Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[astrojudo]

Hello all,

Out of curiosity,  if the inventor receives the ribbon copy of his granted patent does an inventor get to keep the ribbon copy of a patent or should the inventor send it to the assignee?

Thanks

[Oh, Crud]

Hello all,

Out of curiosity,  if the inventor receives the ribbon copy of his granted patent does an inventor get to keep the ribbon copy of a patent or should the inventor send it to the assignee?

Thanks

Interesting question.  The assignment typically says something along the lines of a catchall assigning "all rights, title, and interest" to the application, right?  Possibly the ribbon copy falls into that catchall.  I can tell you that just about any assignee will answer "yes, I expect I should get the ribbon copy".

There are (or at least, used to be) some legal matters for which the assignee must present and/or surrender the ribbon copy.  Reissue I know at least used to require surrender of the prior ribbon copy, else the new reissue patent could not grant.  Maybe in today's more paperless world that is no longer the case.

But in any event, the assignee can buy additional ribbon copies (few hundred $ I think).

[NJ Patent1]

Upon issue, a U.S. patent vests rights in the owner (assignee of all rights, title and interest in and to …).  Principal among these rights is the “right to exclude”.  Depending on the language of the assignment, assignee may have other rights to, e.g., file CONs.  But IMHO grant of a patent does not vest rights to possession of a particular chattel (a particular ribbon copy).  If your client can’t afford the modest fee for an (additional) ribbon copy, sue inventor in state court to obtain possession of the chattel.  What will that cost???  In any infringement litigation UR client may well have to fork-over a ribbon copy anyway (“best evidence” rule?).  Cheers, NJP1 

[bleedingpen]

Upon issue, a U.S. patent vests rights in the owner (assignee of all rights, title and interest in and to …).  Principal among these rights is the “right to exclude”.  Depending on the language of the assignment, assignee may have other rights to, e.g., file CONs.  But IMHO grant of a patent does not vest rights to possession of a particular chattel (a particular ribbon copy).  If your client can’t afford the modest fee for an (additional) ribbon copy, sue inventor in state court to obtain possession of the chattel.  What will that cost???  In any infringement litigation UR client may well have to fork-over a ribbon copy anyway (“best evidence” rule?).  Cheers, NJP1 

Might want to check the rules on ordering ribbon copies...

[NJ Patent1]

Bleeding:  Thanks, did that.  37 CFR 1.13

… (b) Certified copies of patents, patent application publications, and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public or persons entitled thereto will be authenticated by the seal of the United States Patent and Trademark Office and certified by the Director, or in his or her name, upon payment of the fee for the certified copy …

The issued patent per se is “open to the public”, and assignee (owner) is “entitled there to”  As far as I can tell, the certification fee is $25.  Am I overlooking some horrendous “processing fee”? 

[bleedingpen]

Bleeding:  Thanks, did that.  37 CFR 1.13

… (b) Certified copies of patents, patent application publications, and trademark registrations and of any records, books, papers, or drawings within the jurisdiction of the United States Patent and Trademark Office and open to the public or persons entitled thereto will be authenticated by the seal of the United States Patent and Trademark Office and certified by the Director, or in his or her name, upon payment of the fee for the certified copy …

The issued patent per se is “open to the public”, and assignee (owner) is “entitled there to”  As far as I can tell, the certification fee is $25.  Am I overlooking some horrendous “processing fee”? 

Yes, you are looking at certified copies which are different from the ribbon copy.

Ribbon copies are $400 a piece and you have to make a statement that you have lost the original  ( I think )

[NJ Patent1]

Bleeding:  Thanks.  That’s a $375 difference!
 
FWIW I just searched the PTO site for “ribbon copy”.  Just reading the “headlines”, the Office itself appears to sometimes equate “ribbon copy” and “certified copy”.  Hmm.  Begs the question(for me):  What extra rights does possession of “the” ribbon copy - the one initially issued - that possession of a “certified” copy would not?  As far as I’m aware, courts accept “certified copies” as defining the original grant, and the requirement for physical surrender in reissue was eliminated (suggesting that at one time physical possession of “the” ribbon copy was indeed important).  Ownership - and hence standing to sue - would be decided by assignment records.  But I’m digressing far from the OP.  I still can’t think a way to get “the” ribbon copy, other than an action to recover the thing. 

[bleedingpen]

Bleeding:  Thanks.  That’s a $375 difference!
 
FWIW I just searched the PTO site for “ribbon copy”.  Just reading the “headlines”, the Office itself appears to sometimes equate “ribbon copy” and “certified copy”.  Hmm.  Begs the question(for me):  What extra rights does possession of “the” ribbon copy - the one initially issued - that possession of a “certified” copy would not?  As far as I’m aware, courts accept “certified copies” as defining the original grant, and the requirement for physical surrender in reissue was eliminated (suggesting that at one time physical possession of “the” ribbon copy was indeed important).  Ownership - and hence standing to sue - would be decided by assignment records.  But I’m digressing far from the OP.  I still can’t think a way to get “the” ribbon copy, other than an action to recover the thing. 

Yeah, but the ribbon copy is so much cooler.