MPEP § 324 — MPEP § 324
Current through: 2022-07-01

324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0300 

 Section 324 
 

 
 
 
 
 
 324 Establishing Right of Assignee To Take Action in Application Filed
 Before September 16, 2012 [R-10.2019]
 

 [Editor Note: See MPEP § 325 for establishing the right
 of assignee to take action in an application filed on or after September 16, 2012.]
 

 
 37 CFR 3.71 (pre-AIA) Prosecution by assignee. 

 [Editor Note: Not applicable to applications filed under
 35 U.S.C.
 111(a) , 363 or 385 
 on or after September 16, 2012. See 37 CFR 3.71 for the rule
 otherwise applicable.] 

 
 (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 (pre-AIA) Establishing right of assignee to take action. 

 [Editor Note: Not applicable to applications filed under
 35 U.S.C.
 111(a) , 363 , or 385 
 on or after September 16, 2012. See 37 CFR 3.73 for the rule
 otherwise applicable.] 

 
 (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 (other than a juristic entity) of a patent property
 based on an application filed before September 16, 2012, 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 ( pre-AIA 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
 pre-AIA 37 CFR
 1.47(b) ( MPEP § 409.03(b) ), appoint its own registered patent
 practitioner to prosecute an application ( pre-AIA 37 CFR 1.32 and
 MPEP §
 402.07 ), and grant a power to inspect an application
 ( MPEP §
 104 ). The owner or assignee consents to the filing of a reissue
 application ( MPEP §
 1410.01 ), and to the correction of inventorship
 ( MPEP §
 602.01(c) or MPEP § 1481 ). 
 

 Effective September 16, 2012, an owner or assignee who is a
 juristic entity must be represented by a patent practitioner. See 37 CFR 1.31 . Juristic
 entities may sign small entity assertions under 37 CFR 1.27 ( MPEP § 509.03 ),
 disclaimers under 37
 CFR 1.321 ( MPEP § 1490 ), submissions under
 37 CFR
 3.73 to establish ownership, powers of attorney under
 37 CFR
 1.32 ( MPEP § 402 ) and powers to inspect under 37 CFR 1.14 
 ( MPEP §
 104 ). However, any other paper submitted on behalf of a juristic
 entity on or after September 16, 2012, must be signed by a patent practitioner. 
 

 See subsection VI below for a discussion of when ownership
 must be established to take action in a patent matter, and subsection VII below for a
 discussion of when ownership need not be established to sign certain papers. 
 

 I. THE ASSIGNEE/OWNER THAT CAN TAKE ACTION IN PATENT MATTERS The provisions of pre-AIA 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 pre-AIA 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, pre-AIA 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 pre-AIA 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,
 pre-AIA 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
 pre-AIA 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 pre-AIA 37 CFR 1.47 has been
 granted. If a petition under pre-AIA 37 CFR 1.47 has been
 granted, then the assignee need only be the assignee of the entire interest of the
 pre-AIA 37 CFR
 1.47 applicant to sign a power of attorney. See
 pre-AIA 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 of the application. Inventor A then assigns all his/her rights in
 the application to Corporation X. As soon as Corporation X (now a partial assignee as
 per pre-AIA 37 CFR
 3.71(b)(2) ) is made of record in the application as a partial
 assignee (by filing a statement pursuant to pre-AIA 37 CFR 3.73(b) stating
 Corporation X is an assignee of an undivided interest in the entirety of the
 application), Corporation X and Inventor B together may conduct prosecution of the
 application. 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 pre-AIA 37 CFR 3.73(b) stating it
 is assignee of the entire right, title and interest), Corporation Y is then the sole
 (one hundred percent) owner and thus may, by itself, conduct prosecution of the
 application.
 

 II. ESTABLISHING OWNERSHIP When an assignee first seeks to take action in a matter before the
 Office with respect to a patent application filed before September 16, 2012, or a with
 respect to a patent or a reexamination proceeding relating to a patent that issued from
 an application that was filed before September 16, 2012, the assignee must establish its
 ownership of the property to the satisfaction of the Director. Pre-AIA 37 CFR
 3.73(b) . The assignee’s ownership may be established under
 pre-AIA 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.
 35 U.S.C.
 261 requires transfer of ownership by an assignment to be in
 writing. See Realvirt, LLC v. Lee, 195 F.Supp.3d 847, 859 (E.D. Va.
 2016). 
 

 The action taken by the assignee, and the pre-AIA 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.
 Pre-AIA 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
 pre-AIA 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 pre-AIA
 37 CFR 3.73(b) submission each time, provided that ownership has
 not changed. 
 

