I. WRITTEN CONSENT

A reissue application, whether filed before, on, or after September 16, 2012, must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. In addition, all assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission in accordance with the provisions of 37 CFR 3.73.

Where no assignee exists, applicant should affirmatively state that fact. This can be done by simply checking the “NO” box of item 8 of Form PTO/AIA/50, which may be signed by the inventors or by a registered practitioner. If the file record is silent as to the existence of an assignee, it will be presumed that an assignee does exist. This presumption should be set forth by the examiner in the first Office action alerting applicant to the requirement. It should be noted that the mere filing of a written assertion of small entity status (see MPEP § 509.03) or a certification of micro entity status (see MPEP § 509.04) in no way relieves applicant of the requirement to affirmatively state that no assignee exists.

Where a written assertion of small entity status, a certification of micro entity status, or other paper in file indicates that the application/patent is assigned, and there is no consent by the assignee named in the written assertion of small entity status or the certification of micro entity status, the examiner should make inquiry into the matter in an Office action, even if the record otherwise indicates that the application/patent is not assigned.

The reissue oath or declaration must be accompanied by a written consent of all assignees. Thus, where an application is filed without an oath or declaration, or without the consent of all assignees, if the application otherwise complies with 37 CFR 1.53(b) and the reissue rules (particularly 37 CFR 1.173(a)(1) and 1.173(b)(2)), the Office of Patent Application Processing (OPAP) will accord a filing date and send out a notice of missing parts setting a period of time for filing the missing part and for payment of any surcharge required under 37 CFR 1.53(f) and 37 CFR 1.16(f). If the reissue oath or declaration is filed but the assignee consent is lacking, the surcharge is required because, until the consent is filed, the reissue oath or declaration is defective, since it is not apparent that the signatures thereon are proper absent an indication that the assignees have consented to the filing.

The consent of assignee must be signed by a party authorized to act on behalf of the assignee. For applications filed on or after September 16, 2012, the consent may be signed by the assignee or a patent practitioner of record. For applications filed before September 16, 2012, the consent must be signed by the assignee. Where the assignee is a juristic entity, the consent may be signed by a person in the organization having apparent authority to sign on behalf of the organization, or a person who makes a statement of authorization to act on behalf of the assignee. For a discussion of parties authorized to act on behalf of the assignee, see MPEP § 325 (for applications filed on or after September 16, 2012) and MPEP § 324 (for applications filed before September 16, 2012). The consent to the reissue application may use language such as:

The XYZ Corporation, assignee of U.S. Patent No. 99,999,999, consents to the filing of reissue application No. 99/999,999 (or the present application, if filed with the initial application papers) for the reissue of U.S. Patent No. 99,999,999.

_______________

Jane Doe

Vice President,

XYZ Corporation

Where the written consent of all the assignees to the filing of the reissue application cannot be obtained, applicant may under appropriate circumstances petition to the Office of Petitions (MPEP § 1002.02(b)) for a waiver under 37 CFR 1.183 of the requirement of 37 CFR 1.172, to permit the acceptance of the filing of the reissue application. The petition fee under 37 CFR 1.17(f) must be included with the petition.

The reissue application can then be examined, but will not be allowed or issued without the consent of all the assignees as required by 37 CFR 1.172. See Baker Hughes Inc. v. Kirk, 921 F. Supp. 801, 809, 38 USPQ2d 1885, 1892 (D.D.C. 1995), N. B. Fassett, 1877 C.D. 32, 11 O.G. 420 (Comm’r Pat. 1877); James D. Wright, 1876 C.D. 217, 10 O.G. 587 (Comm’r Pat. 1876).

Where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application, and the parent reissue application is not to be abandoned, the copy of the consent is generally not adequate for the continuation reissue application. See MPEP § 1451, subsection II.A, for more information. Where a continuation reissue application is filed with a copy of the assignee consent from the parent reissue application, and the parent reissue application is, or will be abandoned, the copy of the consent should be accepted by the Office.

Other than the exception noted below, where a divisional reissue application is filed with a copy of the assignee consent from the parent reissue application, regardless of whether or not the parent reissue application is to be abandoned, the copy of the assignee consent should not be accepted. The copy of the consent from the parent does not indicate that the assignee has consented to the addition of the new invention of the divisional reissue application to the original patent, or to the addition of the new error correction of the continuation reissue application. (Presumably, a new correction has been added via the continuation, because the parent is still pending.) As noted above, OPAP will accord a filing date and the examiner will require the submission of a proper assignee consent. If, however, a divisional reissue application is being filed in response to a restriction requirement made in the parent reissue application, the assignee need not file a consent to the divided out invention now being submitted in the divisional application because consent has already been provided in the parent reissue application. See MPEP § 1451, subsection I.A.

