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Patents Assignments: Change & search ownership

Change of owner (assignment) and change of owner name.

During examination of a pending patent application or after the patent is granted, the owner of the patent may change: 1) the original owner may transfer ownership to another entity or party, through an "assignment;" or 2) the original owner may retain ownership but change its name. The original owner should record the assignment or name change with the USPTO's Assignment Recordation Branch by filing a Recordation Cover Sheet along with a copy of the actual assignment or proof of name change.

Change Ownership - Electronic Patent Assignment System (EPAS)

Use EPAS to create and submit a Patent Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation as black and white TIFF or PDF for submission via the internet. You may email questions about filing electronic patent assignments to [email protected] (link sends e-mail) .

Patent Assignment Search

Use  Patent Assignment Search  to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching patent assignments to [email protected] .

For further information, you may contact the Assignment Recordation Branch Customer Service Desk at 571-272-3350 from 8:30 am – 5:00 pm Eastern Time.

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Chapter 500 - Change of Ownership

501    assignment of marks, 501.01    assignability of marks in applications and registrations, 15 u.s.c. §1060(a) .

37 C.F.R. §3.1  (Extract)

501.01(a)    assignability of intent-to-use applications  .

• (a) The assignment is executed before the filing of an allegation of use;
• (b) The applicant submits the assignment document for inclusion in the application record in the Trademark database, and not just to the Assignment Recordation Branch; and
• (c) The assignment document fails to include the relevant language from §10 to the effect that the assignment includes the entire business of the applicant/assignor or the portion of the business to which the mark pertains.

501.01(b)    Assignability of Extensions of Protection of International Registrations to the United States

501.02    assignments must be in writing  , 15 u.s.c. §1060(a)(3) , 501.03    effect of failure to record assignment  , 501.04    foreign assignee may designate domestic representative, 15 u.s.c. §1060(b) , 37 c.f.r. §3.61 , 501.05    assignee stands in place of applicant or registrant, 15 u.s.c. §1127  (extract), 37 c.f.r. §3.71(d)  trademarks., 501.06    partial assignments, 501.07    assignment of extension of protection of international registration to the united states, 15 u.s.c. §1141l  assignment of an extension of protection:, 502    establishing ownership of applications or registrations  , 37 c.f.r. §3.73(a)  (extract), 502.01    establishing the right to take action in application or registration, 37 c.f.r. §3.73(b) , 502.02    pending applications - issuance of registration certificate in name of assignee or in applicant’s new name, 502.02(a)    applications under §§1 and 44 of the trademark act, 37 c.f.r. §3.85  issue of registration to assignee..

Example : ABC Corporation owns Application 1. ABC Corporation files an assignment of the entire interest and goodwill of the business, transferring ownership of Application 1 to DEF Incorporated. DEF Incorporated later files an assignment of the entire interest and goodwill of the business transferring ownership of Application 1 to XYZ Corporation. The Assignment database shows clear chain of title from ABC Corporation to DEF Incorporated to XYZ Corporation.

502.02(b)    Applications Under §66(a) of the Trademark Act

502.02(c)    examining attorney’s action regarding assignment, 502.03    issuance of new certificate to assignee of registrant, 503    recording with assignment recordation branch, 503.01    effect of recording a document, 37 c.f.r. §3.54  effect of recording., 503.01(a)    recording may not update ownership information, 503.01(b)    recording does not update correspondence address in trademark database, 503.01(c)    recording is not a determination of validity, 503.01(d)    recording does not constitute response to office action, 503.01(e)    conditional assignment, 503.02    documents that the office will record, 37 c.f.r. §3.11  documents which will be recorded., 503.03    requirements for recording, 503.03(a)    formal requirements for documents, 503.03(b)    supporting documents.

• (1) A copy of the document;
• (2) A copy of an extract from the document evidencing the effect on title; or
• (3) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.

503.03(c)    English Language Requirement

503.03(d)    fee for recording, 503.03(e)    cover sheet.

• The name of the party conveying the interest;
• The name and address of the party receiving the interest;
• The entity (e.g., individual, corporation, partnership, etc.) and citizenship of the party receiving the interest (e.g., the citizenship of an individual, the state or country of incorporation or organization of a corporation, etc.).  If the party receiving the interest is a domestic partnership or domestic joint venture, the names, entity, and citizenship (or the state or country of organization or incorporation) of all general partners or active members that compose the partnership or joint venture;
• A description of the interest conveyed or transaction to be recorded (e.g., assignment, license, change of name, merger, security agreement);
• Each application serial number or registration number against which the document is to be recorded, if known.  If the application serial number is not known, the party seeking to record the document must submit a copy of the application and/or a reproduction of the mark and an estimate of the date that the USPTO received the application;
• The name and address of the party to whom correspondence concerning the request to record the document should be sent;
• The date the document was executed; and
• The signature of the party submitting the document.  For a document filed electronically, the person who signs the cover sheet must either:  (1) place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks (e.g., "/Thomas O’Malley/") in the signature block on the electronic submission; or (2) sign the cover sheet using another form of electronic signature specified by the Director.
• The entity and citizenship of the conveying party (e.g., the citizenship of an individual, state or country of incorporation or organization of a corporation, or names and citizenship of the general partners of a domestic partnership);
• The number of applications and/or registrations identified in the cover sheet;
• The total fee; and
• An identification or description of the mark.

