[Patentcenter] [Patentpractice] assignments not being recorded; now I need to file a statement under 3.73(c) for POA - pls advise!

[Carl Oppedahl]

What he said.  One ought not to feel constrained to use the form 96.  
Construct your own 3.73 statement in a word processor.

On 2/9/2024 7:38 AM, Bob Barber via Patentcenter wrote:
> Make up your own form for the 3.73 statement. Indicate the reel/frame 
> for that which the PTO recorded, say that you're attaching the 
> assignment document for the part not yet recorded and attach it.
>
> On Friday, February 9, 2024 at 02:34:02 PM GMT+2, William Ahmed via 
> Patentpractice <patentpractice at oppedahl-lists.com> wrote:
>
>
> Dear List,
> BACKGROUND
> My impression [based on a small number of data-points] is that 
> recently the USPTO has just stopped recording assignments. We 
> submitted a change-of-name assignment [submitted it twice!] in 
> mid-January and the USPTO has just ignored - they have NOT recorded 
> this assignment.
>
> I assume that we are not the ONLY ones who have observed this behavior.
>
> MY QUESTION - we are trying to take over representation from another 
> firm. The owner of this patent changed their name from ABC Ltd. to XYZ 
> Ltd. in early 2023 [same company only name-change]
> The USPTO recorded the various assignments from the inventors to ABC 
> Ltd. [chain of assignment to ABC Ltd, the old name, was recorded by 
> USPTO].
> So right now the applicant [and assignee] is ABC Ltd - the OLD name of 
> this company.
> HOWEVER, we have a signed POA signed in Feb 2024 by the CEO of XYZ 
> Ltd. [the NEW name of the company]
>
> NOTE -- We prefer NOT to fax-file the name-change assignment [$50 per 
> asset] since there are dozens of patent applications in this 
> portfolio, and this adds up to a lot of cash.
>
> MY QUESTION - How do we proceed with the Statement under 3.73(c)? The 
> current attorney [i.e. from whom we are assuming representation] and 
> they already complained to the client about the bounced 'request to 
> change applicant name.'
>
> We need a proper statement under 3.73(c) we we are STUCK ->
> (i) we  cannot list of  FULL chain of title [reel/frame] in 3.73(c) 
> since only a portion (i.e. most of it) was recorded by the USPTO but 
> the last link was NOT recorded by the USPTO.
> (ii) we  do have the name-change certificate but that is only for the 
> last link. So checking the bottom box [As required by 37 CFR 
> 3.73(c)(1)(i), 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 37 CFR 3.11.] might NOT 
> be relevant.
>
> How do we proceed? Can I just truthfully file 3.73(c) checking the 
> bottom box not listing ANYTHING of the reel/frame? [maybe submitting a 
> copy of the name-change certificate together with the 3.73(c) form] Or 
> should I check BOTH boxes - the partial-chain with the reel/frame and 
> ALSO the bottom box of form 3.73(c) and also a copy of the name-change 
> certificate.  Would that be enough?
>
> The clock is ticking since their former attorney is being a bit 
> unfriendly in tone, and by nature I am not a confrontational person.
>
> Any advice would be GREATLY appreciated !! I feel like we are really 
> stuck and there is nobody to talk to.
>
> Many thanks,
> Bill
> -- 
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
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