Will the attached assignment be acceptable to the USPTO?

About once a month we at OPLF get an inquiry from an intellectual property firm located outside of the US regarding a client’s name change or assignment.  The inquiry is along the lines of:

Here is a draft Assignment from Company A to Company B.  Kindly advise whether this Assignment will be acceptable to the USPTO to transfer patent C from Company A to Company B.  Kindly advise what other documents if any will be needed and what this will cost.

Or the inquiry is along the lines of:

Here is an excerpt from the official corporate register of country A evidencing that the Company has officially changed its name from A to B.  Kindly advise whether this document will be acceptable to the USPTO to change the applicant name from A to B.  Kindly advise what other documents if any will be needed and what this will cost.

We find ourselves having to explain the same things, over and over again, to non-US counsel.  We hope that with this blog article we can save some time for everybody involved and answer some of the questions. 

What is “acceptable to the USPTO”?  The first thing that we find ourselves explaining, over and over again, is that nobody at the USPTO pays any attention to the substantive legal content of documents recorded at the USPTO.  Nobody at the USPTO evaluates whether some particular document does or does not actuall bring about a legal name change from A to B.  Nobody at the USPTO evaluates whether some particular document does or does not actually bring about transfer of legal ownership from party A to party B.

So to the extent there is some question whether the Assignment Branch at the USPTO does or does not find some document “acceptable” to be recorded, the conditions are basically:

• • Does the document have writing on it, or is it a blank piece of paper?  (It is not “acceptable” if it is a blank piece of paper.)
  • Is the document approximately 8½ inches by 11 inches in size?  (It is not “acceptable” if it has dimensions that diverge greatly from A4 dimensions or 8½ inches by 11 inches.)
  • Does the document have margins of at least one inch along all four edges?  (It is not “acceptable” if it fails to have such margins.)

There is a further requirement that the document be in English, or that a translation into English of the document be provided.  If a translation into English is provided, it must either be signed by the translator, or a signed accuracy statement must be provided.

There is a further requirement that if the document to be recorded is an Assignment, it must recite the identity of the property or properties to which it refers.  This recitation might be:

• • a trademark application number;
  • a trademark registration number;
  • a patent application number;
  • a patent number;
  • for a not-yet-filed patent application, the title and inventor names.

When somebody e-files a document at the Assignment Branch to be recorded, it is true that somebody at the USPTO does examine the document to decide whether or not the document is “acceptable” for recordation.   But what I need to emphasize for the reader is that the person doing this “examination”, such as it is, is not a person with any legal training.  The person doing this “examination” has never set foot in a law school.  The person doing this “examination” does not, for example, evaluate whether the words on the page do or do not suffice to actually transfer ownership from person A to Person B.  The person doing this “examination” does not, for example, evaluate whether the words on the page do or do not suffice to actually accomplish a legal name change of an owner from A to B.

The person at the USPTO doing this “examination”, such as it is, merely checks for things like:

• • Is it a blank piece of paper?
  • Does it fail to have proper margins?
  • Is it the wrong dimensions?
  • Does it contain non-English text?
  • Does it look out of the ordinary?

Yes, years of experience with the Assignment Branch have made clear that there is a secret rule at the Assignment Branch.   The “examiners” who examine documents that have been e-filed for recordation have a secret rule that if a document looks “out of the ordinary” then it gets bounced to a supervisor for further review.  This “out of the ordinary” evaluation is extremely subjective.   Any document that gets bounced will take many extra weeks to get processed, instead of just a few days.

In our office, we keep track of how long an e-filed document has been waiting for processing at the Assignment Branch.  If it has languished for a few weeks, we know that the initial “examiner” has bounced it to a supervisor on the extremely subjective secret procedure because it “looks out of the ordinary”.  Our usual procedure at that point is to e-file the document again.  Likely as not, the refiled document will reach a different “examiner”.  That subjective evaluation by the different “examiner” might not yield a bounce, and we might get a prompt recordation.

Now we return to the foreign firm that asks us to evaluate whether some proposed document to be filed at the USPTO will be “acceptable to the USPTO” for recordation.   What we find ourselves explaining, again and again, is that this evaluation as to whether any proposed document is or is not “acceptable to the USPTO” is in fact extremely easy for us to carry out.  We measure the dimensions of the document and we check to see whether it is a blank piece of paper, and we know the answer.

And if necessary, we point out the need for a translation of the document into English and for a signed accuracy statement.

Does anybody care what document actually gets recorded?  Given that the USPTO does not carry out any substantive review of a recorded document, then does anybody care what document gets recorded?  Do we really need to record an excerpt from the corporate register from the government of the country in which the corporation was established?  Can we simply hand in instead a two-sentence document, created in a word processor, that recites that the name change happened?  Is there any requirement that the signature be witnessed?  Is there any requirement that the signature be notarized?  Is there any need for a signature from the assignee as well as from the assignor?  Is there any need for the signer to be a human being?  Can this two-sentence document instead be signed by a house pet?  Since the USPTO does not care, do we care?

