300

OCR transcription for search; preserved printed pages are authoritative

# Chapter 300 Ownership and Assignment

301
Assignability of Patents and Applications

802
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
Rejection because of Common Ownership

306
Assignment of Division, Continuation, Substi-
tute and Continuation-in-Part in Relation to
Parent Case

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 Section 4898 R. S., 35 U. S. C. 47. Every
application for patent or patent or any interest therein
shall be assignable in law by an instrument in writing,
and the applicant or patentee or his assigns or legal
representatives may in like manner grant and convey
an exclusive right under his application for patent or
patent to the whole or any specified part of the United
States.

## 302 Effect of Recording

Extract from Section 4898 R. S., 35 U. S. C. 47. An
assignment, grant, or conveyance shall be void as
against any subsequent purchaser or mortgagee for a
valuable consideration, without notice unless it is re-
corded in the Patent Office within three months from
the date thereof or prior to such subsequent purchase
or mortgage.

## 303 Endorsing Asignments 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 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.

## 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 to the same treatment as to over-
lapping claimed subject matter as though they
were all the applications of one and the same
inventor. That is, when the question of inter-
ference involving this common subject matter
arises, the owner of the applications must, in the
absence of any good reason to the contrary,
elect which one shall be placed in interference;
or when one claiming that common subject mat-
ter is passed for issue it becomes as to such sub-
ject matter prior art against the other applica-
tions of that ownership. See Rule 78 (b),
706.03 (k), 1101.01 (b), and 822 to 822.02 (e).

## 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
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 continuation-
in-part application because the assignment of
the original application gives the assignee only
the subject matter common to both applications.
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 application and the
assignment of the continuation-in-part as far
as concerns the common subject matter. If such
a conflict does exist the Assignment Branch
notifies the proper parties that it should be cor-
rected. If the conflict is not corrected the con-
tinuation-in-part will issue to the applicant
and not to the assignee.

## 307 Issue to Assignee

For the patent to normally issue to an
assignee, 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

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application for reissue, the assignment must be
recorded before the case is allowed; in the case
of an application for a design patent, the assign-
ment 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 appli-
cation in which there is an assignment of record,

after the name of the applicant, a comma fol-
lowed 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; R. S. 480. Restrictions on officers and
employees of Patent Office as to interest in patents. All
officers and employees of the Patent Office shall be
incapable, during the period for which they hold
their appointments, to acquire or take, directly or indi-
rectly, except by inheritance or bequest, any right or
interest in any patent issued by the office.