electronic 
Filing System (EFS) or the Electronic Patent 
Assignment System (EPAS). See the USPTO Internet 
web site for additional information regarding EFS and 
EPAS. These systems allow customers to submit their 
documents directly into the automated Patent and 
Trademark Assignment System and receive the resulting 
recordation notice at their fax machine. The customer’s 
fax machine must be connected to a dedicated 
line because recordation notices will be returned automatically 
to the sending fax number through the 
Patent and Trademark Assignment System. If the 
Office system is unable to complete transmission of 
the recordation notice, the notice will be printed and 
mailed to the sender by U.S. Postal Service first class 
mail. Recorded documents will not be returned with 
the “Notice of Recordation.”




 

Any assignment related document submitted by 
EFS or EPAS must include:

(A)an identified application or patent number;

(B)one cover sheet to record a single transaction; 
and

(C)payment of the recordation fee by a credit 
card (use of the Credit Card form , PTO-2038 (see 
MPEP § 509), is required for the credit card information 
to be kept separate from the assignment records)
or a USPTO Deposit Account.

For an assignment document filed electronically, 
the person who signs the cover sheet can sign with 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. If EFS or EPAS is used, then 
the letters must be letters of the English alphabet, the 
numbers must be Arabic numerals, and the punctuation 
marks must be commas, periods, apostrophes, or 
hyphens, in the signature of the cover sheet.

The following documents cannot be submitted via 
EPAS:

(A)Assignments submitted concurrently with 
newly filed patent applications;

(B)Documents with two or more cover sheets 
(e.g., a single document with one cover sheet to 
record an assignment, and a separate cover sheet to 
record separately a license relating to the same property);


(C)Requests for corrections to documents 
recorded previously; and

(D)Resubmission of a non-recorded assignment.

The date of receipt accorded to an assignment document 
sent to the Office by EFS or EPAS is the date 
the complete transmission is received in the Office.

If a document submitted by EFS or EPAS is determined 
not to be recordable, the entire document, with 
its associated cover sheet, and the Office “Notice of 
Non-Recordation” will be transmitted via fax back to 
the sender. Once corrections are made, the initial submission, 
as amended, may then be resubmitted by 
mailing the corrected submission to the address set 
forth in 37 CFR 3.27. Timely submission will provide 
the sender with the benefit of the initial receipt date as 
the recordation date in accordance with 37 CFR 3.51.

The Patent and Trademark Assignment System 
assigns reel and frame numbers and superimposes 
recordation stampings on the processed and stored 
electronic images. Accordingly, copies of all recorded 
documents will have the reel and frame numbers and 
recordation stampings.

303Assignment Documents Not Endorsed 
on Pending Applications

Certified copies of patent applications as filed do 
not include an indication of assignment documents. 
Applicants desiring an indication of assignment documents 
of record should request separately certified 
copies of assignment documents and submit the fees 
required by 37 CFR 1.19.

When the assignment condition of an application is 
significant, such as when applications of different 
inventors contain conflicting claims or there is a question 
as to who should direct prosecution, it is necessary 
for the examiner to obtain assignment 
information from PALM. See MPEP §
 
320.

306Assignment of Division, Continuation, 
Substitute, and Continuation-
in-Part in Relation to Parent Application 
[R-3]

In the case of a division or continuation application, 
a prior assignment recorded against the original application 
is applied (effective) to the division or continuation 
application because the assignment recorded 
against the original application gives the assignee 
rights to the subject matter common to both applications. 
Although the assignment recorded against an 
original application is applied to the division or continuation 
application, the Office’s assignment records 
will only reflect an assignment of a division or continuation 
application (or any other application) if a 
request for recordation in compliance with 37 CFR 
3.28, accompanied by the required fee (37 CFR 3.41), 
is filed.

In the case of a substitute or continuation-in-part 
application, a prior assignment of the original application 
is not applied (effective) to the substitute or 
continuation-in-part application because the assignment 
recorded against the original application gives 
the assignee rights to only the subject matter common 
to both applications. Substitute or continuation-in-part 




 

applications require the recordation of a new 
assignment if they are to be issued to an assignee. 
See 37 CFR 3.81.



306.01Assignment of an Application Claiming 
the Benefits of a Provisional 
Application [R-3]

If an application which claims the earlier filing date 
of a provisional application under 35 U.S.C. 119(e)
includes only subject matter which formed a part of 
the provisional application, an assignment recorded 
against the provisional application will be effective in 
the later application, similar to the practice with 
respect to continuations and divisions filed under 
35 
U.S.C. 120. See MPEP § 306. If an application 
claiming the earlier filing date of a provisional application 
includes subject matter that is not common 
with subject matter of the provisional application, 
new assignment papers must be recorded for the 
 application claiming the benefit of the provisional 
application, similar to the practice with respect to 
continuations-in-part filed under 35 U.S.C. 120. See 
MPEP § 306.

307Issue to Assignee [R-3]

35 U.S.C. 152. Issue of patent to assignee.

Patents may be granted to the assignee of the inventor of record 
in the Patent and Trademark Office, upon the application made 
and the specification sworn to by the inventor, except as otherwise 
provided in this title.



37 CFR 3.81. Issue of patent to assignee.

(a)With payment of the issue fee: An application may issue 
in the name of the assignee consistent with the application’s 
assignment where a request for such issuance is submitted with 
payment of the issue fee, provided the assignment has been previously 
recorded in the Office. If the assignment has not been previously 
recorded, the request must state that the document has been 
filed for recordation as set forth in § 3.11.

