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OCR transcription for search; preserved printed pages are authoritative

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# Chapter 300 Ownership and Assignment

301
Assignability of Patents and Applications

302
Effect of Recording

303

304

305

306

Endorsing Assignments on Pending Applications
Conflicting Subject Matter in Two Applications
of Same Inventor, one of Which is Assigned
Rejection because of Common Ownership
Assignment of Division, Continuation, Substi-
tute, and Continuation-in-Part in Relation to
Parent Case

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307
Issue to Assignee

308
Notice of Allowance when Assigned

309
Restriction upon Employees of Patent Office

## 301 Assignability of Patents and Appli- cations

Extract from 35 U. S. C. 261. A certificate of ac-
knowledgment 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, shall be prima facie evi-
dence of the execution of an assignment, grant or
conveyance of a patent or application for patent.

## 302 Effect of Recording

Extract from 85 U. S. C. 261. An assignment, grant,
or conveyance shall be void as against any subsequent
purchaser or mortgagee for a valuable consideration,
without notice, unless it is recorded in the Patent Office
within three months from its date or prior to the date
of such subsequent purchase or mortgage.

## 303 Endorsing Assignments on Pend- ing Applications

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The Assignment Branch segregates assign-
ments relating to pending applications; and
entry clerks from that branch locate the file of
the application and endorse on it the name of
the assignee.

## 304 Conflicting Subject Matter in Two Applications of Same Inventor, One of Which Is Assigned

Where applicant has pending two applica-
tions with overlapping subject matter therein,

and assigns one of the applications in its en-
tirety, which assignment is duly recorded in the
Patent Office, the assigned application at once
may become a reference against the second ap-
plication for all common subject matter dis-
closed, irrespective of the dates of filing of the
two applications, and also of any subsequent
assignment of the second case to another.

## 305 Rejection Because of Common Ownership

Where there is a common assignee of two or
more applications by different inventors these
applications by reason of their common owner-
ship are subject in general to the same treat-
ment as to overlapping claimed subject matter
as though they were all the applications of one
and the same inventor. That is, when the ques-
tion of interference involving this common
subject matter arises, the owner of the applica-
tions must, in the absence of any good reason to
the contrary, elect which one shall be placed in
interference. Claims in a later filed applica-
tion should be rejected if they conflict with
claimed subject matter in an earlier filed case
of common ownership. If claims in the second
application read on unclaimed subject matter in
the earlier filed case, 35 U. S. C. 102 (e) still
applies. See 706.02.

Where applications of different inventors
having a common assignee contain conflicting
claims, no interference is ordinarily instituted,
and elimination of such claims from all but one
application should usually be required, Rule 78
(b), Section 1101.01 (b). The common assignee
must elect the application in which the conflict-
ing subject matter is to be claimed; when one
such case becames a patent, the other should be
rejected thereon. This rejection cannot be
avoided by filing under Rule 321 a disclaimer
of the invention claimed in the patent.

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

When a divisional, continuation, or substitute
application is ready for allowance, it is sent to
the Assignment Branch where the assignment
of the original application is applied to the later

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application, provided the date of the assignment
of the original application was before the filing
of the later application.

In the case of a continuation-in-part, a prior
assignment of the original application is not
applied as a matter of course to the continua-
tion-in-part application because the assignment
of the original application gives the assignee
only the subject matter common to both ap-
plications. However, when a continuation-in-
part is ready for allowance, it also is sent to the
Assignment Branch to check for any conflict
between the assignment of the original applica-
tion and the assignment of the continuation-in-
part as far as concerns the common subject mat-
ter. If such a conflict does exist the Assignment
Branch notifies the proper parties that it should
be corrected. If the conflict is not corrected the
continuation-in-part will issue to the applicant
and not to the assignee.

### 307 Issue to Assignee

For the patent to normally issue to an as-
signee, the assignment must be recorded in the
Patent Office at a date not later than the day on
which the final fee is paid; in the case of an
application for reissue, the assignment must be
recorded before the case is allowed; in the case
of an application for a design patent, the as-

signment must be recorded at least ten days
before the case is allowed.

Irrespective of whether the assignee partici-
pates in the prosecution of the application, the
patent issues to him unless there are conflicting
assignments.

## 308 Notice of Allowance Where Appli- cation Is Assigned

In writing the notice of allowance of an ap-
plication in which there is an assignment of
record, after the name of the applicant, a
comma followed by the expression "Assor, etc."
should be written. This will serve to notify
the addressee that the patent will issue to the
assignee.

## 309 Restrictions Upon Employees of Patent Office

35 U. S. C. 4. Restrictions on officers and employees
as to interest in patents. Officers and employees of
the Patent 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 indi-
rectly, 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 appoint-
ment.

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