Ownership and Assignment

301	Assignability of Patents and Applications 

301.01	Accessibility of Assignment Records   

302	Recording of Assignment Documents  

302.01	Assignment Document Must Be Original or 
True Copy for Recording  

302.02	Translation of Assignment Document  

302.03	Identifying Patent or Application  

302.04	Foreign Assignee May Designate Domestic 
Representative  

302.05	Address of Assignee  

302.06	Fee for Recording  

302.07	Assignment Document Must Be Accompanied 
by a Cover Sheet   

302.08	Mailing Address for Submitting Assignment 
Documents 

>302.09	Facsimile Submission of Assignment 
Documents<   

303	Assignment Documents Not Endorsed on 
Pending Applications  

306	Assignment of Division, Continuation, 
Substitute, and Continuation-in-Part in 
Relation to Parent Case  

306.01	Assignment of an Application Claiming the 
Benefits of a Provisional Application   

307	Issue to Assignee   

309	Restrictions Upon Employees of Patent and 
Trademark Office  

310	Government License Rights to Contractor-
Owned Inventions Made Under Federally 
Sponsored Research and Development  

311	Filing of Notice of Arbitration Awards  

313	Recording of Licenses, Security  Interests, and 
Other Documents Other Than Assignments  

314	Certificates of Change of Name or of Merger  

315	Indexing Against a Recorded Certificate   

317	Handling of Documents in the Assignment 
Division   

317.01	Recording Date  

317.02	Correction of Returned Documents and Cover 
Sheets   

317.03	Effect of Recording   

318	Documents Not to be Placed in Files  

320	Title Reports  

323	Procedures for Correcting Errors in Recorded 
Assignment Document  

323.01	Correction of Error in Recorded  Cover Sheet  

324	Establishing Right of Assignee to Take Action

301	Assignability of Patents and 
Applications 

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 assign-
able 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 for-
eign country, of a diplomatic or consular officer of the United States or an 
officer authorized to administer oaths whose authority is proved by a cer-
tificate of a diplomatic or consular officer of the United States, or apostille 
of an official designated by a foreign country which, by treaty or conven-
tion, 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 sub-
sequent 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 own-
ers 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 
application that designates the United States of America, or an application 
to register a trademark unless otherwise indicated. 

Assignment means a transfer by a party of all or part of its right, title 
and interest in a patent or patent application, or a transfer of its entire right, 
title and interest in a 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 applica-
tion, patent, or registration.

Office means the 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.

301.01	Accessibility of Assignment 
Records 

37 CFR 1.12.  Assignment records open to public inspection.

(a)(1)	Separate assignment records are maintained in the 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 assignment records 
relating to pending or abandoned trademark applications and to trademark 
registrations, for assignments recorded on or after January 1, 1955, are 
open to public inspection at the Patent and Trademark Office, and copies 
of those assignment records may be obtained upon request and payment of 
the fee set forth in ?? 1.19 and 2.6 of this chapter.

(2)	All records of assignments of patents recorded before May 1, 
1957, and all records of trademark assignments recorded before January 1, 
1955, are maintained by the National Archives and Records Administra-
tion (NARA). The records are open to public inspection. Certified and 
uncertified copies of those assignment records are provided by NARA 
upon requests and payment of the fees required by NARA. 

(b)	Assignment records, digests, and indexes, relating to any pend-
ing or abandoned patent application are not available to the public. Copies 
of any such assignment records and information with respect thereto shall 
be obtainable only upon written authority of the applicant or applicant's 
assignee or attorney or agent or upon a showing that the person seeking 
such information is a bona fide prospective or actual purchaser, mort-
gagee, or licensee of such application, unless it shall be necessary to the 
proper conduct of business before the Office or as provided by these rules.

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

(1)	Be in the form of a petition accompanied by the petition fee 
set forth in ? 1.17(i); or 

(2)	Include written authority granting access to the member of 
the public to the particular assignment records from the applicant or appli-
cant'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, registrations 
of trademarks, and applications for registration of trade-
marks are open to public inspection.

The Office will not open only certain parts of an assign-
ment 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 patented. Documents relating 
only to one or more pending applications for patent will not 
be open to public inspection.