(b)After payment of the issue fee: Any request for issuance 
of an application in the name of the assignee submitted after the 
date of payment of the issue fee, and any request for a patent to be 
corrected to state the name of the assignee, must state that the 
assignment was submitted for recordation as set forth in § 3.11before 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.

 Normally, for a patent to issue to an assignee, a 
request for issuance of the application in the name of 
the assignee must be filed in the United States Patent 
and Trademark Office (Office) at a date not later than 
the day on which the issue fee is paid. Such a 
request must indicate that the assignment has been 
previously recorded in the Office. If the assignment 
has not been previously recorded in the Office, the 
request must state that the document has been filed for 
recordation as set forth in 37 CFR 3.11. See 37 CFR 
3.81(a).

If a request for issuance to an assignee pursuant to 
37 CFR 3.81(b) is submitted after the day on which 
the issue fee is paid, the request under 37 CFR 3.81(b) 
must include a request for a certificate of correction 
under 37 CFR 1.323 (accompanied by the fee set forth 
in 37 CFR 1.20(a)) and the processing fee set forth in 
37 CFR 1.17(i). The request under 37 CFR 3.81(b) 
must state that the assignment was submitted for 
recordation as set forth in 37 CFR 3.11 before issuance 
of the patent. The Office will issue a certificate 
of correction to reflect that the patent issued to the 
assignee provided the requirements of 37 CFR 3.81(b) 
and 37 CFR 1.323 are complied with.

Only the first appearing name of an assignee will be 
printed on the patent where multiple names for the 
same party are identified on the Fee(s) Transmittal 
form, PTOL-85B. Such multiple names may occur 
when both a legal name and an “also known as” or 
“doing business as” name is also included. This printing 
practice will not, however, affect the existing 
practice of recording assignments with the Office in 
the Assignment Division. The assignee entry on form 
PTOL-85B should still be completed to indicate the 
assignment data as recorded in the Office. For example, 
the assignment filed in the Office and, therefore, 
the PTOL-85B assignee entry might read “Smith 
Company doing business as (d.b.a.) Jones Company.” 
The assignee entry on the printed patent will read 
“Smith Company.” 

Irrespective of whether the assignee participates in 
the prosecution of the application, the patent issues to 
the assignee if so indicated on the Fee(s) Transmittal 
form PTOL-85B. Unless an assignee’s name 




 

and address are identified in item 3 of the Fee(s)
Transmittal form PTOL-85B, the patent will issue to 
the applicant. Assignment data printed on the patent 
will be based solely on the information so supplied. 
Assignment information printed on a patent is not 
updated after a patent is issued, and may not be reflective 
of the assignment recorded in the Office subsequent 
to the issuance of the patent. Detailed 
assignment information can be found by performing 
an assignment search on the USPTO Internet website, 
and by inspecting the recorded assignment documents.


A request for a certificate of correction under 
37 
CFR 1.323 (see MPEP § 1481 and § 1485) arising 
from incomplete or erroneous assignee’s name furnished 
, or a missing assignee’s name, in item 3 of 
PTOL-85B will not be granted unless a request 
under 37 CFR 3.81(b) has been granted and the 
assignment was submitted for recordation as set forth 
in 37 CFR 3.11 before the patent issued. Any such 
request under 37 CFR 3.81(b) should be directed to 
the Office of Petitions and should include: 

(A)the processing fee required by 37 CFR 
1.17(i);

(B)a request for issuance of the application in 
the name of the assignee, or a request that a patent be 
corrected to state the name of the assignee; 

(C)a statement that the assignment was submitted 
for recordation as set forth in 37 CFR 3.11before the issuance of the patent; and 

(D)a request for a certificate of correction 
under 37 CFR 1.323 accompanied by the fee set forth 
in 37 CFR 1.20(a).

309Restrictions Upon Employees of 
U.S. Patent and Trademark Office 
[R-3]

35 U.S.C. 4. Restrictions on officers and employees as to 
interests in patents.

Officers and employees of the Patent and Trademark Office 
shall be incapable, during the period of their appointments and for 
one year thereafter, of applying for a patent and of acquiring, 
directly or indirectly, except by inheritance or bequest, any patent 
or any right or interest in any patent, issued or to be issued by the 
Office. In patents applied for thereafter they shall not be entitled 
to any priority date earlier than one year after the termination of 
their appointment.

310Government License Rights toContractor-Owned Inventions 
Made Under Federally Sponsored 
Research and Development [R-3]

Where a Government contractor retains U.S. 
domestic patent rights, the contractor is under an obligation 
by virtue of 35 U.S.C. 202(c)(6) to include the 
following statement at the beginning of the application 
and any patents issued thereon:

“The U.S. Government has a paid-up license in this 
invention and the right in limited circumstances to 
require the patent owner to license others on reasonable 
terms as provided for by the terms of (contract 
No. or Grant No.) awarded by (Agency).”

If reference is made in the first sentence(s) of the 
specification following the title to prior copending 
applications of the applicant  (37 CFR 1.78(a)
and MPEP § 201.11),  the above “Government 
License Rights” statement should follow immediately 
as the second paragraph of the specification.

If there is no reference to an earlier application, the 
“Government License Rights” statement should 
appear as the first paragraph of the specification. See 
37 
CFR 1.77.

311Filing of Notice of Arbitration 
Awards [R-3]

35 U.S.C. 294. Voluntary arbitration.

(a)A contract involving a patent or any right under a patent 
may contain a provision requiring arbitration of any dispute relating 
to patent validity or infringement arising under the contract. In 
the absence of such a provision, the parties to an existing patent 
validity or infringement dispute may agree in writing to settle 
such dispute by arbitration. Any such provision or agreement shall 
be valid, irrevocable, and enforceable, except for any grounds that 
exist at law or in equity for revocation of a contract.



