USPTO To Permit Assignees To File And Prosecute Patent Applications

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...