500

OCR transcription for search; preserved printed pages are authoritative

# Section 5. OWNERSHIP AND ASSIGNMENT

## 5-10 Assignability of Patents

-1.
In Whom May Be Vested

Assignee
-1-2.

-1-3.
Grantee

-1-4.
Mortgagee

-1-5.
Licensee

=2 .
Acknowledgment

\- 30
Recording

-3-1.
Receipt, Recording and
Return of Assignment

-3-2.
Date of Record

-3-30

Effect of Recording

-40
Conditional Assignment

-50
Details of Assignment Procedure

-5-1.
Paper and Type to Be Used

-- 6 .
Control By Assignee of the Entire Interest

-70

Conflicting Assignments

-8.
Conflicting Subject Matter In Two
Applications of Same Inventor, One
.f Which Is Assigned.

),
Rejection Because of Common Ownership
-- 10.
Rights of Assign's of Part Interest

-1.1.
Assignment of Division, Continuation,
Substitution and Continuation-In -Part
In Relation to Parent Case .

-12.
Issue to Ass ignee

... ].2 1. Notice of Allowance when Assigned

-12-2. Successive Assignments

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# OWNERSHIP AND ASSIGNMENT

## 5-10

## Assignability of Patents

Every patent or any interest therein is assignable
in law by an instrument in writing, and the pabonitos or
his assigns or legal representatives may, in like manner,
grant and convey an exlusive right under the patent to
the whole or any specified part of the United States.
( from Sec. 4898 R.S. )

5-1-1.
In Whom May Be Vested

Interest in patents may be vested in assignees, in
grantees of exclusive territorial rights, in mortgagees,
and in licensees.

5-1-2.

## Assignee

An assignee is a transferee of the whole interest
of the original patent or of an undivided part of such
whole interest, extending to every portion of the United
States. The assignment must be written or printed and
duly signed.

5-1-3.

## Grantee

A grantee acquires by the grant, the exclusive
right, under the patent, to make, use, and vend, and to
grant to others the right to make, use, and vend, the
thing patented within and throughout some specified part
of the United States, excluding the patentee therefrom.
The grant must be written or printed and be duly signed ..

5-1-4.
Mortgagee

A mortgage must be written or printed and be duly
signed.

Liconsee
5-1-5.

A liconsee tako an interest less then or different
from either of the others. A license may be oral, written,
or printed, and if writton, or printed, must bo duly
signed ..

5-26

## Acknowledgment

Act., Mar. 3, 1807: If any assignment, grant, or
conveyance of any patent shall be acknowledged before any

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notary public of the several States or Territories or tho
District of Columbia, or any Commissioner of any court of
the United States for any District or Territory, or before
any secretary of legation or consular officer authorized
to administer oaths or perform notarial acts under section
1750 of the Revised Statutes, the certificate of such ac-
knowledgment, under the hand and official seal of such
notary or other officer, shall be prima facie evidence of
the execution of such assignment, grano, of convoyance.
5-30

## Recording

No instrument will be recorded which is not in the
English language and which does not, in the judgment of
the Commissioner, amount to an assignment, grant, mortgage,
lien, incumbrance, or license, or which does not affect the
title of the patent or invention to which it relates.
Such instrument should identify the patent by date and
number; or, if the invention be unpatented, the name of
the inventor, the serial number, and date of the appli-
cation should be stated.

### 5-3-1. Receipt, Recording, and Return of Assignments

The receipt of assignments is generally acknowledged
by the office. They are recorded in regular order as
promptly as possible, and then transmitted to the persons
entitled to them. Sec. 2-1-4 for secret recording of
Government-owned applications under Sec. 4894 R.S.

5-3~2.
Date of Record

The date of the record is the date of the receipt
of the assignment at the office in proper form and ac-
companied by the full legal fee for recordingo

5-3-3.
Effect of Recording

Sec. 4898 R.S .: An assignment. grant, or con-
veyance of a patent will be void as against any sub-
soquent purchaser or mortgagee for a valuable consid ...
eration, without notice unless recorded in the Patent
Office within three months from the date thereof or prior
to such subsequent purchase or mortgage.

5-40
Conditional Assignment

Assignments which are made conditional on the
performance of certain stipulations .. as the payment of
money, if recorded in the office are regarded as absolute
assignments until canceled with the written consent of
both parties or by the decree of a competent court.

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The office has no means to determine whether such con-
ditions have been fuifilled.

5-5.
Details of Assignment Procedure

When an assignment is received in the Patent Office
with the proper fee for recording, it goes to the Assignment
Division, where it is indexed. A card index of assignees
is kept and also a card index of inventors. The assignment
is reproduced in record books, and the original is returned
to the party filing it. A digest of the assignment is
made indicating its purport and showing how it affects the
title to the patent or application.

The Assignment Division segregates assignments re-
lating to pending applications; and entry clerks from that
division locate the file of the application and endorse on
it the name of the assignee.

In the case of every application where the final
fee has been paid, the file, before it goes to the Print-
ing Office, is sent to the Assignment Division where a
search is made to see that the proper assignee's name is
endorsed on the file. The patent issues to the assignee
whose name is indorsed on the file by the Assignment Di-
vision.

