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:
- Assignee
- 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.
I advise clients to record the assignment from the parent against child applications, so that others find it readily when searching.
What is the result in an obligated-assignee patent application if the assignments are not recorded prior to issue? Will the patent still issue in the name of the applicant, or will it issue in the name of the inventors?
It will issue in the records reflected in the Office.
Separately, there is every reason for practitioners to make sure this particular ‘T” is crossed, as the actual client is most often NOT the inventors, but rather the assignees. Letting the inventors BE the named party at the Office runs the (unnecessary) risk that an inventor will engage the Office directly.
My past firm had this very thing occur, and the it became a Royal Mess.
OT – but I had a deeply penetrating comment in reply to 6 on the “Prof. Rantanen Elements/Boundaries” thread that passed in crossing with that thread being curtailed.
Maybe people should not be providing POSTS on patently-o if they are too sensitive to see the public response.
Words being sharp as they are an assault on the unthinking and all that.
hahahaha – I was able to pull it from the computer buffer:
“What are you trying to accomplish with this post anyway?”
An interesting question, 6.
And after thinking about, I find myself rejecting my own first answer (get back to the notion of ‘legal’), and instead find myself as this being an attempt to provide a different foundation (entirely) from “property.”
Personal or otherwise.
Consider that IF this thing called patent rights were far more like torts (or contracts — notably, two typical 1L legal concepts), then the remedies would sound (and in reality, BE) more palatable to swing into full Efficient Infringer mode (think: efficient breach in K).
You start down a path of “relative harm,” and the entire notion of Quid Pro Quo, inchoate right, and the Lockean nature of the property known as patents can be simply dismissed.
Beyond a first glance, there is some real pernicious aspects (whether intended or not) in this “re-fundamentalizing.”
This might strike a discordant note with your own set of more conservative fundamentals.
“because one person started to spam responses to people that he or she disagreed with”
Your entirely subjective opinion (spam?) reveals more about you than you realize.
Enjoy the bubble of lack of disagreement – I am sure that you will feel much safer if no one can challenge any viewpoint.
By the way, the better way is to engage and answer the challenges. If you cannot muster that, then perhaps your views are not as ‘solid’ as you may like to think.
It is sad that a difference in opinion cannot be tolerated.
Everywhere in academia, it appears.
Once upon a time, critical thinking is what was taught (which demanded a challenge of any and all positions).
Nowadays, any such challenge (of the controlling narrative) is a “bad” thing.
It has turned into all types of “safe spaces” and how well one can ‘virtue signal.’
I can only easily imagine the Socratic Method being ‘canceled’ as some type of Old White Man ‘control’ mechanism…..
It is from FoxNews but I like the term “woke supremists”.
supremacist
anon, one of my good friends is a Chinese immigrant. His father was imprisoned by Mao and he wrote about it. His father who is now passed away was a famous dissident and paid heavily.
He wrote a book about it that I read. It is chilling how similar the tactics of the Maoists are with the current left in the USA. And I think one of the professors associated with this blog is clear in the camp of suppressing free thought.
>Once upon a time, critical thinking is what was taught (which demanded a challenge of any and all positions)
I am so old that teachers used to say to us: I don’t care what your conclusion is as long as you support it with facts. And they would say things like it is up to you to figure out your politics.
Completely agree.
Today’s Liberal Left is built upon a foundation of Neo-Liberalism, which took a b e a t 1 n g when real world applications of VERY Socialistic political philosophies
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This is NOT a new battle.
It is interesting that you see it on this blog where more than one professor believes that there should be no forum to dispute their ideas. There are reports of other professors that post on here demanding the comments be turned off.
What is so shocking to me is that the blog as a whole would tolerate this. And that the people that shut the comments off feel that they are just so right and that any dissent is just some kind of ‘ist pathology.
“What is so shocking to me is that the blog as a whole would tolerate this.”
To Prof. Crouch’s credit, at least HE is more apt to provide at least a bit of an open discussion forum.
Prof. Rantanen?
No.
But that might also be a compounded problem from the firm that he worked at for a number of years. Have you checked out that firm? There is SO MUCH virtue signaling on that firm’s website that I was literally nauseated.
The “marketplace of ideas” includes the notion that YOUR ideas will not be accepted.