(b)Arbitration of such disputes, awards by arbitrators, and 
confirmation of awards shall be governed by title 9, to the extent 
such title is not inconsistent with this section. In any such arbitration 
proceeding, the defenses provided for under section 282 of 
this title shall be considered by the arbitrator if raised by any party 
to the proceeding.

(c)An award by an arbitrator shall be final and binding 
between the parties to the arbitration but shall have no force or 
effect on any other person. The parties to an arbitration may agree 
that in the event a patent which is the subject matter of an award is 
subsequently determined to be invalid or unenforceable in a judgment 
rendered by a court of competent jurisdiction from which no 
appeal can or has been taken, such award may be modified by any 




 

court of competent jurisdiction upon application by any party to 
the arbitration. Any such modification shall govern the rights and 
obligations between such parties from the date of such modification.


(d)When an award is made by an arbitrator, the patentee, his 
assignee or licensee shall give notice thereof in writing to the 
Director. There shall be a separate notice prepared for each patent 
involved in such proceeding. Such notice shall set forth the names 
and addresses of the parties, the name of the inventor, and the 
name of the patent owner, shall designate the number of the 
patent, and shall contain a copy of the award. If an award is modified 
by a court, the party requesting such modification shall give 
notice of such modification to the Director. The Director shall, 
upon receipt of either notice, enter the same in the record of the 
prosecution of such patent. If the required notice is not filed with 
the Director, any party to the proceeding may provide such notice 
to the Director.

(e)The award shall be unenforceable until the notice 
required by subsection (d) is received by the Director.

37 CFR 1.335. Filing of notice of arbitration awards.

(a)Written notice of any award by an arbitrator pursuant to 
35 
U.S.C. 294 must be filed in the Patent and Trademark Office 
by the patentee, or the patentee’s assignee or licensee. If the award 
involves more than one patent a separate notice must be filed for 
placement in the file of each patent. The notice must set forth the 
patent number, the names of the inventor and patent owner, and 
the names and addresses of the parties to the arbitration. The 
notice must also include a copy of the award.

(b)If an award by an arbitrator pursuant to 35 U.S.C. 294 is 
modified by a court, the party requesting the modification must 
file in the Patent and Trademark Office, a notice of the modification 
for placement in the file of each patent to which the modification 
applies. The notice must set forth the patent number, the 
names of the inventor and patent owner, and the names and 
addresses of the parties to the arbitration. The notice must also 
include a copy of the court’s order modifying the award.

(c)Any award by an arbitrator pursuant to 35 U.S.C. 294shall be unenforceable until any notices required by paragraph (a) 
or (b) of this section are filed in the Patent and Trademark Office. 
If any required notice is not filed by the party designated in paragraph 
(a) or (b) of this section, any party to the arbitration proceeding 
may file such a notice.

The written notices required by this section should 
be directed to the attention of the Office of the Solicitor. 
The Office of the Solicitor will be responsible for 
processing such notices.

313Recording of Licenses, Security 
Interests, and Other Documents 
Other Than Assignments [R-3]

In addition to assignments and documents required 
to be recorded by Executive Order 9424, documents 
affecting title to a patent or application will be 
recorded in the Assignment Division of the United 
States Patent and Trademark Office (Office). Other 
documents not affecting title may be recorded at the 
discretion of the Director. 37 CFR 3.11(a).

Thus, some documents which relate to patents or 
applications will be recorded, although they do not 
constitute a transfer or change of title. Typical of these 
documents which are accepted for recording are 
license agreements and agreements which convey a 
security interest. Such documents are recorded in the 
public interest in order to give third parties notification 
of equitable interests or other matters relevant to 
the ownership of a patent or application.

Any document returned unrecorded, which the 
sender nevertheless believes represents an unusual 
case which justifies recordation, may be submitted to 
the Office of Petitions with a petition under 37 CFR 
1.181 requesting recordation of the document.

The recordation of a document is not a determination 
of the effect of the document on the chain of title. 
The determination of what, if any, effect a document 
has on title will be made by the Office at such times as 
ownership must be established to permit action to be 
taken by the Office in connection with a patent or an 
application. See MPEP §
 
324.

314Certificates of Change of Name orof Merger

Certificates issued by appropriate authorities showing 
a change of name of a business or a merger of 
businesses are recordable. Although a mere change of 
name does not constitute a change in legal entity, it is 
properly a link in the chain of title. Documents of 
merger are also proper links in the chain of title. They 
may represent a change of entity as well as a change 
of name.

315Indexing Against a Recorded Certificate 
[R-3]

Prior to amendment of the Rules of Practice to add 
Part 3 
to 37 CFR, it had been the practice of the 
United States Patent and Trademark Office (Office) to 
process requests for “indexing” or “cross-referencing” 
additional patent numbers or application numbers 
against a document, other than an assignment, previously 
recorded in the Assignment Division, upon submission 
of a transmittal letter and recording fee. The 




 

Office no longer processes such indexing requests. 
Such requests do not comply with 37 CFR 3.11, 3.28, 
and 3.31, which require that each request for recordation 
include the document to be recorded and a cover 
sheet.

