Assignee Consent to the Reissue

I.

WRITTEN CONSENT

A reissue application, whether filed before, on, or

after September 16, 2012, must be accompanied by the written consent of all

assignees, if any, currently owning an undivided interest in the patent. In addition,

all assignees consenting to the reissue must establish their ownership in the patent

by filing in the reissue application a submission in accordance with the provisions

of

37 CFR

3.73

.

Where no assignee exists, applicant should affirmatively state that

fact. This can be done by simply checking the

"NO"

box of item 8 of Form PTO/AIA/50, which may be signed by

the inventors or by a registered practitioner. If the file record is silent as to the

existence of an assignee, it will be presumed that

an assignee does

exist

. This presumption should be set forth by the examiner in the first

Office action alerting applicant to the requirement. It should be noted that the mere

filing of a written assertion of small entity status (see

MPEP § 509.03

) or a

certification of micro entity status (see

MPEP §

509.04

) in no way relieves applicant of the requirement to

affirmatively state that no assignee exists.

Where a written assertion of small entity status, a certification of

micro entity status, or other paper in file indicates that the application/patent is

assigned, and there is no consent by the assignee named in the written assertion of

small entity status or the certification of micro entity status, the examiner should

make inquiry into the matter in an Office action, even if the record otherwise

indicates that the application/patent is not assigned.

The reissue oath or declaration must be accompanied by a written

consent of all assignees

tent is

assigned, and there is no consent by the assignee named in the written assertion of

small entity status or the certification of micro entity status, the examiner should

make inquiry into the matter in an Office action, even if the record otherwise

indicates that the application/patent is not assigned.

The reissue oath or declaration must be accompanied by a written

consent of all assignees. Thus, where an application is filed without an oath or

declaration, or without the consent of all assignees, if the application otherwise

complies with

37

CFR 1.53(b)

and the reissue rules (particularly

37 CFR

1.173(a)(1)

and

1.173(b)(2)

), the Office of

Patent Application Processing (OPAP) will accord a filing date and send out a notice

of missing parts setting a period of time for filing the missing part and for payment

of any surcharge required under

37 CFR 1.53(f)

and

37 CFR

1.16(f)

. If the reissue oath or declaration is filed but the

assignee consent is lacking, the surcharge is required because, until the consent is

filed, the reissue oath or declaration is defective, since it is not apparent that

the signatures thereon are proper absent an indication that the assignees have

consented to the filing.

The consent of assignee must be signed by a party authorized to act

on behalf of the assignee. For applications filed on or after September 16, 2012, the

consent may be signed by the assignee or a patent practitioner of record. For

applications filed before September 16, 2012, the consent must be signed by the

assignee. Where the assignee is a juristic entity, the consent may be signed by a

person in the organization having apparent authority to sign on behalf of the

organization, or a person who makes a statement of authorization to act on behalf of

the assignee. For a discussion of parties authorized to act on behalf of the

assignee, see

MPEP § 325

(for applications filed

on or after September 16, 2012) and

MPEP § 324

(for applications filed

before September 16, 2012)

e signed by a

person in the organization having apparent authority to sign on behalf of the

organization, or a person who makes a statement of authorization to act on behalf of

the assignee. For a discussion of parties authorized to act on behalf of the

assignee, see

MPEP § 325

(for applications filed

on or after September 16, 2012) and

MPEP § 324

(for applications filed

before September 16, 2012). The consent to the reissue application may use language

such as:

The XYZ Corporation, assignee of U.S. Patent No. 99,999,999,

consents to the filing of reissue application No. 99/999,999 (or the present

application, if filed with the initial application papers) for the reissue of U.S.

Patent No. 99,999,999.

_______________

Jane Doe

Vice President,

XYZ Corporation

Where the written consent of all the assignees to the filing of the

reissue application cannot be obtained, applicant may under appropriate circumstances

petition to the Office of Petitions (

MPEP § 1002.02(b)

) for a waiver

under

37 CFR

1.183

of the requirement of

37 CFR 1.172

, to permit the

acceptance of the filing of the reissue application. The petition fee under

37

CFR 1.17(f)

must be included with the petition.

The reissue application can then be examined, but will not be

allowed or issued without the consent of all the assignees as required by

37 CFR

1.172

. See

Baker Hughes Inc. v. Kirk,

921 F.

Supp. 801, 809, 38 USPQ2d 1885, 1892 (D.D.C. 1995),

N. B. Fassett,

1877 C.D. 32, 11 O.G. 420 (Comm’r Pat. 1877);

James D. Wright,

1876 C.D. 217, 10 O.G. 587 (Comm’r Pat. 1876).

Where a

continuation

reissue application is filed with

a copy of the assignee consent from the parent reissue application, and the parent

reissue application is

not

to be abandoned, the copy of the

consent is generally not adequate for the continuation reissue application. See

MPEP §

1451

, subsection II.A, for more information

1877);

James D. Wright,

1876 C.D. 217, 10 O.G. 587 (Comm’r Pat. 1876).

Where a

continuation

reissue application is filed with

a copy of the assignee consent from the parent reissue application, and the parent

reissue application is

not

to be abandoned, the copy of the

consent is generally not adequate for the continuation reissue application. See

MPEP §

1451

, subsection II.A, for more information. Where a

continuation reissue application is filed with a copy of the assignee consent from

the parent reissue application, and the parent reissue application is, or will be

abandoned, the copy of the consent should be accepted by the Office.

Other than the exception noted below, where a

divisional

reissue application is filed with a copy of the assignee

consent from the parent reissue application, regardless of whether or not the parent

reissue application is to be abandoned, the copy of the assignee consent should

not

be accepted. The copy of the consent from the parent

does not indicate that the assignee has consented to the addition of the new

invention of the divisional reissue application to the original patent, or to the

addition of the new error correction of the continuation reissue application.

(Presumably, a new correction has been added via the continuation, because the parent

is still pending.) As noted above, OPAP will accord a filing date and the examiner

will require the submission of a proper assignee consent. If, however, a divisional

reissue application is being filed in response to a restriction requirement made in

the parent reissue application, the assignee need not file a consent to the divided

out invention now being submitted in the divisional application because consent has

already been provided in the parent reissue application. See

MPEP § 1451

,

subsection I.A.

Form paragraph

14.15

may be used to indicate that

the consent of the assignee is lacking.