If the application on which a patent was granted is a 
division or continuation of an earlier case, the assignment 
records of that earlier case will be open to public inspec-
tion; similar situations involving continuation-in-part appli-
cations will be considered on their individual merits upon 
petition to the Office of Petitions.

Assignment records relating to reissue applications are 
open to public inspection.

Requests for abstracts of title for assignments of patents 
recorded after May 1, 1957, are provided by the Certifica-
tion 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 inspec-
tion in the National Archives Research Room located at the 
Washington National Records Center Building, 4205 Suit-
land Road, Suitland, Maryland 20746. Assignment docu-
ments recorded before 1837 are maintained at the National 
Archives and Records Administration, 841 South Pickett 
Street, Alexandria, Virginia 22304. 

302	Recording of Assignment Documents

37 CFR 3.11.  Documents which will be recorded.

(a)	Assignments of applications, patents, and registrations, accom-
panied by completed cover sheets as specified in ?? 3.28 and 3.31, will be 
recorded in the Office. Other documents, accompanied by completed 
cover sheets as specified in ?? 3.28 and 3.31, affecting title to applica-
tions, patents, or registrations, will be recorded as provided in this part or 
at the discretion of the Commissioner.

(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 Commis-
sioner of Patents and Trademarks for recording all licenses, assignments, 
or other interests of the Government in or under patents or patent applica-
tions. Assignments and other documents affecting title to patents or patent 
applications and documents not affecting title to patents or patent applica-
tions required by Executive Order 9424 to be filed will be recorded as pro-
vided in this part.

37 CFR 3.58.  Governmental registers.

(a)	The Office will maintain a Departmental Register to record gov-
ernmental 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 representa-
tives of the Government. Governmental interests recorded on the Depart-
mental Register will be available for public inspection as provided in 
? 1.12.

(b)	The Office will maintain a Secret Register to record governmen-
tal interests required to be recorded by Executive Order 9424. Any instru-
ment 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 exami-
nation 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 Commissioner of Patents and Trademarks. 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.

302.01	Assignment Document Must Be 
Original or True Copy for 
Recording [R-1]

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

 The document and cover sheet must be legible. Either the original doc-
ument or a true copy of the original document, may be submitted for 
recording. Only one side of each page shall be used. The paper used 
should be flexible, strong, white, non-shiny, durable, and preferably no 
larger than 21.6 x 33.1 cm. (8 1/2 x 14 inches) with a 2.5 cm. (one-inch) 
margin on all sides.

The Patent and Trademark Office will accept and record 
only an original, or a true copy of an original assignment or 
other document. See MPEP ? 317.

Certification shall be made by the person submitting a 
copy of an original document that the document submitted 
is a true copy of the original. The certification is not 
required to be in oath or declaration form.

302.02	Translation 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 lan-
guage, will not be recorded unless accompanied by an 
English translation signed by the translator.

302.03	Identifying Patent or Application

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 con-
currently with, or subsequent to, the execution of the patent application, 
but before the patent application is filed, it must identify the patent appli-
cation by its date of execution, name of each inventor, and 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 name of each inventor and 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 date of execution, the names(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 applica-
tion by names(s) of the inventors and the title of the inven-
tion.

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 assign-
ment 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." 

302.04	Foreign Assignee May Designate 
Domestic Representative

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 pro-
cess or notice of proceedings affecting the patent or rights thereunder. If 
the person designated cannot be found at the address given in the last des-
ignation, 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 trademark application or registration is not domi-
ciled in the United States, the assignee must designate, in writing to the 
Office, a domestic representative. An assignee of a patent application or 
patent may designate a domestic representative if the assignee is not resid-
ing in the United States. The designation shall state the name and address 
of a person residing within the United States on whom may be served pro-
cess or notice of proceedings affecting the application, patent or registra-
tion or rights thereunder.

An assignee not domiciled in the United States may, by 
written document signed by such assignee, designate a 
domestic representative. The designation of domestic rep-
resentative 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 des-
ignation paper can be placed in each file. The designation 
of a domestic representative should be directed to the 
Office of the Solicitor for processing.

