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For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in ance with 37 CFR 3.11. See 37 CFR 3.81(a). (B) An assignment can be made of record in the file of a patent application, patent, or other patent proceeding (e.g., reexamination proceeding).
The assignment is a contract, which can cover a few different items. It may be an assignment of common law trademark rights. There may also be a federal trademark registration involved, as well. You can even assign a trademark application.
An Intent-To-Use (ITU) trademark application cannot be assigned to a new owner prior to the original applicant filing evidence of use. In other words, the original applicant of an ITU must first use the trademark in connection with the goods or services identified in the trademark application.
The trademark assignment should include: name and address of the new owner (assignee); if the assignee is a company, the type of entity and state of incorporation; specific details of the trademark application(s) and/or registration(s) to be transferred; and.
Type or print in blue or black ink. Mail the assignment with original signatures and filing fee of $30.00 to the Secretary of State, Trademark Unit, P.O. Box 942870, Sacramento, CA 94277-2870. Indicate at the top of the application which type of registration is being assigned.
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 EPAS@uspto.gov .
Steps in Assigning a Trademark Draft an assignment agreement and have it signed by both parties. ... Fill out the Recordation Form Cover Sheet, which can be completed online. ... Submit both the agreement and the cover sheet to the USPTO's Assignment Recordation unit.
Assignment Recordation puts the USPTO on official notice pertaining to ownership of the Intellectual Property. Subject to the provisions set forth in the MPEP, patents shall have the attributes of personal property. A patent for an invention is the grant of a property right to the inventor.