What is the procedure for recording a document other than an assignment with the United States Patent and Trademark Office?
Business & Corporate, Intellectual Property
By Rayan F. Coutinho
37 C.F.R. §3.11 and MPEP §3.11 provide the list of documents that may be recorded with the United States Patent and Trademark Office (USPTO). §(a) provides as follows – “Assignments of applications, patents, and registrations, accompanied by completed cover sheets as specified in §§3.28 and 3.31, will be recorded with the office. Other documents, accompanied by completed cover sheets as specified in §§3.28 and 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.” [emphasis added]. The term “Document” is defined in 37 CFR 3.1 to mean “a document which a party requests to be recorded in the Office pursuant to §3.11 and which affects some interest in an application, patent, or registration.
Thus, according to the §313 of the Manual of Patent Examining Procedure (MPEP)of the USPTO: “In addition to assignments and documents required to be recorded by Executive Order 9424, documents affecting title to a patent or application will be recorded in the Assignment Division of the United States Patent and Trademark Office (Office). Other documents not affecting title may be recorded at the discretion of the Director. 37 CFR 3.11(a). Thus, some documents which relate to patents or applications will be recorded, although they do not constitute a transfer or change of title. Typical of these documents which are accepted for recording are license agreements and agreements which convey a security interest. Such documents are recorded in the public interest in order to give third parties notification of equitable interests or other matters relevant to the ownership of a patent or application. Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document. The recordation of a document is not a determination of the effect of the document on the chain of title. The determination of what, if any, effect a document has on title will be made by the Office at such times as ownership must be established to permit action to be taken by the Office in connection with a patent or an application. See MPEP § 324.”
37 C.F.R. §1.181(a)(2) provides “Petition may be taken to the Director *** [i]n cases in which a statute or the rules specify tha the matter is to be determined directly by or reviewed by the Director.” §(b) provides that “[a]ny such petition must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memorandum, if any, in support thereof should accompany or be embodied in the petition; and where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition.” §(d) further provides – “[w]here a fee is required for a petition to the Director the appropriate section of this part will so indicate. If any required fee does not accompany the petition, the petition will be dismissed.” 37 C.F.R. §3.28 deals with requests for recording. That section provides as follows: “Each document submitted to the Office for recording must include a single cover sheet (as specified in § 3.31) referring either to those patent applications and patents, or to those trademark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a document to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmitted.” The USPTO provides a “Recordation Form Cover Sheet” i.e. Form PTO-1595
37 C.F.R. 3.41 and MPEP 302.06 provide the fee for recording – “All requests to record documents must be accompanied by the appropriate fee. ***, a fee is required for each application, patent and registration against which the document is recorded as identified in the cover sheet. The recording fee is set in §1.21(h) of this chapter for patents ***.” The USPTO FY 2007 Fee Schedule specifies the recording fee set in §1.21(h) as $40.00 for recording each patent assignment, agreement or other paper, per property.
admin @ June 19, 2008