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   Issued Patent
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Jewel
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Posts: 1
Issued Patent
« on: Feb 1st, 2007, 6:17pm »
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Hi there,
I am an paralegal in a patent law firm.
When I was paying issue fee, I left out one assignee's name on the form.
Now, the patent is about to be issued.
My client needs all of the assignees' name to be printed on the patent.
 
I am in such deep trouble...if i cannot fix it...i may get #$%^^&
I sent an petition and trying to get it fixed.
However, I do appreciate if anyone there ever had such experience.
Is it possible to have the left out name to be printed on the patent after submitting the petitionHuh
Please help!!  
Jewel
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Wiscagent
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Posts: 843
Re: Issued Patent
« Reply #1 on: Feb 2nd, 2007, 5:28am »
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"Is it possible to have the left out name to be printed on the patent after submitting the petition?"
 
Yes.  Depending on the timing, the patent office can go ahead and publish the patent without the name.  In that case you could then petition to have the issued patent withdrawn ... definitely NOT a route you’d want to go.
 
I assume you understand that from a legal perspective, whether or not the assignee’s name appears on the front page of the granted patent is not important.  You could probably have a certificate of correction issued, but that would add the assignee’s name to the added page, not the front cover.
 
Other than that, you’d probably have to go with a reissue ... not something that should be done casually, or can be done quickly, easily, or cheaply.
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Richard Tanzer
Patent Agent
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Re: Issued Patent
« Reply #2 on: Feb 2nd, 2007, 8:13am »
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If you don't have a patent practice registration number, and if you work for a law firm that represents the owner of the patent application, then you are not authorized to sign the form related to paying the issue fee. That is, a patent attorney or patent agent probably signed the form. The salary that comes with the registration number comes with responsibilities. Somebody is in trouble with you if you're in trouble.
 
Perhaps it's not as big a deal as you may be perceiving. If you're a very detail-oriented patent paralegal ... then kudos to you for taking such matters seriously. But, as Wiscagent suggests, there is probably no legal affect in the problem. Perhaps you can talk to the person who signed off on paying the issue fee ... they should be on your side because they are more responsible than you.
 
I'm a patent agent at a firm. I recently paid a small entity issue fee for a client that had recently lost small entity entitlement. I freaked out a little ... but then found out that these things happen. Mine was a big problem with an easy repair. Yours is more like a little problem with only difficult repairs.  
 
Good luck ... don't worry ... if your firm is excessively harsh to you about this then your working for a harsh place. They may know they need you as much or more as you need them.
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jewel
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Posts: 1
Re: Issued Patent
« Reply #3 on: Feb 2nd, 2007, 8:53pm »
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Hi there,
 
Thanks a lot for your guys help...I really appreicate!!
 
So, the only way to have the left out assginee's name to be printed on the patent sounds really "Small".
 
Yes, the attorney who signed the name is working on it too.
But I feel it is my fault not to look it through before hand it to him.
 
Well, it seems like to withdraw the issued patent is a very bad idea to do.
All my client wants is to have their names on the front...it is the one of very important reason for them to apply for it i think.
It may sound funny to you...but believe me, that is what they want.
 
Wish me luck and again thank you all for your quick and detailed reply.
best wishes,
Jewel
 
 
on Feb 1st, 2007, 6:17pm, Jewel wrote:
Hi there,
I am an paralegal in a patent law firm.
When I was paying issue fee, I left out one assignee's name on the form.
Now, the patent is about to be issued.
My client needs all of the assignees' name to be printed on the patent.
 
I am in such deep trouble...if i cannot fix it...i may get #$%^^&
I sent an petition and trying to get it fixed.
However, I do appreciate if anyone there ever had such experience.
Is it possible to have the left out name to be printed on the patent after submitting the petitionHuh
Please help!!  
Jewel

IP Logged
biopico
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Posts: 434
Re: Issued Patent
« Reply #4 on: Feb 2nd, 2007, 9:14pm »
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**>Any request for the issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee must:  
 
 
(A) state that the assignment was submitted for recordation as set forth in 37 CFR 3.11 before issuance of the patent;  
 
(B) include a request for a certificate of correction under 37 CFR 1.323 along with the fee set forth in 37 CFR 1.20(a); and
 
(C) include the processing fee set forth in 37 CFR 1.17(i).
 
 
 
on Feb 1st, 2007, 6:17pm, Jewel wrote:
Hi there,
I am an paralegal in a patent law firm.
When I was paying issue fee, I left out one assignee's name on the form.
Now, the patent is about to be issued.
My client needs all of the assignees' name to be printed on the patent.
 
I am in such deep trouble...if i cannot fix it...i may get #$%^^&
I sent an petition and trying to get it fixed.
However, I do appreciate if anyone there ever had such experience.
Is it possible to have the left out name to be printed on the patent after submitting the petitionHuh
Please help!!  
Jewel

IP Logged

Registered Patent Agent Specializing in All Areas of Biotechnology
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