About 10% of the patent applicants file their patent application as an “obligated assignee” rather than the actual “assignee.” Those 10% have apparently not yet received a assignment of rights from the human inventors but are still allowed to walk through the patenting process under 37 CFR 1.46, which allows patent applications to be filed “by an assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter.”
I picked a obligated-assignee patent application at random to see how this is working in practice. U.S. Patent Application No. 15/705,170 was filed back in 2017 as a continuation of previously filed applications. The application data sheet (ADS) includes a section where the patent applicant indicates its source of authority for filing the patent application, with the following options:
- Person to whom the inventor is obligated to assign
- Legal representative under Section 117 (for death or incapacity of the inventor)
- Joint inventor
- Person who shows sufficient proprietary interest.
To be clear, when the provision speaks of a “person” in this context, it includes corporations, governments, and other legal persons that have the right and ability to own private property rights, such as a patent.
For the ‘170 patent, the ADS marked the ‘obligated to assign’ category and moved forward. The application published in 2018 and issued as a patent in 2019. US Patent No. 10,514,582. The named applicant is View, Inc., and the patent includes four listed inventors. The prosecution history includes a declaration filed by the inventors claiming to be the joint inventors. View had also used the patent application to secure a loan, and that security interest (and its released) was filed with the USPTO?
What I couldn’t find — any actual assignment document showing that the inventors actually assigned their rights. Nothing in the file wrapper and also nothing in the assignment database. That appears to be a violation of the requirements of 37 CFR 1.46(b)(1). Perhaps I’m missing something here from the docket. ( https://patentcenter.uspto.gov/#!/applications/15705170 ).
[Update] Commenters below have shown me what I was missing. MPEP 306 indicates a situation involving a continuation application (such as this one) “a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.” Here, an assignment was filed in the parent case, but it was not filed before-hand, and so I would question whether it counts as a “prior assignment” and whether 37 C.F.R. 1.46 creates an additional obligation to make sure the assignment is associated with the new case.