300

OCR transcription for search; preserved printed pages are authoritative

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# Chapter 300 Ownership and Assignment

001
Assignability of Patents and Applications

302
Effect of Recording

$03
Endorsing Assignments on Pending Applications
Conflicting Subject Matter In Two Applications
304
of Same Inventor. One of Which Is Assigned
305
Different Inventors, Common Ownership

305.01
Unclaimed Subject Matter in the Earlier Filed
Application

305.02
Claimed Subject Matter the Same or Not Pat-
entably Different

306

305.02(a) Rejection of One Application on the Other
Assignment of Division, Continuation, Substi-
tute, and Continuation-in-Part in Relation to
Parent Case

307
Issue to Assignee

308
Notice of Allowance Where 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 face evi-
dence of the execution of an assignment, grant or
conveyance of a patent or application for patent.

## 302 Effect of Recording

Extract from 35 U.S.C. 261. 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
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

The file jacket of an application ordinarily
does not display the endorsement of an assign-
ment during the period an application is before
an Examiner.

The name of the assignee is endorsed on the
file of an application only when it is submitted
to the Assignment Branch for a title report.
Therefore, the file jacket cannot be relied upon
to accurately reflect the assignment status of an
application while it is pending before an Ex-
aminer. Title searches are automatically made

## in all applications after the payment of the issue fee.

When the determination of the assignment
condition of an application is significant, as in
the factual situations represented by Sections
304 and 305, it is necessary to submit the appli-
cation to the Assignment Branch for a title
report.

## 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 sec-
ond application for all common subject matter
disclosed, irrespective of the dates of filing of
the two applications, and also of any subse-
quent assignment of the second case to an-
other.

## 305 Different Inventors, Common Ownership

Where there is a common assignee of two or
more applications by different inventors, these
applications are subject by reason of their
common ownership to treatment in general the
same as though they were all the applications
of the same inventor that were voluntarily
separately filed; see Chapter 800 and In re
Stanley et al., 102 USPQ 234. Note, that in
order to reject on the grounds of double patent-
ing the cases must have the same inventive
entity. See 804.

Where the applications disclose and claim
patentably different inventions, there being no
overlap of claims, or where the earlier filed
application has issued as a patent and has be-
come a statutory bar before filing of the other
application, no problems arise.

## 305.01 Unclaimed Subject Matter in the Earlier Filed Application

If the second filed application claims subject
matter disclosed but not claimed in the earlier
filed application, 35 U.S.C. 102(e) applies and
the earlier filed application is a reference
(Section 706.02) unless it is removed (Section
715).

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305.02

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# 305.02 Claimed Subject Matter the

Same or Not Patentably Dif-
ferent

Where the applications by different inven-
tors but of common ownership claim the same
subject matter or subject matter that is not
patentably different, questions of interference
therebetween and with third parties are
handled as indicated in Section 1101.01(b).

# 305.02(a) Rejection of One Applica- tion on the Other

Where the examiner is of the opinion that
the several applications are for the same sub-
ject matter or subject matter not patentably
different :-

I. the claims in the later filed application
should be rejected under 35 U.S.C. 102 or 103
on the claimed subject matter of the earlier filed
still pending application ;

II. where the senior application issues as a
patent, the other should be rejected thereon
under 85 U.S.C. 102 or 103.

In the event that a common assignee, after
taking out a patent on one of two or more appli-
cations, for the first time presents claims in a
pending application which are not patentably
distinct from claims of the patent, the claims of
the application should be rejected on the ground
that the assignee, by taking out the patent at a
time when the application was not claiming the
patented invention, is estopped to contend that
the patentee is not the prior inventor.

If a patent is inadvertently issued on one of
two commonly owned applications by different
inventive entities which at the time when the
patent issued were claiming inventions which
were not patentably distinct, the assignee should
be called on to make a determination of priority
as in the case of pending applications. If the
determination indicates that the patent issued to
the senior entity the rejection set forth above in
II should be maintained. If no election is made
and the patent has issued to the junior entity,
an interference should be declared. An election
of the applicant as the first inventor should not
be accepted without a complete (not terminal)
disclaimer of the conflicting claims in the patent.
See 804.03.

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

After the payment of the issue fee. a divi-
sional, continuation, or substitute application is

sent to the Assignment Branch where the as-
signment of the original application is applied
without charge to the liter application, pro-
vided 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 sp-
plications. Continuation-in-part applications
require separate assignments if they are to be
issued to an assignee.

The Assignment Branch has discontinued
mailing notification in cases where there is a
conflict in assignment between an original ap-
plication and its divisional, continuation, sub-
stitute, or continuation-in-part application.
Where there are conflicting assignments, the
patent will normally issue to the applicant.

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 issue fee (formerly termed "final
fee") is paid; in the case of an application for a
design patent filed before Oct. 25, 1965, the
assignment 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

The Notice of Allowance no longer provides
for including the name of 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 in-
directly, 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 there-
after they shall not be entitled to any priority date
earlier than one year after the termination of their
appointment.

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