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6.1 – MPEP 100 Secrecy, Access, National Security & Foreign Filings

Secrecy, Access and Foreign Featured

Access

Information regarding the status of an application is only available to an inventor, attorney of record, assignee (of record), or a person with written authority from one of the previous.  Access includes whether the application is pending, abandoned or granted; the application number and filing date; and if one or more applications claim the benefit of the filing date of the application (if there is benefit claimed the application number, filing date and status are also included).

The only people who have the power to inspect applications are the applicant, their legal assigns and the assignee.  With this power they can have access to pending applications (except reissue applications).  No one else can access this information unless there is written authority from one of the parties or the commissioner.

Right of Public to Inspect (patent and application files)

Once a patent has been granted and issued all of the documents related to the patent case are available for the public to inspect.  Additionally, this is also true for reissue applications, reexamination proceedings and interference information once they have been completed.

Regarding pending applications, the public can view the information of an application without needing any permission as long as the application is published.  Additionally, if the application is not published the follow can allow the public or individuals access to the application and its details: the commissioner determines that it is necessary for proper PTO business practice; the application is abandoned (unless, in the file jacket of a pending CPA application, it is referred to in a US patent, is referred to in a US patent open for inspection, claims the benefit of a U.S. application open to the public, or the applicant has authorized the application to be open to the public.

Provisional applications are only allowed to be viewed by independent individuals who have written consent from an inventor, assignee or attorney.

Reissue applications filed after March 1, 1977 are open to the public for inspection.

Reexaminations are always available to the public.

Any decision by the USPTO is made public if the commissioner believes the decision has important bearing on patent law and none of the parties object within 2 months of notice.

Petitions may also be used by any member of the public to access pending or abandoned applications.

Secrecy, National Security and Foreign Filing

A secrecy order can be filed to prevent the disclosure of the subject matter to the public.  No one without express written consent of the commissioner will be able to access the information.  A secrecy order is in effect for one year and can be extended or renewed.

For national security, a patent should always be filed in the home country first.

Foreign filing licenses can be obtained by two means: file a petition for foreign filing license; wait six months after filing an application.  Retroactive licenses can be obtained if accidental foreign filing occurred without deceptive intent.  To obtain this, one must provide all the countries which the application has been filed in to the USPTO.  The office can also revoke a foreign filing license, in this case the foreign filed application do not need to be abandoned.

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6.2 – MPEP 300 Ownership and Assignment

Ownership and Assignment Featured

Assignability of Patents and Applications

A patent is intangible property as well as personal property.  As such they can be licensed and assigned though an assignment document being recorded at the USPTO.  This document should be notarized and recorded with the USPTO within 3 months from the date of it’s execution.  In the case of joint inventors, each joint inventor can exercise the rights of a patent holder without the consent or accounting to the other joint inventors.  This is barring any agreement otherwise.

Who can view assignment records?

Assignment documents for patents are available to the public for inspection.  For pending for abandoned applications one usually needs written consent from the applicant or assignee to view.

Recording of Assignment Documents

To properly record assignment documents the following should be included: original or certified copy of the assignment document, translation into English if in a foreign language (should be signed by translator), appropriate fees and cover sheet for each assignment document.

Facsimile Submission of Assignment Documents

Facsimile can be used for assignment documents and other items effecting the title of the patent.  The date the facsimile is received is the date of receipt.  If by facsimile the following must be included: identified application or patent number, cover sheet and recordation fee (PTO deposit account).  In some cases facsimile cannot be used including: assignments submitted simultaneously with a new patent application, documents with two or more cover sheets, requests for corrections to previously recorded documents, a document with which the fee is paid through credit card and requests for “at cost” recordation services.

Assignment of Divisional, Continuation, Substitute, Continuation-In Part and Provisional Applications

As a general rule of thumb, anytime new matter is added a new assignment document is needed.  If there is a divisional or continuation application filed from an original patent which has an assignment recorded, the prior assignment will be applied to the divisional or continuation application.  However for a substitute or continuation-in-part application the assignment is not applied as these are completely new applications.  For applications based on provisional applications which do not have their subject matter completely disclosed in the provisional application a new assignment document must be recorded with the USPTO.

Restrictions on PTO Employees

USPTO employees are not allowed to apply for a patent or acquire a patent directly or indirectly (except through inheritance or bequest) during their period of appointment and for one year after.  This includes any rights or interest in any patent issued or to be issued.

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6.3 – MPEP 400 Representative of Inventor or Owner

Representative of Inventor or Owner Featured

Executing Representation

An applicant for a patent can submit and prosecute the application pro se (on his own) or he can be represented by a registered attorney or agent.  One can appoint a practitioner through executing a power of attorney or authorization of agent, having the practitioner appear in person before the USPTO or by having the practitioner sign a paper on their behalf before the USPTO.  The USPTO only recognizes individuals (attorney or agents) and not law firms.

Correspondence with the PTO

Through filing, prosecution and possible granting of the application there will likely be must communication between the applicant and the USPTO.  To facilitate such communication the applicant needs to provide at least one correspondence address.  This correspondence address does not need to be the same as the fee address.  If one practitioner is replaced by another practitioner and the power of attorney or agent authorization is now revoked the USPTO correspondence will automatically be sent to the later individual.

