[Patentpractice] What are our obligations to keep an applicant / assignee address current in the USPTO?

[Rick Neifeld]

Regarding question 2, 35 USC 261 provide a right against fraudulent
conveyance if you record an assignment, stating "An interest that
constitutes an assignment, grant or conveyance shall be void as against any
subsequent purchaser or mortgagee for a valuable consideration, without
notice, unless it is recorded in the Patent and Trademark Office within
three months from its date or prior to the date of such subsequent purchase
or mortgage."

That passage contains nothing about the address of the assignee.  And my
compilation of case law, "Law Regarding Patents" contains (to my memory,
its a huge work)  no case in which an issue of address of the assignee as
recorded in the USPTO's assignment database was presented. But I cannot
prove a negative.  On the other hand, I have never concerned myself with
post assignment recordation request changes in assignee addresses.

 Regarding question 1, someone else can chime in.  BR, Rick



On Mon, Jun 9, 2025 at 12:00 PM Patent Lawyer <patentlawyer995 at gmail.com>
wrote:
>
> I am re-asking this question with clarifications based on Rick N’s
question:
>
>
>
>           For a pending US patent application:
>
>
>
> What are our obligations to keep an applicant's address current in the
USPTO?
>
>
>
> What are our obligations to keep an assignee’s address current in the
USPTO assignment database?
>
>
>
> Assume that the correspondence address for the application is my customer
number, not the applicant’s address.
>
>
>
> In my case, the assignee and applicant for a US application is a German
entity (XYZ GmbH).   An assignment (from the inventor to XYZ GmbH) was
recorded in the USPTO’s assignment database when the application was
filed.  The assignee/applicant has moved to different addresses a few times
since the application was filed. Twice within the same German city and once
to another German city.  Their name and corporate status have not changed,
just their business/mail address.  I.e., it is the same legal entity, just
at a different address.
>
>
>
> Do I have an obligation to keep an applicant XYZ GmbH’s address current
in the USPTO?
>
>
>
> Do I have an obligation to keep the assignee XYZ GmbH’s address current
in the USPTO assignment database?
>
>
>
> Thanks in advance
>
>
>
>
>
> From: Patent Lawyer <patentlawyer995 at gmail.com>
> Date: Thursday, June 5, 2025 at 12:50 PM
> To: Rick Neifeld <richardneifeld at gmail.com>, Patentpractice
Patentpractice <patentpractice at oppedahl-lists.com>
> Subject: Re: [Patentpractice] What are our obligations to keep an
applicant / assignee address current in the USPTO?
>
>
>
> The assignment was recorded in the assignment database
>
>
>
>
>
> From: Rick Neifeld <richardneifeld at gmail.com>
> Date: Thursday, June 5, 2025 at 12:49 PM
> To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
> Cc: Patent Lawyer <patentlawyer995 at gmail.com>
> Subject: Re: [Patentpractice] What are our obligations to keep an
applicant / assignee address current in the USPTO?
>
>
>
> " in the USPTO?"  Where in the USPTO?  Assignment database, or some
particular proceeding, such as the official record for the application?
>
>
>
>
>
>
>
>
>
> On Thu, Jun 5, 2025 at 12:05 PM Patent Lawyer via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:
>
> The assignee and applicant for a US application is a German entity (GmbH).
>
>
>
> The assignment was recorded when the application was filed.  The assignee
has moved to different addresses a few times since the application was
filed. Twice within the same German city and once to another German city.
Their name and corporate status have not changed, just the address.  I.e.,
it is the same legal entity, just at a different address.
>
>
>
> What are our obligations to keep an applicant's address current in the
USPTO?
>
> What are our obligations to keep an assignee’s address current in the
USPTO?
>
>
>
> Thanks in advance
>
> --
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> Patentpractice at oppedahl-lists.com
>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com

-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032
Mobile: 7034470727
Email: RichardNeifeld at gmail.com;
This is NOT a confidential and privileged communication.  If you are not
the intended recipient, please delete this email and notify the sender you
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