37 CFR 3.71 - Prosecution by assignee

Cite as37 CFR 3.71
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12 practice notes
  • Patent cases: Patent business goals; implementation,
    • United States
    • Federal Register October 05, 1998
    • October 5, 1998
    ...was prepared and filedby the company for whom the inventor works). Where there is an assignment, the assignee may intervene pursuant to 37 CFR 3.71 and conduct the prosecution to the exclusion of the named inventors. In a large percentage of applications, inventors execute an assignment whe......
  • Siegler v. Sorrento Therapeutics, Inc., Case No. 3:18-cv-01681-GPC-NLS
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Southern District of California)
    • August 2, 2019
    ...§ 3.73, without more, does not arise to an affirmative act relating to thePage 38 enforcement of a patent right. The regulations at 37 C.F.R. § 3.71 explain that assignees may act in patent applications or supplemental examination or reexamination proceedings; 37 C.F.R. § 3.73 outlines the ......
  • Changes to the Patent Laws
    • United States
    • ABA General Library The technology transfer law handbook
    • January 1, 2014
    ...inventor applicant) wishes to grant and ile a power of attorney to prosecute an application, the assignee is required to proceed under 37 C.F.R. §§ 3.71 and 3.73 to establish ownership of the application. See Inventor’s Oath or Declaration, U.S. Patent & Trade‑ mark Office, www.uspto.gov/ai......
  • Change of Correspondence Address Patent-AIA/123
    • United States
    • United States Patent and Trademark Office, Patent Trial and Appeal Board
    • Invalid date
    ...(37 CFR 1.42), then a Statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent) is enclosed or was filed on __________________. See 37 CFR 3.71. Attorney or agent of record. Registration Number Patent practitioner acting in a representative capacity whose correspondence address is the ......
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4 cases
  • Siegler v. Sorrento Therapeutics, Inc., Case No. 3:18-cv-01681-GPC-NLS
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Southern District of California)
    • August 2, 2019
    ...§ 3.73, without more, does not arise to an affirmative act relating to thePage 38 enforcement of a patent right. The regulations at 37 C.F.R. § 3.71 explain that assignees may act in patent applications or supplemental examination or reexamination proceedings; 37 C.F.R. § 3.73 outlines the ......
  • Ex parte Rose, Appeal 2009-005475
    • United States
    • United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board
    • December 11, 2009
    ...of 37 C.F.R. § 1.104 (c)(4)(iii) in order to effectively remove LaBudde as prior art to the claimed invention. The Examiner cites 37 C.F.R. § 3.71(b) and 37 C.F.R. § 1.71(g) and states that "[a]pplicant has not presently met all of the standards to overcome the rejection based upon the join......
  • Dage-MTI, Inc. v. Medical Technology & Innovations Inc., Opposition 103
    • United States
    • United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
    • August 24, 1999
    ...& Innovations Inc. Applicant is encouraged to record evidence of its change of name with the Assignment Branch of the Office. See 37 CFR §§3.71, and 3.73(b); and TBMP §512.01. --------- ...
  • A.V. Brands, Inc. v. Spirits International, B.V., Cancellation 92043340
    • United States
    • United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
    • March 31, 2009
    ...is now the petitioner of record and steps into the shoes of original petitioner A.V. Imports, Inc. See Trademark Rule 3.71(d), 37 C.F.R. §3.71(d).[4] "Undisclosed Real Party in Interest" We now address an additional matter pertaining to the identity of the party plaintiff in this case. At p......
2 firm's commentaries
  • USPTO To Permit Assignees To File And Prosecute Patent Applications
    • United States
    • Mondaq United States
    • August 24, 2012
    ...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 Inventor Oath/Declaration Still Required Even when an assignee has the right to make an application, an executed oath/declaration by e......
  • USPTO to Permit Assignees to File and Prosecute Patent Applications
    • United States
    • JD Supra United States
    • August 22, 2012
    ...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 Inventor Oath/Declaration Still Required Even when an assignee has the right to make an application, an executed oath/declaration by e......
1 books & journal articles
  • Changes to the Patent Laws
    • United States
    • The technology transfer law handbook
    • January 1, 2014
    ...inventor applicant) wishes to grant and ile a power of attorney to prosecute an application, the assignee is required to proceed under 37 C.F.R. §§ 3.71 and 3.73 to establish ownership of the application. See Inventor’s Oath or Declaration, U.S. Patent & Trade‑ mark Office, www.uspto.gov/ai......
4 forms
  • Change of Correspondence Address Patent-AIA/123
    • United States
    • United States Patent and Trademark Office, Patent Trial and Appeal Board
    • Invalid date
    ...(37 CFR 1.42), then a Statement under 37 CFR 3.73(c) (Form PTO/AIA/96 or equivalent) is enclosed or was filed on __________________. See 37 CFR 3.71. Attorney or agent of record. Registration Number Patent practitioner acting in a representative capacity whose correspondence address is the ......
  • Power to Inspect/Copy - For Applications Filed on or after September 16, 2012-AIA/67
    • United States
    • United States Patent and Trademark Office, Patent Trial and Appeal Board
    • Invalid date
    .... □ an authorized official of the assignee or an assignee of an undivided part interest. The assignment was made of pursuant to 37 CFR 3.71 in the United States Patent and Trademark Office at Reel □ record Frame____________________________, or for which a copy thereof is attached. the appli......
  • Transmittal For Power of Attorney To One Or More Registered Practitioners/Power Of Attorney By Applicant-AIA/82
    • United States
    • United States Patent and Trademark Office, Patent Trial and Appeal Board
    • Invalid date
    ...application to which the power is directed. See 37 CFR 1.5. Where an assignee-applicant is providing a power of attorney, compliance with 37 CFR 3.71 and 3.73 is not required. An assignee who is not the applicant must become the applicant to give a power of attorney and comply with 37 CFR 3......
  • "Fee Address" Indication Form-AIA/47
    • United States
    • United States Patent and Trademark Office, Patent Trial and Appeal Board
    • Invalid date
    ...Signature Applicant/Inventor Attorney or Agent of record _______________ Reg. No. Assignee of record of the entire interest. See 37 CFR 3.71. Statement under 37 CFR 3.73(c) (Form PTO/AIA/96) is enclosed or was filed on ______________________________________ (Date) __________________________......

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