Chapter    300  Ownership and Assignment
---SECTION---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
assignable 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
foreign country, of a diplomatic or consular officer of the United
States or an officer authorized to administer oaths whose authority is
proved by a certificate of a diplomatic or consular officer of the
United States, or apostille of an official designated by a foreign
country which, by treaty or convention, 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
subsequent 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
owners 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 Section  3.11 and which affects some interest in an
application, patent, or registration.

Office means the Patent and Trademark Office.

Recorded document means a document which has been recorded in the Office
pursuant to Section  3.11.

Registration means a trademark registration issued by the Office.

---SECTION---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 Section Section  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 Administration
(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 pending 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, mortgagee, 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
preserved in confidence under Section  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 Section  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
applicant'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 Section  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 trademarks are open to public
inspection.

The Office will not open only certain parts of an assignment 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 inspection; similar situations involving
continuation-in-part applications 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 Certification 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 inspection in the National Archives
Research Room located at the Washington National Records Center
Building, 4205 Suitland Road, Suitland, Maryland 20746. Assignment
documents recorded before 1837 are maintained at the National Archives
and Records Administration, 841 South Pickett Street, Alexandria,
Virginia 22304.

---SECTION---302 Recording of Assignment Documents

37 CFR 3.11 Documents which will be recorded.

(a) Assignments of applications, patents, and registrations, accompanied
by completed cover sheets as specified in Section Section  3.28 and
3.31, will be recorded in the Office. Other documents, accompanied by
completed cover sheets as specified in Section Section  3.28 and 3.31,
affecting title to applications, 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
Commissioner of Patents and Trademarks for recording all licenses,
assignments, or other interests of the Government in or under patents or
patent applications. Assignments and other documents affecting title to
patents or patent applications and documents not affecting title to
patents or patent applications required by Executive Order 9424 to be
filed will be recorded as provided in this part.

37 CFR 3.58 Governmental registers.

(a) The Office will maintain a Departmental Register to record
governmental 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
representatives of the Government. Governmental interests recorded on
the Departmental Register will be available for public inspection as
provided in Section  1.12.

(b) The Office will maintain a Secret Register to record governmental
interests required to be recorded by Executive Order 9424. Any
instrument 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 examination 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.

---SECTION---302.01 Assignment Document Must Be Original or True Copy
for Recording

37 CFR 3.24 Formal requirements for documents and cover sheets.

The document and cover sheet must be legible. Either the original
document 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
Section  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.

---SECTION---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 language, will not be
recorded unless accompanied by an English translation signed by the
translator.

---SECTION---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
Section  1.53(b) is executed concurrently with, or subsequent to, the
execution of the patent application, but before the patent application
is filed, it must identify the patent application 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 Section  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 application by names(s) of
the inventors and the title of the invention.

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 assignment 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."

---SECTION---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
process or notice of proceedings affecting the patent or rights
thereunder. If the person designated cannot be found at the address
given in the last designation, 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
domiciled 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 residing 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 process or notice of proceedings affecting the
application, patent or registration 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 representative 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 designation paper can be placed in each
file. The designation of a domestic representative should be directed to
the Office of the Solicitor for processing.

---SECTION---302.05 Address of Assignee

The address of the assignee may be recited in the assignment document
and must be given in the required cover sheet. See MPEP Section  302.07.

---SECTION---302.06 Fee for Recording

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 Section  1.21(h) of this chapter for patents and
in Section  2.6(q) 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 Section  3.31(c)(2)); and

(2) The document and cover sheet are mailed to the Office in compliance
with Section  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).

---SECTION---302.07 Assignment Document Must Be Accompanied by a Cover
Sheet

37 CFR 3.28 Requests for recording.

Each document submitted to the Office for recording must be accompanied
by at least one cover sheet as specified in Section  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 must be submitted. 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
any incomplete cover sheet will be returned pursuant to Section  3.51
for proper completion of a cover sheet and resubmission of the document
and a completed cover sheet.

37 CFR 3.31 Cover sheet content.

(a) Each patent or trademark cover sheet required by Section  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) Each application number, patent number or registration number
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 number of applications, patents or registrations identified in
the cover sheet and the total fee;

(7) The date the document was executed;

(8) 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 Section  3.61); and

(9) A statement by the party submitting the document that to the best of
the person's knowledge and belief, the information contained on the
cover sheet is true and correct and any copy submitted is a true copy of
the original document; and

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

(b) A cover sheet may not refer to both patents and trademarks.

