[Patentpractice] Assignment Center -- stored contacts

Sat Feb 10 17:35:40 EST 2024

Part I: What Carl said:

Do you think the PTO can record (by “hand”) a mailed-in assignment that cannot be entered via their new piece-o’-crap system?

Do you think the PTO has a different internal interface that can override errors in the piece-o’-crap system that stakeholders must use?

Or, maybe because the piece-o’-crap system’s programmers did not consider an assignment to a PCT application filed in an RO other than RO/US to be recordable, maybe that error propagated into the entire system, and maybe they will not be able to record such an assignment, even “by hand.”

But I would still mail the recordation within the three-month window if the PTO hasn’t fixed the problem.

Part II – A question:

Where in 37 CFR 3.11<https://www.law.cornell.edu/cfr/text/37/3.11> is an "application" limited to a U.S. patent application?

37 CFR 3.11 states, in part:

(a) Assignments<https://www.law.cornell.edu/definitions/index.php?width=840&height=800&iframe=true&def_id=fb114a2504d19e32b9ec8f9a6ae25b49&term_occur=999&term_src=Title:37:Chapter:I:Subchapter:A:Part:3:Subjgrp:145:3.11> of applications<https://www.law.cornell.edu/definitions/index.php?width=840&height=800&iframe=true&def_id=5811922608d678c8149b9727d952d0cd&term_occur=999&term_src=Title:37:Chapter:I:Subchapter:A:Part:3:Subjgrp:145:3.11>, patents, and registrations, and other documents<https://www.law.cornell.edu/definitions/index.php?width=840&height=800&iframe=true&def_id=24121c1380a73f2f475b2fd708f7eab4&term_occur=999&term_src=Title:37:Chapter:I:Subchapter:A:Part:3:Subjgrp:145:3.11> relating to interests in patent applications<https://www.law.cornell.edu/definitions/index.php?width=840&height=800&iframe=true&def_id=5811922608d678c8149b9727d952d0cd&term_occur=999&term_src=Title:37:Chapter:I:Subchapter:A:Part:3:Subjgrp:145:3.11> and patents, accompanied by completed cover sheets as specified in § 3.28<https://www.law.cornell.edu/cfr/text/37/3.28> and § 3.31<https://www.law.cornell.edu/cfr/text/37/3.31>, will be recorded in the  Office<https://www.law.cornell.edu/definitions/index.php?width=840&height=800&iframe=true&def_id=9185e95134f0814a5d8ccb189aec36b5&term_occur=999&term_src=Title:37:Chapter:I:Subchapter:A:Part:3:Subjgrp:145:3.11>.

The term "application" is defined in 37 CFR 3.1<https://www.law.cornell.edu/cfr/text/37/3.1> as follows (with underlining added):

Application means a national application for patent, an international patent application that designates the United States of America, an international design application that designates the United States of America…

But where is an "application" limited to a U.S. patent application?
Why can't I record an assignment for a German patent application?
Or a Japanese patent application?
(Though maybe not a European patent application.)

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com>
Reply-To: "For patent practitioners. This is not for laypersons to seek legal advice." <patentpractice at oppedahl-lists.com>
Date: Saturday, February 10, 2024 at 4:50 PM
To: "practitioners.advice. For patent This is not for laypersons to seek legal" <patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [Patentpractice] Assignment Center -- stored contacts

I would prefer not to have to try this because it requires paying a fee that one ought not to have to pay.

But you are right to raise this issue.  Back when the system was EPAS, it accepted PCT application numbers regardless of whether they were or were not already in some USPTO system.

But now, I bet the clerks in the Assignment Branch are using the same system we are stuck with (Ass. Center).  And so Ass. Center would puke on the PCT number regardless of whether it is a USPTO clerk trying to enter it, or the end user (you or me) trying to enter it.
On 2/10/2024 4:41 PM, Randall Svihla via Patentpractice wrote:
Hi, Carl

But will the USPTO actually record it, or will they issue a Notice of Non-Recordation saying that the non-US-RO PCT application does not appear in their records?

Best regards,

Randall S. Svihla
NSIP Law
Washington, D.C.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com><mailto:patentpractice-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Saturday, February 10, 2024 4:36 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com><mailto:patentpractice at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com><mailto:carl at oppedahl.com>
Subject: Re: [Patentpractice] Assignment Center -- stored contacts

Sure you can do the recordation by usps postal mail at the USPTO.

This requires paying a fee.
On 2/10/2024 4:00 PM, Allen Richter (allenr--- via Patentpractice wrote:
Considering the following (worst case?) scenario:

Because of the bug I cannot record within the “three months window” an assignment for a PCT that was filed with an Non-US Receiving-Office.

  1.  Are there any remedies available?
  2.  Are there alternatives available for recording the Assignments with the USPTO other than using the defunct improved system?

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com><mailto:patentpractice-bounces at oppedahl-lists.com> On Behalf Of Michael Dryja via Patentpractice
Sent: Saturday, 10 February 2024 22:51
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com><mailto:patentpractice at oppedahl-lists.com>
Cc: Michael Dryja <mike at dryjapat.com><mailto:mike at dryjapat.com>
Subject: Re: [Patentpractice] Assignment Center -- stored contacts

Sigh.  Hopefully they will fix this at some point.

On Feb 10, 2024, at 1:13 PM, Scott Nielson <scnielson at outlook.com<mailto:scnielson at outlook.com>> wrote:

When I first tried Assignment Center, I noticed the "Stored contact information" field and wondered where this contact information is stored. After some poking around, I found an address book on the MyUSPTO account page.
<image.png>

I entered my address and a few client addresses. I then went back to Assignment Center to see if they would show up. Surprisingly, my contact information showed up as an option in the drop down list on the correspondence information page. When I selected it, my contact information was auto-populated as the correspondence information.

I then proceeded to the conveying party page and my contact information also appeared in the drop down list but none of the client contact information appeared. The same thing happened on the receiving party page. It would auto-fill my information but the client information in my address book was nowhere to be found.

I ended up deleting that assignment recordation entry and ever since then, the stored contact information section has been blank. I still have the same entries in my address book, but nothing shows up in the drop down list for stored contact information.

Scott Nielson
801-660-4400
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Michael Dryja via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Saturday, February 10, 2024 10:52 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Michael Dryja <mike at dryjapat.com<mailto:mike at dryjapat.com>>
Subject: [Patentpractice] Assignment Center -- stored contacts

I filed my first assignments using Assignment Center.  As Carl’s blog has noted, it’s impossible to create “stored contacts” that you can subsequently select when filing a new assignment.

Has anyone heard when the USPTO is planning on rolling out this functionality?  That would go a long way in my mind to making AC more usable.

 - Mike.

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