Therefore, even where a document has already 
been recorded in the Assignment Division in connection 
with a patent or patent application, a party that 
wishes recordation of that document with respect to 
additional patents and/or patent applications must 
submit the following to the Assignment Division:

(A) a  copy of the original document (which 
may consist of the previously recorded papers on 
which the Assignment Division has stamped the reel 
and frame numbers at which they are recorded, or a 
copy of such papers);

(B)a completed cover sheet (see 37 CFR 3.31and MPEP § 302.07); and 

(C)the appropriate recording fee (see 37 CFR 
1.21(h) and 3.41).

The Office will assign a new recording date to that 
submission, update the assignment database, and 
microfilm the cover sheet and document, which shall 
become part of the official record.

317Handling of Documents in theAssignment Division [R-3]

All documents and cover sheets submitted for 
recording are examined for formal requirements in the 
Assignment Division in order to separate documents 
which are recordable from those which are not recordable.


Documents and cover sheets that are considered not 
to be recordable are returned to the sender by the 
Assignment Division with an explanation. If the 
sender disagrees or believes that the document represents 
an unusual case which justifies recordation, the 
sender may present the question to the Director by 
way of petition under 37 
CFR 1.181, filed with the 
Office of Petitions.

After an assignment and cover sheet have been 
recorded, they will be returned to the name and 
address indicated on the cover sheet to receive correspondence, 
showing the reel and frame number.

317.01Recording Date

37 CFR 3.51. Recording date.

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.

The date of recording of a document is the date the 
document meeting the requirements for recording set 
forth in the regulations is filed in the Office. A document 
which does not comply with the identification 
requirements of 37 CFR 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 when a 
correspondence address is available.

317.02Correction of Unrecorded 
Returned Documents and Cover 
Sheets [R-3]

Assignment documents and cover sheets, or copies 
of the same, which are returned by Assignment 
Division will be stamped with the original date of 
receipt by the Office and 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 receipt of the papers as the date of 
recording of the document. See 
37 CFR 3.51. The 
certification procedure under 37 
CFR 1.8 or the 
“Express Mail” procedure under 37 
CFR 1.10 may be 
used for resubmissions of returned papers to obtain 
the benefit of the date of deposit in the United States 




 

Postal Service to establish that the papers were 
returned within the time period specified. Instead of 
mailing or faxing the returned documents and cover 
sheets, the returned documents may be resubmitted 
using the Electronic Patent Assignment System. If 
the returned papers are not corrected and resubmitted 
within the specified period, the date of receipt 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.

317.03Effect of Recording 

37 CFR 3.54. Effect of recording.

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.

37 CFR 3.56. Conditional assignments.

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 canceled 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.

The recording of a document 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 
or patent. 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. See MPEP § 324.

37 CFR 3.56 provides that an assignment, which at 
the time of its execution is conditional on a given act 
or event, will be treated by the Office as an absolute 
assignment. This rule serves as notification as to how 
a conditional assignment will be treated by the Office 
in any proceeding requiring a determination of the 
owner of an application, patent, or registration. Since 
the Office will not determine whether a condition has 
been fulfilled, the Office will treat the submission of 
such an assignment for recordation as signifying that 
the act or event has occurred. A security agreement 
that does not convey the right, title, and interest of a 
patent property is not a conditional assignment.

318Documents Not to be Placed in Files

Assignment documents submitted for recording 
should not be placed directly in application or patent 
files, but should be forwarded to Assignment Division 
for recording. 

320Title Reports [R-5]

The “title report” is a form which can be used under 
certain circumstances by the Assignment Division to 
report to someone within the Office the name of the 
owner of an application or patent as shown by the 
Assignment Division records on the date the title 
report is made. For example, a title report is requested 
by the Reexamination Preprocessing Staff when a 
request for reexamination is filed. Title reports may 
not be ordered by applicants or attorneys. 

Information as to the title is not normally required 
by the examiner to examine an application. It is only 
in limited circumstances when the ownership 
becomes an issue and an examiner needs a title report. 
See MPEP § 303. Examiners may obtain a title report 
using the PALM Intranet (select “General Information,” 
insert the appropriate application number, select 
“Search,” select “Assignments”). The screen resulting 
from the search may be printed to yield the copy 
of the title report.

NOTE: The public can request a certified abstract 
of title. The fee for this service is set forth at 37 CFR 
1.19(b)(4). See MPEP § 301.01 for a discussion of 
which assignment records are publicly available.

323Procedures for Correcting Errors 
in Recorded Assignment Document[R-3]

An error in a recorded assignment document will be 
corrected by Assignment Division provided a “corrective 
document” is submitted. The “corrective document” 
must include the following:

(A)A copy of the original assignment document 
with the corrections made therein. The corrections 
must be initialed and dated by the party 
conveying the interest; and

(B)A new Recordation Form Cover Sheet (form 
PTO-1595) (See MPEP § 302.07). 




 

The new recordation form cover sheet must identify 
the submission as a “corrective document” submission 
and indicate the reel and frame number where the 
incorrectly recorded assignment document appears. 
The person signing the new recordation form cover 
sheet must state that the information provided on the 
new cover sheet is true and correct and that any copy 
submitted is a true copy of the original document. The 
original cover sheet should be submitted with the corrective 
document. The corrective document will be 
recorded and given a new reel and frame number and 
recording date. The recording fee set forth in 37 CFR 
1.21(h) is required for each patent application and 
patent against which the corrective document is being 
recorded. See MPEP § 302.06. 

Corrections may be made on the original assignment 
document, for example, by lining out an incorrect 
patent or application number in a merger or 
change of name (see MPEP § 314). 