(c) Each patent cover sheet required by Section  3.28 seeking to record
a governmental interest as provided by Section  3.11(b) must:

(1) Indicate that the document is to be recorded on the Governmental
Register, and, if applicable, that the document is to be recorded on the
Secret Register (see Section  3.58); and

(2) Indicate, if applicable, that the document to be recorded is not a
document affecting title (see Section  3.41(b)).

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 contain:

(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 transaction to be
recorded;

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

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

(F) The number of patent applications and patents identified in the
cover sheet and the total fee;

(G) The date the document was executed;

(H) A statement by the party submitting the document that to the best of
the person's knowledge and belief, the information contained on the
cover sheet is true and correct and any copy submitted is a true copy of
the original document; and

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

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 organization's name appears on the document.

Examples of the type of descriptions of the interest conveyed 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 document 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 document
affecting title.

A patent cover sheet may not refer to trademark applications or
registrations.

---SECTION---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
Section  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 Section 
3.31(c)(2)) must be addressed and mailed to the Commissioner of Patents
and Trademarks, 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 provided in 37 CFR 3.27(b), to ensure
prompt and proper processing, 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
Patents, Box DAC, Washington, DC 20231. New applications and other
petitions should be addressed to the Assistant Commissioner for Patents,
Washington, DC 20231. A document 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 Patents and
Trademarks, Box Government Interest, Washington, DC 20231.

---SECTION---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 different 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 Section  320.

---SECTION---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 assignment recorded
against the original application is applied to the division or
continuation application because the assignment recorded against the
original application gives the assignee rights to the subject matter
common to both applications.

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
applications require a new assignment if they are to be issued to an
assignee.

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

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

An application claiming the priority benefits of a provisional
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 continuations, 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 Section  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 subject 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.

---SECTION---307 Issue to Assignee

35 U.S.C. 152 Issue of patent to assignee.

Patents may be granted to the assignee of the inventor of record in the
Patent and Trademark Office, upon the application made and the
specification sworn to by the inventor, except as otherwise provided in
this title.

37 CFR 3.81 Issue of patent to assignee.

(a) 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 Section  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, however, affect the
existing practice of recording assignments with the Office in the
Assignment Division. The assignee entry on form PTOL-85B should still be
completed to indicate the assignment data as recorded in the Office. For
example, the assignment filed in the Office and, therefore, the PTOL-85B
assignee entry might read "Smith Company doing business as (d.b.a.)
Jones Company." The assignee entry on the printed patent will read
"Smith Company."

Irrespective of whether the assignee participates in the prosecution of
the application, the patent issues to the assignee if so indicated on
the Issue Fee Transmittal form PTOL-85B. Unless an assignee's name and
address are identified in item 3 of the Issue Fee Transmittal form
PTOL-85B, the patent will issue to the applicant. Assignment data
printed on the patent will be based solely on the information so
supplied.

A request for a certificate of correction under 37 CFR 1.323 (see MPEP
Section  1481 and Section  1485) arising from incomplete or erroneous
assignee's name furnished in item 3 of PTOL-85B will not be granted
unless a petition under 37 CFR 1.183 has been granted. Any such petition
under 37 CFR 1.183 should be directed to the Office of Petitions and
should include:

(A) the petition fee required by 37 CFR 1.17(h);

(B) a request that 37 CFR 3.81(a) be waived to permit the correct name
of the assignee to be provided after issuance of the patent;

(C) a statement that the failure to include the correct assignee name on
the PTOL-85B was inadvertent; and

(D) a copy of the Notice of Recordation of Assignment Document.

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

---SECTION---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 following 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 application 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 Section  201.11), and in this case the required "Government
License Rights" statement should follow immediately as the second
paragraph 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.

---SECTION---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 dispute 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 confirmation
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
arbitration proceeding, the defenses provided for under section 282 of
this title shall be considered by the arbitrator if raised by any party
to the proceeding.

(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 person. 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 Commissioner.
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
modification 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 patentee, 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 modified
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.

---SECTION---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 applications 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
documents are recorded in the public interest in order to give third
parties notification of equitable interests or other matters relevant to
the ownership of a patent or application.

Any document returned unrecorded, which the sender nevertheless believes
represents an unusual case which justifies recordation, may be submitted
to the Office of Petitions 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 determination 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 Section 
324.

