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307 Issue to Assignee - 300 Ownership and Assignment
307 Issue to Assignee
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(s) of the assignee(s) consistent with the application's assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previously recorded in the Office. If the assignment has not been previously recorded, the request should be accompanied by the assignment and either a direction to record the assignment in the Office pursuant to § 3.28, or a statement under § 3.73(b).
(b) After payment of the issue fee: An application may issue in the name(s) of the assignee(s) consistent with the application's assignment where a request for such issuance along with the processing fee set forth in § 1.17(i) of this chapter is submitted after the date of payment of the issue fee, but prior to issuance of the patent, provided the assignment has been previously recorded in the Office. If the assignment has not been previously recorded, the request should be accompanied by the assignment and either a direction to record the assignment in the Office pursuant to § 3.28, or a statement under § 3.73(b).
(c) Partial assignees.
(1) If one or more assignee(s) together with one or more inventor(s) hold the entire right, title, and interest in the application, the patent may issue in the names of the assignee(s) and the inventor(s).
(2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.
Normally, for a patent to issue to an assignee, a request for issuance of the application in the name(s) of the assignee(s) 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. If the request for such issuance is submitted after the day on which the issue fee is paid, the patent may issue to an assignee upon submission of a request under 37 CFR 3.81(b) along with the processing fee set forth in 37 CFR 1.17(i). The extent to which the Office can comply with such a request will depend upon when the request is filed, the time it takes to match the request with the file, and whether there is sufficient time for the appropriate Office official to act on the request before the date of issue.
37 CFR 3.81 permits proof of the application's assignment to be submitted so that a patent may issue in the name(s) of the assignee(s) consistent with the application's assignment. The prior requirement for submitting a copy of an actual assignment for recording (in the assignment records of the Office) has been replaced with a requirement that proof of the assignment be submitted pursuant to 37 CFR 3.73(b) (which may include a copy of the assignment, or alternatively, may make reference to a reel and frame number if the assignment is recorded in the Office assignment records). Recording of the assignment is not required; only proof of its existence is required. Reliance may be had on a 37 CFR 3.73(b) statement already of record in the application, if the statement is still accurate at the time the request for issue of the application in the name(s) of the assignee(s) is submitted.
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 Issue Fee 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 Issue Fee Transmittal form PTOL-85B. Unless an assignee's name and address are identified in item 3 of the Issue Fee 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.
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 in item 3 of PTOL-85B will not be granted unless a petition under 37 CFR 1.183 has been granted. Any such petition under 37 CFR 1.183 should be directed to the Office of Petitions and should include:
(A) the petition fee required by 37 CFR 1.17(h);
(B) a request that 37 CFR 3.81(a) be waived to permit the correct name of the assignee to be provided after issuance of the patent;
(C) a statement that the failure to include the correct assignee name on the PTOL-85B was inadvertent; and
(D) a copy of the Notice of Recordation of Assignment Document.
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