Office policy regarding recordation of assignment 
documents is directed toward maintaining a complete 
history of claimed interests in property and, therefore, 
recorded assignment documents will not be expunged 
even if subsequently found to be invalid. See In re 
Ratny, 24 USPQ2d 1713 (Comm’r Pat. 1992). Once 
a document is recorded with the Assignment Services 
Division, the Assignment Services Division will not 
remove the papers from the record relating to that 
application or patent. See MPEP § 323.01(d).

323.01Correction of Error in Recorded 
Cover Sheet [R-3]



37 CFR 3.34. Correction of cover sheet errors.

(a)An error in a cover sheet recorded pursuant to §
 
3.11will 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.

Any alleged error in a recorded cover sheet will 
only be corrected if the error is apparent from a comparison 
with the recorded assignment document. The 
corrected cover sheet should be directed to Assignment 
Division.

During the recording process, the Assignment 
Services Division will check to see that a cover sheet 
is complete and record the data exactly as it appears 
on the cover sheet. The Assignment Services Division 
does not compare the cover sheet with the assignment 
document (or other document affecting title). Once 
the document is recorded, the Office will issue a 
notice of recordation.

The party recording the document should carefully 
review the notice of recordation.

Typographical errors made by the Office will be 
corrected promptly and without charge upon written 
request directed to the Assignment Services Division. 
For any other error, the party recording the document 
is responsible for filing the papers and paying the 
recordation fees necessary to correct the error, using 
the procedures set forth in MPEP § 323.01(a) through 
§ 323.01(c).



323.01(a)Typographical Errors in Cover 
Sheet [R-3]

A party who wishes to correct a typographical error 
on a recorded cover sheet must submit the following 
to the Assignment Services Division:

(A)a copy of the originally recorded assignment 
document (or other document affecting title);

(B)a corrected cover sheet; and

(C)the required fee for each application or patent 
to be corrected (37 CFR 3.41). 

See 37 CFR 3.34. The party requesting correction 
should also submit a copy of the original cover sheet, 
to facilitate comparison of the corrected cover sheet 
with the originally recorded document.

The party filing the corrected cover sheet should 
check the box titled “Other” in the area of the sheet 
requesting “Nature of Conveyance,” and indicate that 
the submission is to correct an error in a cover sheet 
previously recorded. The party should also identify 
the reel and frame numbers (if known), and the nature 
of the correction (e.g., “correction to the spelling of 
assignor’s name” or “correction of application number 
or patent number”). The Office will then compare 
the corrected cover sheet with the original cover sheet 
and the originally recorded assignment document (or 
other document affecting title) to determine whether 
the correction is typographical in nature. If the error is 




 

typographical in nature, the Assignment Services 
Division will record the corrected cover sheet and 
correct the Assignment Historical Database.

I.TYPOGRAPHICAL ERRORS IN COVER 
SHEET THAT DO NOT AFFECT TITLE 
TO APPLICATION OR PATENT

If the original cover sheet contains a typographical 
error that does not affect title to the application or 
patent against which the original assignment or name 
change is recorded, the Assignment Services Division 
will correct the Assignment Historical Database and 
permit the recording party to keep the original date of 
recordation.

II.TYPOGRAPHICAL ERRORS IN COVER 
SHEET THAT DO AFFECT TITLE TO 
APPLICATION OR PATENT

If the original cover sheet contains a typographical 
error that affects title to the application or patent 
against which the assignment or name change is 
recorded, the recording party will not be entitled to 
keep the original date of recordation. Rather, the 
Assignment Services Division will correct its automated 
records and change the date of recordation to 
the date the corrected cover sheet was received in the 
Office.

323.01(b)Typographical Errors in Recorded 
Assignment Document 
[R-3]

If there is an error in the recorded assignment document 
(or other document affecting title) rather than in 
the cover sheet, the party responsible for an erroneous 
document (e.g., the assignor) must either create and 
record a new document or make corrections to the 
original document and re-record it. If an assignor is 
not available to correct an original document or execute 
a new one, the assignee may submit an affidavit 
or declaration in which the assignee identifies the 
error and requests correction. The affidavit or declaration 
must be accompanied by a copy of the originally 
recorded papers, a cover sheet, and the required fee 
for each application or patent to be corrected (37 CFR 
3.41). See In re Abacab International Computers Ltd., 
21 USPQ2d 1078 (Comm’r Pat. 1987).

323.01(c)Assignment or Change of Name 
Improperly Filed and Recorded 
by Another Person Against 
Owner’s Application or Patent 
[R-3]

When the owner of an application or registration 
discovers that due to a typographical error, another 
party has improperly recorded an assignment or name 
change against the owner’ s application or patent, the 
owner must correct the error by having a corrected 
cover sheet filed with the Assignment Services Division.


The owner should contact the party who recorded 
the papers with the erroneous information and request 
that such party record corrective papers. However, if 
the party cannot be located or is unwilling to file corrective 
papers, then the true owner must record the 
necessary papers with the Assignment Services Division 
to correct the error. 

Specifically, the owner should submit the following 
to the Assignment Services Division: 

(A)a completed cover sheet identifying the application 
or patent against which the assignment was 
improperly recorded; 

(B)an affidavit or declaration (1) identifying 
itself as the correct owner, (2) stating that the previously 
recorded document was submitted with erroneous 
information, and (3) providing the reel and frame 
number of the previously recorded document; and 

(C)the required fee (37 CFR 3.41) for each application 
or patent to be corrected. 

The affidavit or declaration should include a summary 
of the true chain of title to make it clear that the 
chain of title for the application or patent identified 
should not be considered altered by the incorrect 
assignment or name change, and a statement that the 
original applicant or patentee or last correct assignee 
has been, and continues to be, the owner of the application, 
or patent at issue. 

