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Author Topic: Necessary to change applicant when application assigned to new owner?  (Read 169 times)

MR

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If corporation A assigns to corporation B, is it necessary to file the forms to change the applicant (e.g., the statement under 37 CFR 3.73, ADS, and power of attorney) to continue prosecuting the application? 

In our case the two corporations are owned by the same ultimate shareholder, and he'd like to defer or even avoid the cost of having our file these documents in each of his applications.
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currancchs

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Personally, I'd prefer to file the assignment, statement under 37 CFR 3.73, and power of attorney in the name of the assignee just so that the record accurately reflects the current situation regarding ownership, but I don't believe that would strictly be necessary in your case since the same person would ultimately be authorizing the work and could sign the power of attorney on behalf of the old organization. Since the USPTO wouldn't even know of the change in ownership, they wouldn't think twice about accepting the power of attorney and allowing you to proceed with prosecution, although there could certainly be a litigation-related reason that I am missing that would make this strategy a bad idea. The only problem that I can think of is that the corporation A no longer has the authority to grant a power of attorney to you if all rights in the application have been assigned, even though the USPTO does not know of this.

I would be interested as to why corporation A bothered to assign to corporation B. For instance, if the application is near grant and they were thinking about potentially asserting the patent against a third party after issuance and trying to reduce corporation A's exposure to counterclaims in potential litigation, then avoiding treating corporation A and corporation B as simply instruments of the same individual by filing the appropriate paperwork would definitely be advisable (I am thinking of a cross-corporation piercing the corporate veil type situation).

If it were me, I would probably try to convince the client to file the paperwork, as the cost should be minimal compared to the overall cost of prosecution and it just seems like a cleaner way to do things.

Apologies for the lack of a straight/clear answer, but I hope that this gives you some additional points to consider in advising your client.
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