I have certainly seen many name-change documents recorded at the USPTO which look like they were created in a word processor and which might just as well have been signed by house pets for all I know.  When I look at the later paperwork that was filed at the USPTO, such as a Rule 3.73 statement and an Application Data Sheet establishing the new owner, and a Power of Attorney from the new owner, I see results that are exactly what the practitioner wanted.  The Filing Receipt shows the new owner name as the applicant, a Form N570 recognizes the practitioner as having power of attorney from the new owner, and the front page of the issued patent shows the patent issuing in the name of the new owner.

So far as the USPTO is concerned, almost any documents, signed by almost anybody, will be enough to bring about such results.

I suppose some patent owners and some trademark owners choose to carry out corporate name changes and Assignments with an eye not only to getting results at the USPTO but also with an eye toward the situation TYFNIL (ten years from now in litigation).  A skeptical adversary might raise questions about whether a purported name change really happened, or when the purported name change really happened.   A skeptical adversary might try to put into question whether the named owner at litigation time actually has standing to sue.  These considerations might prompt a filer to try to be more thorough about filing papers at the Assignment Branch that provide a clearer record as to exactly what happened, and when, to bring about a name change or corporate merger or Assignment.

What hard work is actually required at the USPTO?  Given that the USPTO does not care at all what ink is on the page for a recorded name change or merger or Assignment, then does this mean that no hard work is needed from US counsel?  The answer is that all sorts of hard work is needed from US counsel.  The process of accomplishing a name change for a patent applicant, for example, is very long and very tedious.  The professional fees from US counsel for a seemingly simple name change for a patent applicant can be substantial and the process can go on for months.

Here is a typical sequence of steps for accomplishing a name change for a patent applicant at the USPTO.

• • US counsel receives an inquiry from foreign counsel about the cost for doing a name change for a patent applicant at the USPTO and for the documents required.  Foreign counsel provides an excerpt from the corporate register in the foreign country involved.
  • If US counsel is unwise, US counsel quotes a fixed price for the professional fee for the name change.
  • US counsel asks for a translation into English of the excerpt from the corporate register, along with a signed accuracy statement.
  • Foreign counsel provide the translation into English of the excerpt from the corporate register, along with a signed accuracy statement.
  • US counsel prepares a Recordation Cover Sheet and e-files the excerpt from the corporate register, and the translation into English of the excerpt from the corporate register, along with a signed accuracy statement, in the EPAS system at the USPTO.
  • US counsel prepares a Power of Attorney for signature by the new owner, and sends it to foreign counsel for signature.
  • Foreign counsel obtains the signature of the new owner on the Power of Attorney.
  • Foreign counsel provides the signed Power of Attorney to US counsel.
  • Weeks pass and US counsel find it necessary to make inquiry at the USPTO’s Assignment Branch as to why the Assignment Branch has not carried out the recordation.
  • US counsel find it necessary to escalate to a supervisor at the USPTO’s Assignment Branch.
  • Eventually US counsel receive the precious Reel and Frame Number from the Assignment Branch, evidencing the recordation of the name-change documents.
  • US counsel prepare and sign a Rule 3.73 Statement reciting the chain of title evidencing the ownership of the subject property by the new owner.
  • US counsel prepare and sign an Application Data Sheet with suitable strikethroughs and underscores detailing the change of applicant name for the subject property at the USPTO.
  • US counsel e-file the signed Rule 3.73 Statement and the signed ADS at the USPTO.
  • The USPTO Office of Data Management fail to act upon the Rule 3.73 Statement and the signed ADS.
  • US counsel find it necessary to make inquiry at the USPTO as to why the documents have not been acted upon.
  • US counsel find it necessary to escalate to a supervisor at the USPTO as to why the documents have not been acted upon.
  • Eventually the USPTO mails out a new Filing Receipt acknowledging that the applicant name has been changed to the new applicant name.
  • US counsel file the new Power of Attorney signed by the new applicant.
  • The USPTO Office of Data Management fail to act upon the Power of Attorney.
  • US counsel find it necessary to make inquiry at the USPTO as to why the POA has not been acted upon.
  • US counsel find it necessary to escalate to a supervisor at the USPTO as to why the POA has not been acted upon.
  • Eventually the USPTO mails out Form N570 recognizing the grant of power of attorney from the new applicant to US counsel.

As mentioned above, it is commonplace for this process to take some months.  The time and energy and professional fees required can be substantial.

Sometimes the process of carrying out a name change or merger or Assignment goes smoothly.  Sometimes the 23 or so steps recited above are compressed into as few as a dozen steps.  Sometimes each office at the USPTO does its task diligently and promptly.  But in our experience this is rare.

Who can do the recordation?  The recordation of documents relating to ownership and title at the USPTO takes place in two systems called EPAS ( https://epas.uspto.gov/ ) for patents (utility and design and plant patents) and ETAS ( https://etas.uspto.gov/ ) for trademarks.  Nothing about either of these systems requires that US counsel do the work.  Anybody anywhere in the world can carry out the e-filing in either of these two systems.   So there is no need to pay professional fees to US counsel to obtain the precious Reel and Frame Numbers from these systems.