---SECTION---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 constitute 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.

---SECTION---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 application numbers against a document, other than an assignment,
previously recorded in the Assignment Division, upon submission 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 document 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 original 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 Section  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 submission, update
the assignment database, and microfilm the cover sheet and document,
which shall become part of the official record.

---SECTION---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 recordable 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.

---SECTION---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 Section  3.21 will not be recorded. Documents not
meeting the other requirements for recording, for example, a document
submitted without a completed 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 specified 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 Section  1.8 or
Section  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 considered 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 document 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 submitted
without a completed cover sheet or without the required fee, will be
returned for correction to the sender where a correspondence address is
available.

---SECTION---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 accompanied 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 procedure 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.

---SECTION---317.03 Effect of Recording

37 CFR 3.54 Effect of recording.

The recording of a document pursuant to Section  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 necessary, 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
subsequent, 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 determine 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 document has, including whether a party has the authority to
take an action in a matter pending before the Office. See MPEP Section 
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.

---SECTION---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.

---SECTION---320 Title Reports

The "title report" is a form which can be used under certain
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 Preprocessing
Staff when a request for reexamination is filed. Title reports are for
internal Office use only, and are not available for order by applicants
or attorneys. Examiners may obtain a title report by requesting a title
report from Assignment 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 Section  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 application, and since examiners can
obtain assignment information through PALM. See MPEP Section  303.

---SECTION---323 Procedures for Correcting Errors in Recorded Assignment
Document

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

(A) The original assignment document with the corrections 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 submitted with the corrective document. The
corrective document 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 Section  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 Section  314).

Office policy regarding recordation of assignment documents is directed
toward maintaining a complete history of claimed interests in property
and, therefore, recorded assignment documents will not be expunged even
if subsequently found to be invalid. See In re Ratny, 24 USPQ2d 1713
(Comm'r Pat. 1992).

---SECTION---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 Section  3.11 will be
corrected 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 originally
recorded document or a copy of the originally recorded document and by
the recording fee as set forth in Section  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.

---SECTION---324 Establishing Right of Assignee to Take Action

37 CFR 3.73 Establishing right of assignee to take action.

(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 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.
Ownership 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 assignee's
ownership may be established either:

(A) 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

(B) by specifying (e.g., 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.

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 ownership has not changed.

The submission establishing ownership must be signed by a party
authorized to act on behalf of the assignee. For example, the submission
under 37 CFR 3.73(b) may be signed on behalf of the assignee in the
following two manners 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, 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. A person
having a title (manager, director, 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. A power of attorney from the inventors in an organization to a
practitioner to prosecute a patent application 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
includes an averment that the person is empowered to sign the submission
on behalf of the assignee. Where a submission does not comply with (A)
or (B) above, evidence of the person's authority to sign will be
required.

Examples of situations where ownership must 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), unless papers establishing
ownership under 37 CFR 3.73(b) were filed in the prior application and
ownership has not changed (MPEP Section  201.06(d)); signs a request for
status of an application or gives a power to inspect an application
(MPEP Section  102 and Section  104); acquiesces to express abandonment
of an application (MPEP Section  711.01); appoints its own legal
representative (37 CFR 3.71 and MPEP Section  402.07); signs a terminal
disclaimer (MPEP Section  1490); consents to the filing of a reissue
application (MPEP Section  1410.01); consents to the correction of
inventorship (MPEP Section  201.03 or Section  1481); files an
application under 37 CFR 1.47(b) (MPEP Section  409.03(b)) or 37 CFR
1.425; signs an Issue Fee Transmittal (PTOL-85B) (MPEP Section  1306);
or signs a reply to an Office action.

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
ownership under 37 CFR 3.73(b) were filed in the prior application and
ownership has not changed (MPEP Section  201.06(d)); signs a small
entity statement (MPEP Section  509.03); signs an affidavit or
declaration of common ownership of two inventions (MPEP Section 
706.02(k)); signs a NASA or DOE property rights statement (MPEP Section 
151); signs an affidavit under 37 CFR 1.131 where the inventor is
unavailable (MPEP Section  715.04); signs a certificate un der 37 CFR
1.8 (MPEP Section  512); or files a request for reexamination of a
patent under 37 CFR 1.510 (MPEP Section  2210).

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)[GRAPHIC]

Form PTO-1619A. Recordation Form Cover Sheet[GRAPHIC]

[GRAPHIC]

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