302.05	Address of Assignee

The address of the assignee may be recited in the assign-
ment document and must be given in the required cover 
sheet. See MPEP ? 302.07.

302.06	Fee for Recording [R-1]

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 mailed to the Office in 
compliance with ? 3.27(b).

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).

302.07	Assignment Document Must 
Be Accompanied by a Cover 
Sheet  [R-1]

37 CFR 3.28.  Requests for recording.

** >Each document submitted to the Office for recording must include 
at least one 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, separate patent and trademark cover sheets should be sub-
mitted. Only one set of documents and cover sheets to be recorded should 
be filed. 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. 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 applica-
tion number, if known, against which the Office is to record the document. 
If the trademark application number is not known, a copy of the applica-
tion 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)	An indication that the assignee of a trademark application or 
registration who is not domiciled in the United States has designated a 
domestic representative (see ? 3.61); and

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

(b)	A cover sheet should not refer to both patents and trademarks, 
since any information, including information about pending patent appli-
cations, 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 is to be recorded on the Gov-
ernmental Register, and, if applicable, that the document is to be recorded 
on the Secret Register (see ? 3.58); 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.<

Each assignment document submitted to the Office for 
recording must be accompanied by a cover sheet as 
required by 37 CFR 3.28. The patent cover sheet must con-
tain:

(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 transac-
tion to be recorded;

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

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

(F)	** The date the document was executed;

**>

(G)	< The signature of the party submitting the docu-
ment.

 >Each patent cover sheet should contain the number of 
patent applications or patents identified in the cover sheet 
and the total fee.< The term "party" as used in 37 CFR 3.31 
means the person whose name appears on the documents to 
be recorded, that person's attorney or registered agent, or an 
appropriate official where a corporation's or other organiza-
tion's name appears on the document.

Examples of the type of descriptions of the interest con-
veyed 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, and 

(H)	contract.

Cover sheets required by 37 CFR 3.28 seeking to record 
a governmental interest must also (1) indicate that the doc-
ument is to be recorded on the Governmental Register, and, 
if applicable, that the document is to be recorded on the 
Secret Register (see 37 CFR 3.58); and (2) indicate, if 
applicable, that the document to be recorded is not a docu-
ment affecting title.

A patent cover sheet may not refer to trademark applica-
tions or registrations.

302.08	Mailing Address for Submitting 
Assignment Documents 

37 CFR 3.27.  Mailing address for submitting documents to be 
recorded.

(a)	Except as provided in paragraph (b) of this section, documents 
and cover sheets to be recorded should be addressed to the Commissioner 
of Patents and Trademarks, Box Assignment, Washington, D.C. 20231, 
unless they are filed together with new applications or with a petition 
under ? 3.81(b).

(b)	A document required by Executive Order 9424 to be filed which 
does not affect title and is so identified in the cover sheet (see ? 3.31(c)(2)) 
must be addressed and mailed to the Commissioner of Patents and Trade-
marks, Box Government Interest, Washington, D.C. 20231.

37 CFR 3.27 sets out how documents submitted for 
recording should be addressed to the Office. Except as pro-
vided in 37 CFR 3.27(b), to ensure prompt and proper pro-
cessing, documents and their cover sheets should be 
addressed to the Commissioner of Patents and Trademark, 
Box Assignment, Washington, DC 20231, unless they are 
filed together with new applications or with a petition 
under 37 CFR 3.81(b). Petitions under 37 CFR 3.81(b) 
should be addressed to the Assistant Commissioner for Pat-
ents, Box DAC, Washington, DC 20231. New applications 
and other petitions should be addressed to the Assistant 
Commissioner for Patents, Washington, DC 20231. A doc-
ument required by Executive Order 9424 to be filed which 
does not affect title and is so identified on the cover sheet 
must be addressed and mailed to the Commissioner of Pat-
ents and Trademarks, Box Government Interest, Washing-
ton, DC 20231.

>

302.09	Facsimile Submission of 
Assignment Documents [R-1]

  Assignments and other documents affecting title may 
be submitted to the Office via facsimile (fax). See MPEP 
? 1730 for the facsimile number. This process allows cus-
tomers to submit their documents directly into the auto-
mated 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 recorda-
tion 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 Recor-
dation."