On the corrected cover sheet, the owner should 
check the box titled “Other” in the area of the cover 
sheet requesting the “Nature of Conveyance,” and 
indicate that the submission is to correct an error 
made in a previously recorded document that erroneously 
affects the identified application(s), or patent(s). 
The party should also write the name of the correct 




 

owner in both the box requesting the name of the conveying 
party and the box requesting the name and 
address of the receiving party; this is to make it clear 
that ownership never changed and that any assignment 
or name change recorded against the application(
s) or patent(s) was erroneous. 

323.01(d)Expungement of Assignment 
Records [R-3]

Petitions to correct, modify or “expunge” assignment 
records are rarely granted. Such petitions are 
granted only if the petitioner can prove that: 

(A)the normal corrective procedures outlined in 
MPEP § 323.01(a) through § 323.01(c) will not provide 
the petitioner with adequate relief; and 

(B)the integrity of the assignment records will 
not be affected by granting the petition.

Even if a petition to “expunge” a document is 
granted with respect to a particular application or 
patent, the image of the recorded document will 
remain in the records of the Assignment Services 
Division at the same reel and frame number, and the 
image will appear when someone views that reel and 
frame number. The Office will, however, delete the 
links to the application or patent that was the subject 
of the petition, so that no information about the 
recorded document will appear when someone 
searches for that application or patent number in the 
Assignment Historical Database.

324Establishing Right of Assignee To 
Take Action [R-5]

37 CFR 3.71. Prosecution by assignee.

(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).

37 CFR 3.73. Establishing right of assignee to take action.

(a)The inventor is presumed to be the owner of a patent 
application, and any patent that may issue therefrom, unless there 
is an assignment. The original applicant is presumed to be the 
owner of a trademark application or registration, unless there is an 
assignment.

(b)(1) In order to request or take action in a patent or trademark 
matter, the assignee must establish its ownership of the 
patent or trademark property of paragraph (a) of this section to the 
satisfaction of the Director. The establishment of ownership by 
the assignee may be combined with the paper that requests or 
takes the action. Ownership is established by submitting to the 
Office a signed statement identifying the assignee, accompanied 
by either:



(i)Documentary evidence of a chain of title from the 
original owner to the assignee (e.g., copy of an executed assignment). 
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 owner or assignee of a patent property can 
take action in a patent application or patent proceeding 
in numerous instances. The owner or assignee can 
sign a reply to an Office action (37 CFR 1.33(b)(3)
and (4)), a request for a continued prosecution application 
under 37 CFR 1.53(d) (MPEP § 201.06(d)), a 
terminal disclaimer (MPEP § 1490), Fee(s) Transmittal 
(PTOL-85B) (MPEP §
 
1306), or a request for status 
of an application (MPEP §
 
102). The owner or 
assignee can file an application under 37 CFR 1.47(b) 
(MPEP § 409.03(b)), appoint its own registered patent 
practitioner to prosecute an application (37 CFR 
1.32 and MPEP §
 
402.07), grant a power to inspect an 
application (MPEP § 104), and acquiesce to express 
abandonment of an application (MPEP §
 
711.01). The 
owner or assignee consents to the filing of a reissue 
application (MPEP § 1410.01), and to the correction 
of inventorship (MPEP § 201.03 or § 1481). 

I.THE ASSIGNEE/OWNER THAT CAN 
TAKE ACTION IN PATENT MATTERS

 The provisions of 37 CFR 3.71(b)(1) and (2) identify 
the owner or assignee that can take action in 
patent matters, e.g., the assignee which may conduct 
the prosecution of a U.S. national application for a 
patent (35 U.S.C. 111(a)), or any other patent proceeding 
(e.g., a reexamination proceeding, an interference 
proceeding). A national patent application is 
owned by one of the following individual or composite 
entities: 

(A)the inventor(s);

(B)an assignee or multiple assignees of the 
inventor(s); or

(C)some combination of the assignee(s), and 
inventor(s) who have not assigned away their right, 
title and interest in the application.

 Pursuant to 37 CFR 3.73(b), a party must be established 
as the assignee by satisfying the requirements 
of that subsection, in order to be recognized as an 
owner or part owner, for purposes of taking action in 
patent matters before the Office.

As discussed in subsection II below, all parties having 
any portion of the ownership must join in “taking 
action” (i.e., act together as a composite entity) in 
order to be entitled to conduct the prosecution in 
patent matters. 

A. Individual and Partial Assignees

 If there is a single assignee of the entire right, title 
and interest in the patent application, 37 CFR 
3.71(b)(1) provides that the single assignee (i.e., individual 
assignee) may act alone to conduct the prosecution 
of an application or other patent proceeding 
(upon complying with 37 CFR 3.73(b)). 

If there is no assignee of the entire right, title and 
interest of the patent application, then two possibilities 
exist: 

(A)The application has not been assigned, and 
ownership resides solely in the inventor(s) (i.e., the 
applicant(s)). In this situation, 37 CFR 3.71 does not 
apply, since there is no assignee, and the combination 
of all inventors is needed to conduct the prosecution 
of an application.

(B)The application has been assigned by at least 
one of the inventors, and there is thus at least one 
“partial assignee.” As defined in 37 CFR 3.71(b)(2), a 
partial assignee is any assignee of record who has less 
than the entire right, title and interest in the application. 
The application is owned by the combination of 
all partial assignees and all inventors who have not 
assigned away their right, title and interest in the 
application.

