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Procuring U.S. Patents without a Signed Assignment of Patent Rights

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights.  Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed.  This article summarizes the requirements for filing and prosecuting a U.S. patent application filed post-America Invents Act (AIA) without a patent assignment and identifies pitfalls when establishing ownership of patent rights for patent prosecution.  Inventors being unavailable may also complicate obtaining the declarations required for U.S. patent prosecution, but solutions are available as we previously discussed here.

Need for an Assignment

For a patent to issue to an assignee, the United States Patent and Trademark Office (the “USPTO”) must be made formally aware of the assignment so that the assignee is recognized as the patent applicant.  Filing an Application Data Sheet (ADS) for a patent application identifying the assignee as the applicant provides informal notice to the USPTO.  MPEP § 301 discusses ownership/assignability of patents and applications, including formal assignment recordation at the USPTO.  Recording an assignment may be necessary to permit the assignee to “take action” in the patent application during prosecution and for the patent to issue in the name of the assignee.  37 CFR 1.46; MPEP §§ 301302605.  In other words, assignees may face obstacles prosecuting a patent without an executed assignment.  The assignment(s) must transfer the entirety of patent rights from each of the inventors to the assignee, e.g., corporation, partnership, university, government entity, etc.  There can be multiple assignees if different inventors assign their rights to different assignees, a situation that results in two or more partial assignees that must each be identified to the USPTO as an applicant.  MPEP § 301.

As only one patent assignment is required per inventor per patent application, subsequent applications claiming priority may often rely on an earlier assignment (depending on the assignment’s particular language).  If new subject matter is introduced in the application being filed, such as in a continuation-in-part application, another assignment may be required.

Persons who may file a Patent Application without an Assignment

Fortunately, applicants may procure a patent even if an inventor is not available to sign an assignment before application filing or during prosecution before payment of the issue fee. 

A person to whom the inventor is under the obligation to assign the invention may file a patent application and be identified as the applicant.  An assignment can then be subsequently executed and the USPTO notified as discussed above.  Alternatively, other documentary evidence of ownership, such as an employment agreement, invention disclosure form, or other documentation, can be recorded with the USPTO in lieu of a signed assignment document.  37 CFR 1.46.  Employment agreements may contain language stating that the inventor assigns all rights, title, and interests in any invention developed while employed by the employer.  In some instances, the employment agreement may affirmatively state that the employee is under an obligation to assign the invention to the employer.  An invention disclosure form may contain language stating that the inventor’s signature on the form acknowledges the inventor’s assignment of and/or obligation to assign any rights, title, and interest in the invention disclosure to the employer.  If the invention disclosure form includes the inventor’s signature, this may be sufficient evidence that the employer is an obligated assignee.  37 C.F.R. 1.46(b)(1).  It is important to examine any documentary evidence of ownership before recordation to identify any information (e.g., industry trend language, discussion of prior art, personal information of an employee, etc.) that may require redaction before recordation and/or may make public recording of the documentary evidence an undesirable option for the applicant.

Also, a person who shows sufficient proprietary interest in the matter may file a patent application and be identified as the applicant upon showing that such an action is appropriate, with the resulting patent being issuable in the applicant’s name.  37 CFR 1.46.  If filing a national stage application, the applicant must have been identified in the international stage of the international application or as the applicant in the publication of the international registration. 

Showing Sufficient Proprietary Interest or Obligation to Assign

As provided in 37 CFR 1.46(b)(2), “[i]f the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.”  Additionally, as stated in MPEP § 409.05, “[t]he ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.”

Showing sufficient proprietary interest requires “proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”  37 CFR 1.46(a)37 CFR 1.424.  Showing sufficient proprietary interest is discussed in MPEP § 409.05 and may be established in various ways depending on the circumstances.  MPEP § 409.05 states that

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant.  The facts in support of any conclusion that a court would award title to the 37 CFR 1.46 applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same.  The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved.  A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

Remember that an applicant as a person who otherwise shows sufficient proprietary interest in the matter must submit the required petition, fee, and information prior to paying the issue fee as set forth in 37 CFR 1.46.

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights even without execution of a signed assignment by an inventor.  Before doing so, however, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume X, Number 301
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About this Author

Christina Sperry, Mintz Levin Law Firm, Boston, Medical Tech and Intellectual Property Law Attorney
Member

Christina is an experienced patent attorney whose clients are focused in the medical technology space, from start-ups to large corporations and academic institutions. She advises on patent preparation and prosecution and provides opinions on infringement, validity, and right-to-use for clients in the US and internationally.

The areas of technology in which Christina is particularly focused include mechanical, electrical, and electro-mechanical technical fields such as medical and surgical instruments and devices including endoscopic, soft tissue...

617-348-3018
Mark D. Hammond Intellectual Property Attorney Mintz, Levin, Cohn, Ferris, Glovsky and Popeo San Diego, CA
Associate

Mark is an intellectual property attorney and registered patent agent with a background in engineering. He focuses his practice on patent prosecution, patent office proceedings, and patent litigation support. He works primarily with clients in the semiconductors, electronics, software, and medical devices industries.

Prior to joining Mintz, Mark worked as an associate in the San Diego office of a Seattle-based international law firm. He also worked as a summer associate with intellectual property law firms in Houston and Salt Lake City and served as a summer intern in the Madrid...

858.314.1086
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