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   PATENT ASSIGNMENTS QUESTION
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   Author  Topic: PATENT ASSIGNMENTS QUESTION  (Read 897 times)
patag2001
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PATENT ASSIGNMENTS QUESTION
« on: Mar 31st, 2007, 12:12pm »
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Is filing a patent assignment incident to the preparation and prosecution of a patent examination?
 
Many thanks!
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JimIvey
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  jamesdivey  
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Re: PATENT ASSIGNMENTS QUESTION
« Reply #1 on: Mar 31st, 2007, 1:38pm »
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No.  Ownership of an application and any issuing patent therefrom can be retained by the inventor(s).
 
Regards.
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James D. Ivey
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Isaac
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Re: PATENT ASSIGNMENTS QUESTION
« Reply #2 on: Apr 1st, 2007, 4:27pm »
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The OP's question appears to be aimed at whether a patent agent can file assignment documents for recording with the PTO.
 
I would distinguish between drafting an assignment agreement and filing documents for recording the agreement with the patent office.  The former I would agree is not "incident to preparing and filing a patent application".
 
However I would argue that recording a patent assignment with the PTO often is incident to the preparation and prosecution of a patent application.   For example, if you represent an assignee rather than the inventor, getting the PTO to recognize your client as an assignee is reasonably necessary to representing your client during prosecution.
 
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Isaac
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