EPAS gets smarter

In the old days it was not easy to know whether the recordation of an assignment against a PCT application number would count in Assignments On The Web (AOTW) as an assignment against the US national phase of that same PCT application number.  But now EPAS (the electronic patent assignment system) seems to be smarter about this.

An important thing to remember is 35 USC § 363 which says that the US national phase of a PCT application is the same application as that PCT application.  The two applications are one and the same and they have the same filing date.

This suggests that if a filer were to record an assignment against either of those two application numbers, it should count as a recordation against both application numbers.

But for many years this seemed to be in doubt.  The behavior of the EPAS and AOTW systems seemed to be random.  Sometimes an assignment recorded against one would work against both, and sometimes not.  What made this particularly vexing was that the USPTO used to charge $40 per application number to carry out recordation.  So it rankled that a filer might have to spend $80 to record against both application numbers, given that the two applications were legally one and the same.

Today I was recording an assignment against the US national phase of a PCT application.  On a whim I tried to add the PCT application number to the recordation “cover sheet” (the online web-based form).  The following message popped up:

The associated application number 1475959♦♦ for PCT number PL20140500♦♦ already exists in the list of properties.

(redactions added).  In other words, the EPAS system looked up the domestic application number in Palm and matched it with the PCT application number that was also in Palm.

It’s clear that a recordation against either number will work later in AOTW as to both numbers.

Kudos to the USPTO for making EPAS and AOTW smart like this.

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