300

OCR transcription for search; preserved printed pages are authoritative

# Chapter 300 Ownership and Assignment

301
Assignability of Patents and Applications

302
Effect of Recording

303
Endorsing Assignments on Pending Applications
304
Conflicting Subject Matter in Two Applications
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

305.02 (a) Rejection of One Application on the Other

306
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 85 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 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 Some 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.

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).

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

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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 on the claimed subject mat-
ter of the earlier filed still pending applica-
tion ;

II. where either application issues as a pat-
ent, the other should be rejected thereon. Such
rejection cannot be avoided by filing a dis-
claimer of the conflicting patent claims.

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

When a divisional, continuation, or substi-
tute application is ready for allowance, it is
sent to the Assignment Branch where the as-
signment of the original application is applied
to the later 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 con-
flict between the assignment of the original

application and the assignment of the continu-
ation-in-part as far as concerns the common
subject matter. If such a conflict does exist
the Assignment Branch notifies the proper par-
ties 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

The Notice of Allowance includes the name
of the assignee of record, if any.

## 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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