Form paragraph 14.15 may be used to indicate that the consent of the assignee is lacking.

II. PROOF OF OWNERSHIP OF ASSIGNEE

The assignee that consents to the filing of the reissue application (as discussed above) must also establish that it is the assignee, i.e., the owner, of the patent. See 37 CFR 1.172. Accordingly, a 37 CFR 3.73 paper establishing the ownership of the assignee should be submitted at the time of filing the reissue application, in order to support the consent of the assignee. The assignee must establish its ownership in accordance with 37 CFR 3.73 by:

• (A) filing in the reissue application documentary evidence of a chain of title from the original owner to the assignee; or
• (B) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).

Compliance with 37 CFR 3.73 may be provided as part of the same paper in which the consent by assignee is provided.

In connection with option (A) above, the submission of the documentary evidence to establish ownership must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owners to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11. Thus, when filing a 37 CFR 3.73 statement to establish ownership, an applicant or patent owner must also submit the relied-upon assignment document(s) to the Office for recordation, unless such a submission has already been previously made. If the 37 CFR 3.73 statement is not accompanied by a statement affirming that the documentary evidence was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11, then the 37 CFR 3.73 statement will not be accepted, and the assignee(s) will not have established the right to take action in the patent application or the patent for which the 37 CFR 3.73 statement was submitted. This could result, for example, in an incomplete response, where a party stated to be the “assignee” signs a consent to the reissue to obviate a requirement for submission of assignee consent made in an Office action.

Upon initial receipt of a reissue application, the examiner should inspect the application to determine whether the submission under 37 CFR 1.172 and 37 CFR 3.73 establishing the ownership of the assignee is present and sufficient.

If an assignment document is attached with the 37 CFR 3.73 submission, the assignment should be reviewed to ensure that the named assignee is the same for the assignment document and the 37 CFR 3.73 statement, and that the assignment document is an assignment of the patent to be reissued to the assignee. If an assignment document is not attached with the 37 CFR 3.73 statement, but rather the reel and frame number where the assignment document is recorded in the USPTO is referenced in the 37 CFR 3.73 statement, it will be presumed that the assignment recorded in the USPTO supports the statement identifying the assignee. It will not be necessary for the examiner to obtain a copy of the recorded assignment document. If the submission under 37 CFR 1.172 and 37 CFR 3.73 is not present, form paragraph 14.16 may be used to indicate that the assignee has not provided evidence of ownership.

Just as the consent of assignee must be signed by a party authorized to act on behalf of the assignee, the submission with respect to 37 CFR 3.73 to establish ownership must be signed by a party authorized to act on behalf of the assignee. For applications filed on or after September 16, 2012, a patent practitioner of record may sign the statement (see 37 CFR 3.73(d)(3)). For applications filed before September 16, 2012, the signature of an attorney or agent registered to practice before the Office is not sufficient, unless that attorney or agent is authorized to act on behalf of the assignee.

If the submission under 37 CFR 3.73 to establish ownership is not signed by a party authorized to sign pursuant to 37 CFR 3.73, the appropriate paragraphs of form paragraphs 14.16.01 through 14.16.06 may be used.

Where the submission establishes the assignee’s ownership as to the patent, the assignee’s ownership as to the reissue application will be presumed. Accordingly, a submission as to the ownership of the patent will be construed to satisfy the 37 CFR 1.172 (and 37 CFR 3.73) requirements for establishing ownership of the application. Thus, a terminal disclaimer can be filed in a reissue application where ownership of the patent has been established, without the need for a separate submission under 37 CFR 3.73 showing ownership of the reissue application. However, if there is a submission under 37 CFR 3.73 present in the patent file, but there is no copy in the reissue application file, a copy of the submission under 37 CFR 3.73 for the patent must be submitted in the reissue file.

Even if the submission states that it is establishing ownership of the reissue application (rather than the patent), the submission should be accepted by the examiner as also establishing ownership in the patent. The documentation in the submission establishing ownership of the reissue application must, of necessity, include chain of title as to the patent.

III. COMPARISON OF ASSIGNEE THAT CONSENTS TO ASSIGNEE SET FORTH IN SUBMISSION ESTABLISHING OWNERSHIP INTEREST

The examiner must inspect both the consent and documentary evidence of ownership to determine whether the requirements of 37 CFR 1.172 have been met. The assignee identified by the documentary evidence must be the same assignee which signed the consent. Also, the person who signs the consent for the assignee and the person who signs the submission of evidence of ownership for the assignee must both be persons having authority to do so. See also MPEP §§ 324 and 325.

The reissue patent will be granted to the original patentee, their legal representatives or assigns as the interest may appear.