Some are SO sensitive to ‘not being accepted,’ that they would rather BETRAY the very principles of “university” and the classic ‘liberal education,’ than face the music.
As I indicated though – this is NOT a new battle, and I saw this first hand WAY back in the day when I investigated a switch in careers out of strict engineering.
I am SOOO thankful to that Dean of the College that I interviewed with for being brutally honest about the environment of Academia (and that environment has been confirmed from being my subsequent being a student in not one but two advanced degrees.
I, too, am both surprised and disappointed that Jason pulled the comments; as I found them to be considerate, thought-provoking, well-intentioned, and worthwhile.
One that he deleted (prior to shutting down) was a comment from me to you — and that comment certainly was made with the best intentions.
It is indeed too bad that an officious person not only seeks to control the narrative, but also imposes their view of what is “proper” in an otherwise open forum.
The point I made (that is still there – post 17), is the predecessor to my direct comment to you. That comment was in no way disrespectful. Quite the opposite, it was meant with the good intention of having you understand the terrain of law versus the terrain of reading law with too much of a colloquial lens.
The patent has issued. In contrast to compliance with statutory requirements, which can still be held against the applicant/patentee, compliance with USPTO rules, vel non, during prosecution is irrelevant at this point (unless such non-compliance can be shown to constitute fraud) – failure to comply with PTO rules is not per se a cause of action to invalidate a patent or a defense to infringement. The PTO has no jurisdiction over issued patents, other than in the context of an IPR or PGR. Failure to record an assignment is not a basis for an IPR, and it’s too late to file a PGR against this particular patent.
Additionally, prior to issuance of the patent, the PTO could have verified whether or not an assignment was recorded, and if not, it could have required compliance with the rule as a condition for issuance. If the PTO did not do so, that constitutes waiver on the part of the PTO of its own rule, and cannot subsequently be held by the PTO against the applicant.
Glad you mentioned “The prosecution history includes a declaration filed by the inventors claiming to be the joint inventors” since that is still a requirement for applications filed by assignees or alleged assignees.
The last paragraph of 35 USC 261 on assignments provides some protection for recording assignments in the PTO, but is not mandatory.
Paul >>>To assume paid bloggers in these blog comments is to assume [with no support] that mere commentators on this specialized blog have any real political influence, and to further make an illogical assumption that lobbying money is better spent here than in activities with those that do have influence, such as members of Congress, the AIPLA, ABA, IPO, NAM, NCOC, other trade organizations, editorials and letters in the NYT or WSJ, etc.
This is the type of stuff only a dinosaur would say. This is on the border of being from someone that is mentally disabled. Paul–update yourself. I have linked to jobs that are for managing anti-patent bloggers. Go and look at job posting for any PR person in the USA. All the qualifications now include controlling the narrative on blogs.
Please stop interpreting my posts from your 20th century perspective. Next you will be telling me that all human processing occurs in the ether and is perform by our spirit as J. Stevens believed.
Go update yourself to bring yourself into the 21st century and then write an apology.
You posted this on the wrong blog, but I will be happy to apologize for not appreciating the alleged superiority of mere comments on this particular blog to real lobbying [as opposed to social media or business blogs] when I see one of those anonymous comments from this blog cited in any case or in any Congressional hearing on any proposed patent legislation.
Nice strawman. The issue is whether or not paid bloggers are common or not. And whether it is hard to spot a paid blogger. I’d add that saying that someone is a paid employee of a non-profit to push anti-patent views is not a conspiracy theory.
“when I see one of those anonymous comments from this blog cited in”
What an arse you are Paul.
You do recognize that different forums carry different effects, right?
And IF you are sooooo adverse to posting on blogs, don’t let the proverbial door hit you in the behind as you leave this forum.
“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””
Nunc pro tunc?
The rule only says “should,” whereas (b)(2) says “must.”
Nice catch – and that “must” is for the different path of “otherwise shows sufficient proprietary interest” (which makes sense, since that path is much more subject to rather nebulous conjecture).
This case is a continuation of USSN 15/286,193 (now US10,503,039). The related assignment is found at reel/frame 044011/0549.
So, are you saying that the PTO should just assume that the same entity owns the continuation?
The recorded assignment document references continuations, although in a manner and form that is such that I am not going to opine on whether it represents an effective assignment.
(link to legacy-assignments.uspto.gov )
MPEP 306
Thank you! I now remember that provision.
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