[author: Courtenay C. Brinckerhoff]

As set forth in the final rules published in the August 14, 2012 Federal Register, assignees will be able to file and prosecute U.S. patent applications filed on or after September 16, 2012. The USPTO’s rules implement changes to 35 USC § 118 embodied in the America Invents Act (AIA), and bring U.S. patent practice in line with most other countries that do not require inventors to be the “applicants” on patent applications. However, these rule changes apply only to U.S. applications filed under 35 USC § 111(a) on or after September 16, 2012, and U.S. national phase applications based on PCT applications filed under 35 USC § 363 on on or after September 16, 2012.

The Statutory Provisions

The AIA amended 35 USC § 118 to read:

A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.

In the Federal Register Notice, the USPTO refers to “a person to whom the inventor has assigned the invention” as an “assignee,” and “a person to whom the inventor is under an obligation to assign the invention” as an “obligated assignee.” For convenience, in this article I use “assignee filing” to refer to filing and prosecution by any such person.

The effective date language in the AIA provides that “[t]hese amendments shall take effect upon expiration of the 1-year period beginning on the date of the enactment of this Act and shall apply to any patent application that is filed on or after that effective date.”

Assignee Filing

The USPTO’s final rules implement assignee filing in a number of provisions. Generally, the USPTO is drawing a new distinction between the “applicant” and the inventors. The “applicant” is the person “making the application” and can be the inventors, the assignee, the obligated assignee, or “a person who otherwise shows sufficient proprietary interest in the matter,” as indicated in new 37 CFR § 1.42.

Assignee filing is specifically provided for in new 37 CFR § 1.46:

(a) A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.

For applications filed under 35 USC § 111, this is effected by filing an Application Data Sheet (ADS) under 37 CFR § 1.76 specifying the assignee (etc.) in the “Applicant” field. For U.S. national stage applications, the applicant named at the international stage will be the applicant for the United States.

For assignees and obligated assignees, “documentary evidence of ownership (e.g., assignment for an assignee, employment agreement for a person to whom the inventor is under an obligation to assign the invention)” must be recorded “no later than the date the issue fee is paid.”

If the applicant is “a person who otherwise shows sufficient proprietary interest in the matter,” the applicant must submit a petition including:

• The fee set forth in § 1.17(g);
• (ii) A showing that such person has sufficient proprietary interest in the matter; and
• (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.

In accordance with 37 CFR § 1.46(f), the USPTO may publish notice of the filing of the application by a person who otherwise shows sufficient proprietary interest in the Official Gazette.

The Federal Register Notice refers to MPEP § 409.03(f) for “[a] discussion of the evidence necessary for a showing that a person has sufficient proprietary interest in the matter.” That portion of the MPEP provides:

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.47(b) applicant. The facts in support of any conclusion that a court would award title to the 37 CFR 1.47(b) applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

Power of Attorney

The commentary in the Federal Register Notice expresses the USPTO’s position that if the invention has been assigned, the power of attorney should be executed on behalf of the assignee, not by the inventors. Moreover, new 37 CFR § 1.31 requires “a juristic entity (e.g., organizational assignee)” to be represented by a patent practitioner. Thus, when an assignee is the applicant, a power of attorney executed on behalf of the assignee should be filed.

New 37 CFR 1.32(d) provides that a power of attorney filed in a parent application can be used in a continuing application if a copy is filed in the continuing application, unless the power of attorney was executed by the inventors and the continuing application names an additional inventor, in which case a new power of attorney will be required.

Change of Applicant

As set forth in new 37 CFR § 1.46(c), a request to change the applicant after an original applicant has been established must be include an ADS specifying the new applicant in the “Applicant” field and must comply with 37 CFR §§ 3.71 and 3.73.

Inventor Oath/Declaration Still Required

Even when an assignee has the right to make an application, an executed oath/declaration by each inventor must be provided by the time the issue fee is paid, unless an inventor is deceased, legally incapacitated, refuses to cooperate or cannot be reached after diligent effort. If one of those circumstances apply, the assignee can execute a “substitute statement” in accordance with new 37 CFR § 1.64.

New Practices, New Forms

From the commentary I have seen, international applicants are looking forward to these changes to U.S. patent practice. However, PCT applicants will have to wait a bit longer or file U.S. by-pass continuation applications, because these changes only apply to U.S. national phase applications if the PCT application was filed on on or after September 16, 2012.

Now that I have reviewed the final rules, I think assignee filing will offer a number of benefits, although it may take some time to become accustomed to the formal requirements. The USPTO has new forms available on the USPTO website, but practitioners and applicants should take care to use the new forms (and invoke the new assignee filing rules) only for applications filed on or after September 16, 2012.