Under the old law, the inventor was the applicant, in accordance with the US Constitution and first to invent patent system. There is the assignee who is the owner, but not the applicant, which will stay that way for next twenty years for those applications filed on or before September 15, 2012. That is why we have the “assignee" listed, in addition to the inventor, and applicant. Assignee could be the applicant as the owner, but inventor is the default applicant most of the time as our Constitution mandates.
Under the new system, still the applicant-corporation can only be an applicant when the inventors are obligated to assign to or have already assigned, with proof provided to the USPTO. That is the reason why an assignment which includes proper language can be used in place of a declaration by the inventor in a patent application under the AIA.
The non-applicant assignee is the old law under the US constitutionally mandated first to invent system. The applicant is the inevitable constitutionally mandated inventor, who owns it and has right to prosecute it, unless given away by an assignment to another entity.
Under our constitution and even under the AIA, the inventor is the applicant. That is why the Congress made sure to say “first-inventor-to-file", but not “first-to-file" as in the rest of the world, which need not abide by the US Constitution. Under the old system, even after assignment the inventors were applicants, which is changed now to conform to the rest of the world.
When an assignee seeks to take action in a matter before the Officewith respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submission under 37 CFR 3.73(b).
“POWERS MUST “Be signed by the applicant for patent (§ 1.42) or the patent owner." 37 CFR 1.32(b)(4).BUT, POWER FROM MERE ASSIGNEE NON APPLICANT MUST BE “in compliance with §§ 3.71 and 3.73". 37 CFR 1.32(b)(4)."
3.73 Establishing right of assignee to take action.
(a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
(b) (1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner to the assignee ( e.g., copy of an executed assignment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or
(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee. (red emphasis added)
§3.71 Prosecution by assignee.
(a) Patents -- conducting of prosecution. One or more assignees as defined in paragraph (b) of this section may, after becoming of record pursuant to paragraph (c) of this section, conduct prosecution of a national patent application or a reexamination proceeding to the exclusion of either the inventive entity, or the assignee(s) previously entitled to conduct prosecution.
(b) Patents -- Assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or
(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined.
(c) Patents -- Becoming of record. An assignee becomes of record either in a national patent application or a reexamination proceeding by filing a statement in compliance with § 3.73(b) that is signed by a party who is authorized to act on behalf of the assignee.
An assignee can become part of record by recording the assignment, which can be submitted by an agent who has POA from the assignee.
Cardinal is not a law firm, does not practice law, and provides no legal opinions.