 Where at least one inventor retains an ownership 
interest together with the partial assignee(s), the combination 
of all partial assignees and inventors retaining 
ownership interest is needed to conduct the 
prosecution of an application, unless one or more 
inventors have refused to join in the filing of the 
application and a petition under 37 CFR 1.47 has been 
granted. If a petition under 37 CFR 1.47 has been 
granted, then the assignee need only be the assignee 
of the entire interest of the 37 CFR 1.47 applicant to 
sign a power of attorney. See 37 CFR 1.32(b)(4). 
Where an applicant retains an ownership interest, the 
combination of all partial assignees and the applicant 




 

with the ownership interest is needed to conduct the 
prosecution of an application. 

Where a reissue application is filed to correct 
inventorship in the patent by the deletion of the name 
of inventor X and inventor X has not assigned his/her 
rights to the patent, inventor X has an ownership 
interest in the patent. Inventor X must consent to the 
filing of the reissue application, even though inventor 
X is being deleted and need not sign the reissue oath 
or declaration. If inventor X has assigned his/her 
rights to the patent, then inventor X’s assignee must 
consent to the filing of the reissue application.

B. Example

 Inventors A and B invent a process and file their 
application, signing the declaration for the patent 
application. Inventors A and B together may conduct 
prosecution. Inventor A then assigns all his/her rights 
in the application to Corporation X. As soon as Corporation 
X (now a partial assignee) is made of record 
in the application as a partial assignee (by filing a 
statement pursuant to 37 
CFR 3.73(b) stating fifty 
percent ownership), Corporation X and Inventor B 
together may conduct prosecution. Corporation X and 
Inventor B then both assign their rights in the application 
to Corporation Y. As soon as Corporation Y (now 
an assignee of the entire right, title and interest) is 
made of record in the application as the assignee (by 
filing a statement pursuant to 37 CFR 3.73(b) stating 
one-hundred percent ownership), Corporation Y may, 
by itself, conduct prosecution.

II.ESTABLISHING OWNERSHIP

When an assignee first seeks to take action in a 
matter before the Office with respect to a patent application, 
patent, or reexamination proceeding, the 
assignee must establish its ownership of the property 
to the satisfaction of the Director. 37 CFR 3.73(b). 
The assignee’s ownership may be established under 
37 CFR 3.73(b) by submitting to the Office, in the 
Office file related to the matter in which action is 
sought to be taken:

(A)documentary evidence of a chain of title from 
the original owner to the assignee (e.g., copy of an 
executed assignment submitted for recording) and a 
statement affirming that the documentary evidence of 
the chain of title from the original owner to the 
assignee was, or concurrently is, submitted for recordation 
pursuant to 37 CFR 3.11; or 

(B)a statement specifying, by reel and frame 
number, where such evidence is recorded in the 
Office.

Documents submitted to establish ownership 
are required to be recorded, or submitted for 
recordation pursuant to 37 CFR 3.11, as a condition 
to permitting the assignee to take action in a matter 
pending before the Office.

The action taken by the assignee, and the 37 CFR 
3.73(b) submission establishing that the assignee is 
the appropriate assignee to take such action, can be 
combined in one paper. 

The 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. 
37 
CFR 3.73(c). If the submission establishing ownership 
is not present, the action sought to be taken will 
not be given effect. If the submission establishing 
ownership is submitted at a later date, that date will be 
the date of the request for action or the date of the 
assignee’s action taken.

The submission establishing ownership by the 
assignee must be signed by a party who is authorized 
to act on behalf of the assignee. See discussion below. 
Once 37 
CFR 3.73(b) is complied with by an 
assignee, that assignee may continue to take action in 
that application, patent, or reexamination proceeding 
without filing a 37 
CFR 3.73(b) submission each 
time, provided that ownership has not changed. 

The submission establishing ownership by the 
assignee pursuant to 37 CFR 3.73(b) is generally 
referred to as the “statement under 37 CFR 3.73(b)” 
or the “37 CFR 3.73(b) statement.” A duplicate copy 
of the 37 CFR 3.73(b) statement is not required and 
should not be submitted. See 37 CFR 1.4(b) and 
MPEP § 502.04.

III.CONTINUING APPLICATIONS

 When an assignee files a continuation or divisional 
application under 37 CFR 1.53, other than a continued 
prosecution application (CPA) under 37 CFR 1.53(d), 
the application papers must:

(A)refer to a statement filed under 37 CFR 
3.73(b) in the parent application;




 

(B)contain a copy of a statement filed under 
37 
CFR 3.73(b) in the parent application; or

(C)contain a newly executed statement under 
37 
CFR 3.73(b).

 When a continuation-in-part application is filed by 
an assignee, a newly executed statement under 
37 
CFR 3.73(b) must be filed. When a CPA under 
37 
CFR 1.53(d) is filed, the statement filed under 
37 
CFR 3.73(b) in the parent application will serve as 
the statement for the CPA. 

IV.REQUESTS FOR CONTINUED EXAMINATION 


 Where a Request for Continued Examination of an 
application is filed under 37 CFR 1.114 (which can be 
filed on or after May 29, 2000 for an application filed 
on or after June 8, 1995), the application is not considered 
to be abandoned; rather the finality of the 
Office action is withdrawn and the prosecution continues. 
Thus, the statement under 37 CFR 3.73(b) in 
the application will continue to serve as the statement 
establishing ownership.