 Any assignment-related document submitted by facsim-
ile 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 PTO Deposit 
Account.

 The following documents cannot be submitted via fac-
simile:

(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 assign-
ment, 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)	Documents with payment of the recordation fee 
by credit card.

  The date of receipt accorded to an assignment docu-
ment 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 transmis-
sion 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 resub-
mitted by fax. 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.<

303	Assignment 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 determination of the assignment condition of 
an application is significant, as when applications of differ-
ent inventors contain conflicting claims, it is necessary for 
the examiner to obtain assignment information from PALM 
or request a title report from Assignment Division. See 
MPEP ? 320.

306	Assignment of Division, Continuation, 
Substitute, and Continuation-in-Part 
in Relation to Parent Case

In the case of a division or continuation, a prior assign-
ment recorded against the original application is applied to 
the division or continuation application because the assign-
ment recorded against the original application gives the 
assignee rights to the subject matter common to both appli-
cations.

In the case of a substitute or continuation-in-part, a prior 
assignment of the original application is not applied 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 appli-
cations require a new assignment if they are to be issued to 
an assignee.

The front page of the printed patent includes all identify-
ing parent data of continuation-in-part, continuation, divi-
sional, and reissue applications. It should be noted, 
however, that inclusion of this information does not neces-
sarily indicate that the claims are entitled to the benefit of 
the earlier filing date.

306.01	Assignment of an Application 
Claiming the Benefits of a 
Provisional Application 

An application claiming the priority benefits of a provi-
sional application under 35 U.S.C. 119(e) should not be 
called a continuation, division, or continuation-in-part even 
though the claim for priority from a provisional application 
would make it appear to be one of these types of continuing 
applications. The benefit of an earlier filing date for contin-
uations, divisions, and continuations-in-part may be 
claimed under the provisions of 35 U.S.C. 120 while the 
benefit of an earlier filing date of a provisional application 
may be claimed under the provisions of 35 U.S.C. 119(e).

As set forth in MPEP ? 306, assignments recorded 
against an original application gives the assignee rights to 
the subject matter common to both applications. Therefore, 
a prior assignment in a parent application carries over into 
continuation and division applications since all subject 
matter contained in the continuation or division application 
was included in the parent. Continuations-in-part require 
new assignments due to the additional material included 
therein.

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. If an application claiming the 
earlier filing date of a provisional application includes sub-
ject matter that is not common with subject matter of the 
provisional application, new assignment papers must be 
submitted in the later application, similar to the practice 
with respect to continuations-in-part filed under 35 U.S.C. 
120.

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 specifi-
cation sworn to by the inventor, except as otherwise provided in this title.

37 CFR 3.81.  Issue of patent to assignee.

(a)	For a patent application, if an assignment of the entire right, title 
and interest is recorded before the issue fee is paid, the patent may issue in 
the name of the assignee. If the assignee holds an undivided part interest, 
the patent may issue jointly to the inventor and the assignee. At the time 
the issue fee is paid, the name of the assignee must be provided if the 
patent is to issue solely or jointly to that assignee.

(b)	If the assignment is submitted for recording after the date of 
payment of the issue fee, but prior to issuance of the patent, the assignee 
may petition that the patent issue to the assignee. Any such petition must 
be accompanied by the fee set forth in ? 1.17(i)(1) of this chapter.

Normally, for the patent to issue to an assignee, the 
assignment must be recorded in the Patent and Trademark 
Office at a date not later than the day on which the issue fee 
is paid. If the assignment is submitted for recording after 
the day on which the issue fee is paid, the patent may issue 
to an assignee upon granting a petition filed under 37 CFR 
3.81.

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, how-
ever, 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 indi-
cate 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. Assign-
ment 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 incom-
plete 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 issu-
ance 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 Assign-
ment Document.

309	Restrictions Upon Employees of 
Patent and Trademark Office

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 there-
after, 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 thereaf-
ter they shall not be entitled to any priority date earlier than one year after 
the termination of their appointment.

