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Assignment Improperly Filed by Another Company
Posted by Anonymous . updated on 5/13/2011
Another company unintentionally filed an assignment against my patent application.
I have been in contact with the company's legal counsel and have received written confirmation acknowledging that I never transferred title and that they will pay to have the assignment corrected.
However, we are both unclear what "corrective papers" need to be filed by them to have this assignment corrected.
MPEP 323.01(c) describes in detail the steps an inventor must take if correction is sought on his/her own, but it is vague what needs to be done if the party who recorded the assignment is willing to file corrective papers.
From reading before and after 323.01(c), it appears that the following would suffice as "corrective papers":
(1) a copy of the originally recorded assignment document with corrections made, initialed, and dated by the party conveying the interest
(2) a copy of the original cover sheet
(3) a new cover sheet in which the "nature of conveyance" states "correction of application number"
Would this make it clear that ownership never changed, or should I also supply an affidavit/declaration in which I identify myself as the correct owner? If so, are there any sample affidavits/declarations you can point me towards?
Thanks.
Answers (2)
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Yes, the other company transcribed the wrong serial number.
We were able to get this resolved (in about 2 months) using the USPTO's "Electronic Patent Assignment System" which lets you choose "corrective assignment" from a list of allowable conveyance types.
Also, to assure potential investors that it was merely a clerical error, I posted a "miscellaneous incoming letter" to PAIR to memorialize that there was never any transfer of right, title and interest in my patent application.
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Janis A...
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Given what you said above, I assume that the other company simply provided the wrong serial number when they were in the process of recording the assignment.
In which case they need to correct their assignment (if the error was in the assignment itself)or correct their paperwork and provide the 3 listed items to the PTO. The PTO will make the correction.
Ask the other company (or their law firm) to keep you informed of when they have filed the change. The PTO takes a bit longer to record error changes than it does to record assignments. I'd estimate upwards of 6 weeks. So just check back every so often if you have Private PAIR access. The PTO should automatically remove the wrong company assignment from your PTO application files.
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