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

[Andrea R. Jacobson]

I filed a name change on Monday and it was recorded on Wednesday.

You could have an AIA 122 filed, which would at least address the correspondence issue (but not POA) and then give you time to sort out the assignment and updating the applicant.

I would file the USPTO’s 3.73 statement, check box 4B. You can identify your chain of title with the recorded reel/frames and then submit a copy of your name change document for the final step. Check the box above the signature. I don’t think you have to “all or nothing” this – reel and frame what you can, provide a copy if what isn’t recorded yet.

The other option is trying to call the assignments branch and follow up on your January submissions to ask what is happening with them. I have had things get “stuck” before and a phone call “un stuck” them.   Of course this week their phones are a mess with the new system having gone live.


From: Patentcenter <patentcenter-bounces at oppedahl-lists.com> On Behalf Of William Ahmed via Patentcenter
Sent: Friday, February 9, 2024 7:32 AM
To: For Patent Practitioners. This Is Not for Laypersons To Seek Legal Advice. <patentpractice at oppedahl-lists.com>; Users of Patentcenter <patentcenter at oppedahl-lists.com>
Cc: William Ahmed <ahmed.william at ymail.com>
Subject: [Patentcenter] assignments not being recorded; now I need to file a statement under 3.73(c) for POA - pls advise!

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
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