310	Government License Rights to 
Contractor-Owned Inventions Made 
Under Federally Sponsored Research 
and Development

Where a Government contractor retains U.S. domestic 
patent rights, the contractor is required to include the fol-
lowing 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 of the applica-
tion to prior copending applications of the applicant, such 
prior applications must be referred to in the first sentence of 
the specification (37 CFR 1.78(a) and MPEP ? 201.11), and 
in this case the required "Government License Rights" 
statement should follow immediately as the second para-
graph of the specification.

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

311	Filing of Notice of Arbitration Awards

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 dis-
pute 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 confir-
mation of awards shall be governed by title 9, United States Code, to the 
extent such title is not inconsistent with this section. In any such arbitra-
tion proceeding, the defenses provided for under section 282 of this title 
shall be considered by the arbitrator if raised by any party to the proceed-
ing.

(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 per-
son. 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 Commis-
sioner. 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 modi-
fication shall give notice of such modification to the Commissioner. The 
Commissioner 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 Commissioner, any party to the proceeding may provide such 
notice to the Commissioner.

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

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 pat-
entee, 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 modi-
fied 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. 294 shall 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, which 
Office will be responsible for processing such notices.

313	Recording of Licenses, Security  
Interests, and Other Documents 
Other Than Assignments

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 Patent and Trademark Office. 
Other documents not affecting title may be recorded at the 
discretion of the Commissioner. 37 CFR 3.11(a).

Thus, some documents which relate to patents or appli-
cations 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 doc-
uments are recorded in the public interest in order to give 
third parties notification of equitable interests or other mat-
ters relevant to the ownership of a patent or application.

Any document returned unrecorded, which the sender 
nevertheless believes represents an unusual case which jus-
tifies recordation, may be submitted to the Office of Peti-
tions 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 deter-
mination 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.

314	Certificates of Change of Name or 
of 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 con-
stitute 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.

315	Indexing Against a Recorded 
Certificate 

Prior to amendment of the Rules of Practice to add Part 
3 to 37 CFR, it had been the practice of the Patent and 
Trademark Office to process requests for "indexing" or 
"cross-referencing" additional patent numbers or applica-
tion numbers against a document, other than an assignment, 
previously recorded in the Assignment Division, upon sub-
mission 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 docu-
ment 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)	the original document, or a true copy of the origi-
nal document (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 3.31 and 
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 sub-
mission, update the assignment database, and microfilm the 
cover sheet and document, which shall become part of the 
official record.

317	Handling of Documents in the 
Assignment Division

All documents and cover sheets submitted for recording 
are examined for formal requirements in the Assignment 
Division in order to separate documents which are record-
able 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 Commissioner 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.

317.01	Recording 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 require-
ments for recording, for example, a document submitted without a com-
pleted 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 speci-
fied 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 con-
sidered 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 docu-
ment 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 sub-
mitted without a completed cover sheet or without the 
required fee, will be returned for correction to the sender 
where a correspondence address is available.

317.02	Correction of Returned Documents 
and Cover Sheets 

Assignment documents and cover sheets which are 
returned by Assignment Division will be stamped with the 
original date of receipt by the Office and will be accompa-
nied 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. See 37 CFR 3.51. The certification proce-
dure 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. 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.

317.03	Effect of Recording 

37 CFR 3.54.  Effect of recording.

The recording of a document pursuant to ? 3.11 is not a deter mination 
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 neces-
sary, 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 subse-
quent, 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 deter-
mine 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 docu-
ment 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.

318	Documents 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. 

320	Title Reports

The "title report" is a form which can be used under cer-
tain 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 Preprocess-
ing Staff when a request for reexamination is filed. Title 
reports are for internal Office use only, and are not avail-
able for order by applicants or attorneys. Examiners may 
obtain a title report by requesting a title report from Assign-
ment Division.

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.

It is not normally necessary for title to be ascertained by 
an examiner by means of the "title report" form, since such 
information is not normally required to examine the appli-
cation, and since examiners can obtain assignment informa-
tion through PALM. See MPEP ? 303.

323	Procedures for Correcting Errors in 
Recorded Assignment Document

An error in a recorded assignment document will be cor-
rected by Assignment Division provided a "corrective doc-
ument" is submitted. The "corrective document" must 
include the following:

(A)	The original assignment document with the cor-
rections 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-
1619). 