Customer Number

A customer number provides a correspondence address, fee address and a list of practitioners with power of attorney.  If there are multiple customer numbers the correspondence address will be take from the latest number provided.  Applicants can appoint practitioner by reference in the power of attorney to the customer number.  Any practitioners can be added or removed from the customer number.

Telephone Correspondence

It is at the examiner’s discretion to hold a phone interview.  An attorney can call the examiner if the call is beneficial to the prosecution of the patent application.

37 CFR 10.18(b) – All papers signed must be truthful

A practitioner must personally sign every paper filed to the USPTO unless the applicant is required to sign them.  37 C.F.R. § 10.18(b) is invoked every time a paper is signed before the USPTO.  It is recommended that the practitioner advise the client of these requirements however it is not required to do so.

Changing Representation: Change, Revocation, or Resignation

The applicant my change or revoke the representation during prosecution of a patent application.  This can be at any time and for any reason.  The revocation is effective when it is received by the USPTO.  The revocation of power of attorney from a principal attorney also revokes any powers granted by the principal attorney to other attorneys.

In the event that an assignment is recorded after a representative has already been appointed, the assignment does not revoke the previous powers of attorney or agent.  However, the new assignee can explicitly revoke the previous practitioners powers and appoint a new practitioner in their place.

All applicants or owners need to sign a revocation of power of attorney unless it is accompanied with a petition disclosing sufficient reason why the partially signed paper should be accepted.  All subsequent replies need to be signed by all applicants as well.

The assigned practitioner of an application may resign with some restrictions.  The withdraw is effective once approved and not simply when it is received.  This ensures the applicant can obtain different representation.  There is usually a 30 day period between the approval of the withdraw and the end of a reply period or the expiration date of the period which can be obtained through petition for extension of time.
Situations Where Representation Ceases

The principal attorney’s power of attorney terminates if the inventor dies unless the practitioner also have interest in the application (such as an assignee).  However, a patent applied for by an inventor who dies after filing can issue to his legal representative.  If the rights of the application or granted patent are passed to heirs, administrators or estate executors a new power of attorney is needed.

If the Inventor is Dead, Insane or Unavailable

In the case where an inventor is dead, won’t execute part of an application, cannot be found or is insane or legally incapacitated the application can be made by someone other than the inventor.  If there is at least one inventor still available then these inventors can prosecute the application.  For the case of joint inventors refusing to help in the prosecution of the application or if they cannot be found or reached (after diligent effort) the other inventors can act for themselves and the other non-signing inventor.  An oath in an application such as this should include a petition with the last known address of the unavailable inventor or the representative of the deceased inventor.  A non-signing inventor can then join in the prosecution of the application at a later date.  If all the inventors and legal representatives of a deceased inventor refuse to prosecute an application or they cannot be reached through diligent effort a different person or corporation my make the application and any true inventors my later join in the application prosecution.  In this case the oath of application must include a petition showing the applicant is one whom the inventor agreed to assign the invention to or the applicant must show a sufficient proprietary interest.  These actions stand as a preservation to the rights of the parties and to prevent irreparable harm.

Proof of Unavailability:  In the case where an inventor is unavailable the applications oath must be accompanied by a petition which fully describes the exact facts regarding the situation.  If the context of the situation is the unavailability of representation of a deceased inventor proof of the new attorney’s authority as a representative is needed.  Hearsay statements are not normally accepted.

Proof of Refusal: An affidavit containing the circumstances of the refusal must be made explaining the time and place of the refusal.  For a written refusal a copy of the document should be made part of the affidavit.  Proof of a bona fide attempt to present a copy of the application papers to the non-signing inventor for signature should be included.

In the case that the application only has one inventor and they are not available to sign the oath (so NO inventors are available):

Applicant can be filed by someone else under 37 C.F.R. § 1.47(b).  The new applicant must take the normal oath and state relationship to inventor.  The applicant needs to have proof that the inventor cannot be found after diligent effort to find him or that the inventor refuses to execute the oath and sign the application.  The last known address of the inventor should be included.  The applicant should make a prima facie case that the invention is assigned to him or that the inventor agreed in writing to assign the invention to the applicant.  The applicant can also show proprietary interest in the subject matter of the application.  The applicant needs to show that the application filing is necessary to preserve the rights of the parties and to prevent irreparable damage.

When there are multiple inventors and not all are available:

Reference 37 C.F.R. § 1.47(a).  All of the available inventors need to file for themselves like normal.  But, they must make an oath or declaration on behalf of the non-signing joint inventor.  A non-signing inventor must refuse to sign or be un-locatable after a ‘diligent’ search.  All of the inventors need to still be listed on the application.  The blank line next to the missing inventors name will be treated as having been signed on behalf of the other inventors.  The application must include proof that non-signing inventor cannot be found or reached after diligent effort, refuses to execute the oath.  This should also include the last known address of the non-signing inventor.

Non-signing Inventor’s Rights:

In the case of a non-signing inventor, a non-signing inventor may protest their designation as an inventor.  They are allowed to inspect any part of the application itself even if it isn’t published.  The attorney or agent of the non-signing inventor may also be allowed to inspect the application record.