An exclusive license to makes use, and sell is
treated as an assignment except that the patent does not
issue to the licensee unless so requested in the license.

The records in the Assignment Division are open to
the public for search and examination and copies of any
assignment on record or of the abstracts of assignment
may be obtained.

The hasignment Division has e complete card index
of all the raventers and registrants from deeds recorded
from 1905 to date for use in making title searches. It
also has a cord index since 1922 of inventors, assignors,
and assigneas in usods received for record, from which
searches can be completed from the book indexes prior to
1922 to ascertain what assignments have been received
under the news of an esstyle . cssignor, > inventor.
5.5-10
Papor and Typo to Be Used

ne extent office records assignments by a photo ..
atat path. given an accurate reproduction of the
original document. It Je, therefore, requested that all
Instruments presented for recording be typed on white
paper in black ink, that when the papers are ribboned, the
ribbe we are not as Got to suscuro the typing and

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that as far as possible the seal and any certificates be
placed directly on the body of the assignment, after and
below the signatures.

## 5-6. Control By Assignee of the Entire Interest

The assignee of the entire interest in an application
may intervene in the prosecution of the case, appointing an
attorney of his own choice. Such intervention, however,
does not exclude the inventor from access to the application
to see that it is being properly prosecuted, unless the
assignee makes specific requests to that effect. Despite
such a request, the applicant may be permitted to inspect
the case on sufficient showing why such inspection is
necessary to conserve his rights.

5-70
Conflicting Assignments

Irrespective of whether the assignee participates
in the prosecution of the application, the patent issues
to him unless there are conflicting assignments. Where
there are two or more conflicting assignments of an appli-
cation the assignee whose date of assignment is earliest
may, if his assignment is recorded in the Patent Office,
take over the prosecution of the case, and this irrespective
of whether the date of recording in the Office is earlier
or later than that of some other assignee. Although the
Office practice permits this earliest assignee to prosecute
the case, the patent issues to the inventor, leaving to
the courts to decide the question of title as between the
conflicting assignments.

5-80

Conflicting Subject Matter In Two
Applications of Same Inventor. One of
Which Is Assigned

Where applicant has pending two applications with
overlapping subject matter therein, and assigns one of the
applications in its entirety which assignment is duly re-
corded in the Patent Office, the assigned application at
once becomes reference against the second application for
all common subject matter, irrespective of the dates of
filing of the two applications, and also of any subsequent
assignment of the second case. Sec. 10-8.23.

5-9.
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 ownership are subject to the same

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treatment as to overlapping claimed subject matter as
though they were all the applications of one and the same
inventor. That is,, when the question of interference
involving this common subject matter arisos, the owner
of the applications must. in the absence of any good
reason to the contrary,, efect which one shall be placed in
interference; or when one claiming that common subject
matter is passed for issue it becomes as to such subject
matter prior art against the other applications of that
ownershipo

5.10.
Rights of Assignee of Part Interest

While it is only the assignee of the entire interest
who can intervene in the prosecution of an application or
Interference to the exclusion of the applicant, as assignee
of a part interest or a licensee of exclusive right is
entitled to knowledge of the steps being taken in such
prosecution.

### 5-11. Assignment of Division, Continuation, Substi- tution and Continuation-In-Part in Relation to Parent Case

Where there is filed a division, a continuation, or
a substitute of a prior application which has been assigned,
the assignment of the parent case applies to the later filed
case. Where the later case is a continuation in part, the
assignment does not carry over from the earlier case. For
this reason the examiner does not endorse on the margin of
the face of the file jacket of such case a notation as to
its being a continuation in part, but does appropriately
endorse a division, a continuation and a substitute. Such
endorsement on the file wrapper should be made by the
examiner at the time of his first action on the Inter case.
and when preparing the case for time the file should be
sent to the Assignment Division for polation on the wrappor
of the data pertaining so the assignment of the prior caseo

Where the app: : ation is a continuation- in-part,
the lettera Cara tte stamped at the bottom of the file
Jacket. att when the aon 's roady for allowance, it will
be sent to ing Assignment pivision for vitlo search.
5.12.

wenn patent to normally free to an assigned
the moment meet recorded in the Patent Office at a
date ( det est ther that the day on which the final fee
is pata, to the case of an application for a design patent,
the student must be recorded before the case is allowed.

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5-12-1.

# Notice of Allowance Where Case is Assigned

In writing the notice of allowance of an application
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.

Where an applicant carrying on the prosecution of
an application after assignment dies, his administrator
may carry on the prosecution on filing leters of adminis-
tration unless and until the assignee intervenes.

## 5-12-2. Issue of a Patent to an Assignee of an Assignee

In view of the fact that an assignee takes title
altogether by virtue of his grant and not at all through
any request to the Commissioner of Patents, it is directed
that hereafter whenever an assignee of the whole interest
in an application assigns that application with request that
the patent be granted to his assignee, the patent should
issue as requested, even though the prior assignment or
assignments contain no request as to whom the patent should
be issued.