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 sub-
mitted with the corrective document. The corrective docu-
ment 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 docu-
ments is directed toward maintaining a complete history of 
claimed interests in property and, therefore, recorded 
assignment documents will not be expunged even if subse-
quently found to be invalid. See In re Ratny, 24 USPQ2d 
1713 (Comm'r Pat. 1992).

323.01	Correction of Error in Recorded  
Cover Sheet

37 CFR 3.34.  Correction of cover sheet errors.

(a)	An error in a cover sheet recorded pursuant to ? 3.11 will be cor-
rected 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 the origi-
nally recorded document or a copy of the originally recorded document 
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.

324	Establishing Right of Assignee 
To Take Action  [R-1]

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

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

(b)	When an assignee seeks to take action in a matter before the 
Office with respect to a patent application, trademark application, patent, 
registration, or reexamination proceeding, the assignee must establish its 
ownership of the property to the satisfaction of the Commissioner. Owner-
ship is established by submitting to the Office, in the Office file related to 
the matter in which action is sought to be taken, documentary evidence of 
a chain of title from the original owner to the assignee (e.g., copy of an 
executed assignment submitted for recording) or by specifying (e.g., reel 
and frame number) where such evidence is recorded in the Office. The 
submission establishing ownership must be signed by a party authorized to 
act on behalf of the assignee. Documents submitted to establish ownership 
may be required to be recorded as a condition to permitting the assignee to 
take action in a matter pending before the Office.

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 Commissioner. 37 CFR 3.73(b). >The action taken, and 
the 37 CFR 3.73(b) statement establishing that the assignee 
is the appropriate assignee to take such action, can be com-
bined in one paper.< The assignee's ownership may be 
established *>under 37 CFR 3.73(b) by<:

(A)	* submitting to the Office, in the Office file 
related to the matter in which action is sought to be taken, 
documentary evidence of a chain of title from the original 
owner to the assignee (e.g., copy of an executed assignment 
submitted for recording); or 

(B)	* specifying * >, by< reel and frame number*>,< 
where such evidence is recorded in the Office.

Documents submitted to establish ownership may be 
required to be recorded as a condition to permitting the 
assignee to take action in a matter pending before the 
Office.

 >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 own-
ership has not changed. 

>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. 

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. An officer (president, vice-president, sec-
retary, 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. A person having a title (manager, direc-
tor, administrator, general counsel) that does not clearly set 
forth that person as an officer of the assignee is not pre-
sumed to have authority to sign the submission on behalf of 
the assignee. A power of attorney from the inventors in an 
organization to a practitioner to prosecute a patent applica-
tion does not make the 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 
empowered to sign the submission on behalf of the 
assignee.

>

(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.

>WHEN OWNERSHIP MUST BE ESTABLISHED<

Examples of situations where ownership must be estab-
lished 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); acqui-
esces to express abandonment of an application (MPEP 
? 711.01); appoints its own legal representative (37 CFR 
3.71 and MPEP ? 402.07); signs a terminal disclaimer 
(MPEP ? 1490); consents to the filing of a reissue applica-
tion (MPEP ? 1410.01); consents to the correction of 
inventorship (MPEP ? 201.03 or ? 1481); files an applica-
tion under 37 CFR 1.47(b) (MPEP ? 409.03(b)) or 37 CFR 
1.425; signs an Issue Fee Transmittal (PTOL-85B) (MPEP 
? 1306); or signs a reply to an Office action.

>WHEN OWNERSHIP NEED NOT BE ESTAB-
LISHED<

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 owner-
ship under 37 CFR 3.73(b) were filed in the prior applica-
tion 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 prop-
erty 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).

>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 par-
tial assignee must provide a submission under 37 CFR  
3.73(b). In each submission, the extent of each assignee's 
interest must be indicated so that the Office can determine 
whether it has obtained action by the entirety of the right, 
title and interest holders (owners). 

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 pro-
ceeding, 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 control-
ling 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 case to the Special Program 
Law Office for resolution of the ownership question. 

FORMS<

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

Form PTO-1619, 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/SB/96. Statement Under 37 CFR 3.73(b)

Form PTO-1619A. Recordation Form Cover Sheet