 The submission establishing ownership by the assignee pursuant to
 pre-AIA 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 pre-AIA 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(b) before September 16, 2012, the application papers
 must:
 

 
 (A) contain a copy of a statement filed under pre-AIA 37 CFR
 3.73(b) in the parent application; or
 

 (B) contain a newly executed statement under pre-AIA 37 CFR
 3.73(b) .
 

 
 When a continuation-in-part application is filed before September 16,
 2012 by an assignee, a newly executed statement under pre-AIA 37 CFR 3.73(b)
 must be filed. When in a design application, a continued prosecution
 application (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 , 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 pre-AIA 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 pre-AIA 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. Pre-AIA 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. The Office recommends that when a person with such a title is authorized
 to act on behalf of the assignee, the submission should clearly indicate that
 person's authority (see paragraph (B), below). A power of attorney
 ( pre-AIA 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.
 Pre-AIA 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
 pre-AIA 37 CFR
 3.73(b) are when the assignee: signs a request for status of an
 application or gives a power to inspect an application ( MPEP §§ 102 and
 104 ); appoints its own registered attorney or agent to
 prosecute an application ( pre-AIA 37 CFR 3.71 and
 MPEP
 § 402.07 ); signs a disclaimer under 37 CFR 1.321 
 ( MPEP §
 1490 ); consents to the filing of a reissue application
 ( MPEP
 § 1410.01 ); consents to the correction of inventorship in a
 patent ( MPEP §
 1481 ); or signs a Fee(s) Transmittal (PTOL-85B)
 ( MPEP
 § 1306 ). Effective September 16, 2012, a juristic entity
 (e.g., organizational assignee) must be represented by a patent practitioner. See
 37 CFR
 1.31 .
 

 VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED Examples of situations where ownership need not be established under
 pre-AIA 37 CFR
 3.73(b) are when the assignee: signs a small entity statement
 ( MPEP §
 509.03 ); signs a statement of common ownership of two
 inventions ( MPEP § 2146.02 ); signs a NASA or DOE property rights
 statement ( MPEP §
 151 ); signs an affidavit under 37 CFR
 1.131(a) 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 pre-AIA 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). Pre-AIA 37 CFR 3.73(c)(2) . If the
 extent of the partial assignee’s ownership interest is not set forth in the submission
 under pre-AIA 37 CFR
 3.73(b) , the Office may refuse to accept the submission as an
 establishment of ownership interest. 
 

 IX. CONFLICTING PRE-AIA 37 CFR 3.73(b) STATEMENTS Where there are two or more conflicting pre-AIA 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
 pre-AIA 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 resolving any procedural issues.
 Generally, where there are two or more conflicting pre-AIA 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 pre-AIA 37 CFR
 3.73(b) statement to establish its ownership may wish to consider
 filing its own application.
 

 X. FORMS Form PTO/SB/96 may be used to establish ownership under
 pre-AIA 37 CFR
 3.73(b) .
 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 301-Ownership/Assignability of Patents and Applications 
 301.01-Accessibility of Assignment Records 

 
 

 302-Recording of Assignment Documents 
 302.01-Assignment Document Must Be 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 

 302.10-Electronic Submission of Assignment Documents 

 
 

 303-Assignment Documents Not Endorsed on Pending Applications 

 304‑305-[Reserved] 

 306-Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application 
 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application 

 
 

 307-Issue to Non-Applicant Assignee 

 308-Issue to Applicant 

 309-Restrictions Upon Employees of U.S. 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 

 312-[Reserved] 

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

 314-Certificates of Change of Name or of Merger 

 315-Indexing Against a Recorded Certificate 

 316-[Reserved] 

 317-Handling of Documents in the Assignment Recordation Branch 
 317.01-Recording Date 

 317.02-Correction of Unrecorded Returned Documents and Cover Sheets 

 317.03-Effect of Recording 

 
 

 318-Documents Not to be Placed in Files 

 319-[Reserved] 

 320-Title Reports 

 321‑322-[Reserved] 

 323-Procedures for Correcting Errors in Recorded Assignment Document 
 323.01-Correction of Error in Recorded Cover Sheet 
 323.01(a)-Typographical Errors in Cover Sheet 

 323.01(b)-Typographical Errors in Recorded Assignment Document 

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

 323.01(d)-Expungement of Assignment Records 

 
 

 
 

 324-Establishing Right of Assignee To Take Action in Application Filed Before September 16, 2012 

 325-Establishing Right of Assignee To Take Action in Application Filed On or After September 16, 2012 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:51