503.04    Address for Submitting Documents for Recording

503.05    recording procedure and recordation date, 503.06    correction of errors in cover sheet or recorded document, 37 c.f.r. §3.34  correction of cover sheet errors., 503.06(a)    typographical errors in cover sheet, 503.06(a)(i)    typographical errors in cover sheet that do not affect title to application or registration, 503.06(a)(ii)    typographical errors in cover sheet that do affect title to application or registration, 503.06(b)    typographical errors in recorded assignment document, 503.06(c)    assignment, change of name, or other interest improperly filed and recorded by another person against owner’s application or registration, 503.06(d)    owner must notify trademark operation of correction, 503.06(e)    recorded documents not removed from assignment records, 503.06(f)    petitions to correct or "expunge" assignment records, 503.07    "indexing" against recorded document not permitted, 503.08    accessibility of assignment records, 503.08(a)    trademark assignment abstracts of title, 504    automatic updating of ownership of trademark applications and registrations in trademark database.

• Assignment of entire interest and goodwill;
• Nunc Pro Tunc Assignment of entire interest and goodwill;
• Change of Name;
• Merger and Change of Name; or
• Entity Conversion.

504.01    Circumstances in Which Trademark Database Will Not Be Automatically Updated

• Approximately three weeks before the application is scheduled to publish in the Trademark Official Gazette ; and
• Approximately three weeks before the application is scheduled to issue.
• Approximately three weeks before the application is scheduled to publish in the Trademark Official Gazette ;
• Approximately three weeks before the Notice of Allowance is scheduled to issue; and
• After the SOU is accepted, approximately three weeks before the registration is scheduled to issue.
• Prior to publication – up to nine changes of ownership.
• Between publication and registration – up to nine additional changes of ownership.

504.02    Processing Time for Automatic Updating

504.03    correction to automatic update - last recorded owner does not have clear chain of title.

• (1) The Trademark database was automatically updated to show ownership in a party who does not have clear chain of title according to the Assignment database; and
• (2) At the time the Trademark database was automatically updated in the name of the incorrect party, the Assignment database showed clear chain of title in the party requesting correction of the "Ownership" field in the Trademark database.

504.04    Automatic Updating Does Not Apply to §66(a) Applications and Registered Extensions of Protection

505    requesting update of ownership information when the trademark database does not automatically update after a document is recorded, 505.01    request to update ownership information in pending application, 505.02    request to update ownership information after registration.

• (1)  Record the appropriate document (e.g., assignment, change of name) with the Assignment Recordation Branch;
• (2) File a written request that the Trademark database be updated under §7(d), signed by the new owner, someone with legal authority to bind the new owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner; and
• (3) Pay the required fee ( 37 C.F.R. §§2.6(a)(8)   and 3.41).

503    Recording with Assignment Recordation Branch

503.01   effect of recording a document, 37 c.f.r. §3.54  effect of recording..

503.01(a)   Recording May Not Update Ownership Information

503.01(b)   recording does not update correspondence address in trademark database, 503.01(c)   recording is not a determination of validity, 503.01(d)   recording does not constitute response to office action, 503.01(e)   conditional assignment, 503.02   documents that the office will record, 37 c.f.r. §3.11  documents which will be recorded., 503.03   requirements for recording, 503.03(a)   formal requirements for documents, 503.03(b)   supporting documents.

• (1) A copy of the document;
• (2) A copy of an extract from the document evidencing the effect on title; or
• (3) A statement signed by both the party conveying the interest and the party receiving the interest explaining how the conveyance affects title.

503.03(c)   English Language Requirement

503.03(d)   fee for recording, 503.03(e)   cover sheet.

• The name of the party conveying the interest;
• The name and address of the party receiving the interest;
• The entity (e.g., individual, corporation, partnership, etc.) and citizenship of the party receiving the interest (e.g., the citizenship of an individual, the state or country of incorporation or organization of a corporation, etc.).  If the party receiving the interest is a domestic partnership or domestic joint venture, the names, entity, and citizenship (or the state or country of organization or incorporation) of all general partners or active members that compose the partnership or joint venture;
• A description of the interest conveyed or transaction to be recorded (e.g., assignment, license, change of name, merger, security agreement);
• Each application serial number or registration number against which the document is to be recorded, if known.  If the application serial number is not known, the party seeking to record the document must submit a copy of the application and/or a reproduction of the mark and an estimate of the date that the USPTO received the application;
• The name and address of the party to whom correspondence concerning the request to record the document should be sent;
• The date the document was executed; and
• The signature of the party submitting the document.  For a document filed electronically, the person who signs the cover sheet must either:  (1) place a symbol comprised of letters, numbers, and/or punctuation marks between forward slash marks (e.g., "/Thomas O’Malley/") in the signature block on the electronic submission; or (2) sign the cover sheet using another form of electronic signature specified by the Director.
• The entity and citizenship of the conveying party (e.g., the citizenship of an individual, state or country of incorporation or organization of a corporation, or names and citizenship of the general partners of a domestic partnership);
• The number of applications and/or registrations identified in the cover sheet;
• The total fee; and
• An identification or description of the mark.

503.04   Address for Submitting Documents for Recording

503.05   recording procedure and recordation date, 503.06   correction of errors in cover sheet or recorded document, 37 c.f.r. §3.34  correction of cover sheet errors., 503.06(a)   typographical errors in cover sheet, 503.06(a)(i)   typographical errors in cover sheet that do not affect title to application or registration, 503.06(a)(ii)   typographical errors in cover sheet that do affect title to application or registration, 503.06(b)   typographical errors in recorded assignment document, 503.06(c)   assignment, change of name, or other interest improperly filed and recorded by another person against owner’s application or registration, 503.06(d)   owner must notify trademark operation of correction, 503.06(e)   recorded documents not removed from assignment records, 503.06(f)   petitions to correct or "expunge" assignment records, 503.07   "indexing" against recorded document not permitted, 503.08   accessibility of assignment records, 503.08(a)   trademark assignment abstracts of title.