V.PARTY WHO MUST SIGN

The submission establishing ownership must be 
signed by a party authorized to act on behalf of the 
assignee. The submission under 37 CFR 3.73(b) may 
be signed on behalf of the assignee in the following 
manner if the assignee is an organization (e.g., corporation, 
partnership, university, government agency, 
etc.):

(A)The submission may be signed by a person in 
the organization having apparent authority to sign on 
behalf of the organization. 37 CFR 3.73(b)(2)(ii). An 
officer (chief executive officer, president, vice-president, 
secretary, or treasurer) is presumed to have 
authority to sign on behalf of the organization. The 
signature of the chairman of the board of directors is 
acceptable, but not the signature of an individual 
director. Modifications of these basic titles are acceptable, 
such as vice-president for sales, executive vice-
president, assistant treasurer, vice-chairman of the 
board of directors. In foreign countries, a person who 
holds the title “Manager” or “Director” is normally an 
officer and is presumed to have the authority to sign 
on behalf of the organization. A person having a title 
(administrator, general counsel) that does not clearly 
set forth that person as an officer of the assignee is not 
presumed to have authority to sign the submission on 
behalf of the assignee. A power of attorney (37 CFR 
1.32(b)(4)) to a patent practitioner to prosecute a 
patent application executed by the applicant or the 
assignee of the entire interest does not make that practitioner 
an official of an assignee or empower the 
practitioner to sign the submission on behalf of the 
assignee.

(B)The submission may be signed by any person, 
if the submission sets forth that the person signing is 
authorized (or empowered) to act on behalf of the 
assignee, i.e., to sign the submission on behalf of the 
assignee. 37 CFR 3.73(b)(2)(i).

(C)The submission may be signed by a person 
empowered by an organizational resolution (e.g., corporate 
resolution, partnership resolution) to sign the 
submission on behalf of the assignee, if a copy of the 
resolution is, or was previously, submitted in the 
record.

Where a submission does not comply with (A), (B), 
or (C) above, evidence of the person’s authority to 
sign will be required.

VI.WHEN OWNERSHIP MUST BE ESTABLISHED


Examples of situations where ownership must be 
established under 37 CFR 3.73(b) are when the 
assignee: signs a request for a continued prosecution 
application under 37 
CFR 1.53(d), unless papers 
establishing ownership under 37 CFR 3.73(b) were 
filed in the prior application and ownership has not 
changed (MPEP § 201.06(d)); signs a request for status 
of an application or gives a power to 
inspect an 
application (MPEP § 102 and § 104); acquiesces to 
express abandonment of an application (MPEP 
§
 
711.01); appoints its own registered attorney or 
agent to prosecute an application (37 CFR 3.71 and 
MPEP §
 
402.07); signs a terminal disclaimer (MPEP 
§ 1490); consents to the filing of a reissue application 
(MPEP §
 
1410.01); consents to the correction of 
inventorship (MPEP § 201.03 or § 1481); files an 
application under 37 
CFR 1.47(b) (MPEP 
§
 
409.03(b)) or 37 CFR 1.425; signs a Fee(s) Transmittal 
(PTOL-85B) (MPEP §
 
1306); or signs a reply 
to an Office action.




 

VII.WHEN OWNERSHIP NEED NOT BE 
ESTABLISHED

Examples of situations where ownership need not 
be established under 37 CFR 3.73(b) are when the 
assignee: signs a request for a continued prosecution 
application under 37 CFR 1.53(d), where papers 
establishing ownership under 37 CFR 3.73(b) were 
filed in the prior application and ownership has not 
changed (MPEP § 201.06(d)); signs a small entity 
statement (MPEP § 509.03); signs a statement of 
common ownership of two inventions (MPEP § 
706.02(l)(2)); signs a NASA or DOE property rights 
statement (MPEP § 151); signs an affidavit under 37 
CFR 1.131 where the inventor is unavailable (MPEP 
§ 715.04); signs a certificate under 37 CFR 1.8(MPEP § 512); or files a request for reexamination of 
a patent under 37 CFR 1.510 (MPEP § 2210).

VIII. MULTIPLE ASSIGNEES

When an assignee seeks to take action in a matter 
before the Office with respect to a patent application, 
patent, or reexamination proceeding and the right, 
title, and interest therein is held by more than one 
assignee, each partial assignee must provide a submission 
under 37 CFR 3.73(b). In each submission, the 
extent of each assignee’s interest must be set forth so 
that the Office can determine whether it has obtained 
action by the entirety of the right, title and interest 
holders (owners). 37 CFR 3.73(c)(2). If the extent of 
the partial assignee’s ownership interest is not set 
forth in the submission under 37 CFR 3.73(b), the 
Office may refuse to accept the submission as an 
establishment of ownership interest. 

IX.CONFLICTING 37 CFR 3.73(b) STATEMENTS


Where there are two or more conflicting 37 CFR 
3.73(b) statements in an application or other Office 
proceeding, the statement with the latest date of submission 
to the Office will normally control as to 
establishment of the assignee. If, however, the ownership 
established as controlling is contested on the 
record by another party who has submitted a conflicting 
37 CFR 3.73(b) statement, then the application or 
other proceeding shall be forwarded by the Office 
official in charge of the application or other proceeding 
to the Office of Patent Legal Administration for 
resolution of the ownership question. Generally, 
where there are two or more conflicting 37 CFR 
3.73(b) statements in an application, the ownership 
entity that filed that application will be permitted to 
conduct the prosecution, and the other party that submitted 
a 37 CFR 3.73(b) statement to establish its 
ownership may wish to consider filing an application 
under 37 CFR 1.47.

X. FORMS

Form PTO/SB/96 may be used to establish ownership 
under 37 CFR 3.73(b).

Form PTO/SB/96. Statement Under 37 CFR 3.73(b)Statement Under 37 CFR 3.73(b)

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