Patent Assignment Continuation In Part Pct

306 Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application [R-07.2015]

In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications. Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications. Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein. See 37 CFR 3.81. See also MPEP § 307 and § 308.

306.01 Assignment of an Application Claiming the Benefits of a Provisional Application [R-07.2015]

If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120. See MPEP § 306. If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120. See MPEP § 306, § 307, and § 308.

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The forms on this page may ONLY be used for direct U.S. patent applications with a U.S. filing date on or after September 16, 2012, and for PCT U.S. National Phase applications with an international filing date on or after September 16, 2012.

The forms on this page apply to all utility and design patent applications (including direct U.S. patent applications, PCT U.S. National Phase applications, and continuing applications).

We are pleased to provide the following downloadable set of Declaration, Power of Attorney and Assignment documents for our clients’ use. These documents can be used when preparing various utility and design patent applications, including PCT National Phase and “by-pass” continuation and continuation-in-part applications. The documents can be downloaded in either Adobe® PDF format, or in Microsoft Word® format.

The following documents cover a majority of the circumstances for filing in the United States. However, we invite our clients to contact us should there be any questions about which document should be used, or how it should be completed.

Document Description and UseClick for Format
DECLARATIONS
FOR USE WITH A SEPARATE POWER OF ATTORNEY
Provisional Application – No Declaration is required for a provisional application

(Not applicable)

Non-Provisional, Design, PCT or Continuing Application

PDF

MS-Word

Non-Provisional, Design, PCT or Continuing Application – Japanese-English Version

PDF

MS-Word

COMBINED ASSIGNMENTS AND INVENTOR DECLARATIONS
(All Assignments are for United States rights only, unless otherwise indicated)
(Do not use if inventor is the Applicant.)
Assignments of United States rights only:
Assignment – Inventor to Assignee

PDF

MS-Word

Assignment – Inventor to Assignee – French-English Version

PDF

MS-Word

Assignment – Inventor to Assignee – German-English Version

PDF

MS-Word

Assignment – Inventor to Assignee – Japanese-English Version

PDF

MS-Word

Assignment – Inventor to 2 Joint Assignees

PDF

MS-Word

Assignment – Inventor to 2 Joint Assignees – Japanese-English VersionPDFMS-Word
Assignment – Inventor to 3 Joint Assignees

PDF

MS-Word

Assignment – Inventor to 4 Joint Assignees

PDF

MS-Word

Assignment of Worldwide rights:
Assignment – Worldwide Rights

PDF

MS-Word

COMBINED DECLARATION AND POWER OF ATTORNEY
FOR USE WHERE APPLICANT IS THE INVENTOR(S)
AND THERE IS NO SEPARATE POWER OF ATTORNEY
WE RECOMMEND THAT THESE FORMS NOT BE USED FOR
PATENT APPLICATIONS THAT HAVE BEEN ASSIGNED
Provisional Application – No Declaration is required for a provisional application

(Not applicable)

Non-Provisional Application

PDF

MS-Word

Non-Provisional Application – Japanese-English Version

PDF

MS-Word

SUBSTITUTE STATEMENT
Substitute StatementPDFMS-Word
Substitute Statement – Japanese-English VersionPDFMS-Word
GENERAL POWER OF ATTORNEY
THIS IS A SEPARATE POWER OF ATTORNEY THAT CAN BE
EXECUTED ONCE BY THE ASSIGNEE AND COPIES OF WHICH MAY
BE FILED IN ALL CASES FOR THE ASSIGNEE HANDLED BY OUR FIRM
General Power of Attorney

PDF

MS-Word

General Power of Attorney – Japanese-English Version

PDF

MS-Word

SPECIFIC POWER OF ATTORNEY
THIS IS A SEPARATE POWER OF ATTORNEY THAT MAY BE
EXECUTED BY THE ASSIGNEE AND IS SPECIFIC TO ONE APPLICATION
Specific Power of Attorney

PDF

MS-Word

Specific Power of Attorney – Japanese-English Version

PDF

MS-Word


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