Patent It Yourself - PDF Archive

ChaPter 10 | FINALING and MAILING Your APPLICATION | 293
H. Assignments
As I mentioned, a patent application must be filed in the
name or names of the true inventor or inventors of the
invention claimed in the patent application. The inventors
then become the applicants for the patent, and the law
considers that they automatically own equal shares of the
invention, the patent application, and any patents that may
issue on the application (Chapter 16, Section B). However,
inventorship can be different from ownership. Often all
or part of the ownership of the invention and the patent
application must be transferred to someone else, either
an individual or a legal entity, such as a corporation, a
partnership, or an individual. To make this transfer, the
inventor(s) must “assign” (legally transfer) their interest.
The assignment transfers ownership (or part of it) from
the inventor(s) to another entity. However, inventorship
remains the same after an assignment is made. (Directions
and forms for completing the assignment are in Chapter 16,
Section E.)
If you have assigned the application to another and you
want to send the assignment to the PTO for recording
(highly advised), you can either send it in with the patent
application or at any time afterward. I prefer to send in
assignments later, after I get the postcard receipt back, when
I know and can add the serial number and filing date of
the application to the assignment. This will make the two
documents (the assignment and the application) correspond
to each other more directly. In this case, you can add the
serial number and filing date to the assignment in the
spaces indicated. Then prepare an Assignment “Recordation
Form Cover Sheet” (Form 16-4 or PTO 1595). In space 1,
the conveying parties are the inventor applicants. In space
2A, the receiving party is the assignee—the person or
organization to whom you’re assigning the application. The
Internal Address is the mail stop or apartment number if
any, in the assignee’s building. In space 3, the Conveyance is
an assignment and the execution date is the date you signed
the assignment. In space 4, the Application Number is the
Serial Number of your patent application. I recommend
that you also type the filing date. If you don’t know these
numbers yet, just fill in the execution (signing) date of your
PAD. If you’re assigning a patent, fill in the patent number
and issue date in space 4B. “Additional numbers attached
[ ] Yes [ ] No” should be checked to indicate whether or
not you’ve listed additional cases on an attached sheet. The
remaining blocks are self-explanatory. Make sure to include
the recordation fee (see Appendix 4, Fee Schedule).
If you wish to send the assignment in with your patent
application, complete the Recordation Form Cover Sheet
(Form 16-4), check the “Assignment Papers” (box 9 on
Form 10-2), and on Form 10-3 type “Assignment Recordal”
after “Other” in Section 3. Include the fee on this line and in
your total at the top of the form.
If an assignment of a patent application has been
recorded and it is referred to in the issue fee transmittal
form (see Chapter 13), the PTO will print the patent with
the assignee’s interest indicated. However, even if you fail to
indicate the assignment on the issue fee transmittal, so that
the patent doesn’t indicate the assignment, the assignment
will still be effective if it has been recorded.
If an assignment has been made, and as a result there
are two or more owners of the patent application, then the
owners should consider signing a Joint Owners’ Agreement
(Form 16-2). See the reasons for the JOA in Chapter 16,
Section C.
I. Petitions to Make Special
If you need to have your patent issue sooner than the
normal course of one to three years, you can—in certain
cases—have it examined ahead of its normal turn. There
are two basic ways to get your examination expedited:
(1) by filing a simple “petition to make special” (PTMS)
based on (a) old age, (b) poor health, (c) environmental
enhancement, (d) conservation of energy, or (e) countering
terrorism, or (2) by filing a more complicated PTMS Under
the Accelerated Examination Program (PTMSUAEP).
Unless you have a specific need for the early examination
or issuance of a patent—for example, an infringement
is occurring and you need a patent to get capital for
manufacturing the invention, or the technology is rapidly
becoming obsolete, or you’re contemplating foreign
filing—most patent professionals agree that there is usually
little to be gained in filing a PTMS. (One reason to avoid
the PTMSUAEP is that is estimated to take 12 hours
to prepare.) The simple PTMS may be granted for the
following reasons:
• Applicant’s age is 65 or greater, or
• Applicant’s health is such that he or she might not be
available to assist in the prosecution of the application
if it were to run its normal course
• The subject matter of this application will materially
enhance the quality of the environment
• The subject matter of this application will materially
contribute to the development or conservation of
energy resources
• The subject matter of this application will materially
contribute to countering terrorism.
The more complicated PTMSUAEP may be granted for
the following reasons: