Corrective Assignment: Everything You Need to Know
A corrective assignment is a way to rectify an error in a recorded document.3 min read
2. Correcting Assignment Cover Sheets at the United States Patent and Trademark Office
A corrective assignment is a way to rectify an error in a recorded document. The Assignment Division will make the changes if an acceptable corrective document is turned in. Policies related to the recording of assignment documents are designed to maintain the history of any claimed interests in property.
For that reason, recorded assignment documents are not expunged, even if they are later determined to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm'r Pat. 1992) for more information. Once a document is recorded, the Assignment Services Division will not remove information from the record. See MPEP § 323.01(d) for specifics.
What Are the Components of a Corrective Assignment?
- The corrective document needs to include a copy of the original assignment paperwork with the requested changes noted.
- The party who wishes to convey the interest needs to initial the corrections and date them.
- A Recordation Form Cover Sheet (form PTO-1595) must accompany the corrective document. Refer to MPEP § 302.07 for more information. The new cover sheet should be clearly marked as a corrective document submission and refer to the reel and frame number of the recorded document that needs correcting.
- When the corrective document is recorded, it gets a new reel and frame number along with the date of recording.
- The original cover sheet should be included in the packet.
- The fee for this service is listed in 37 CFR 1.21(h). This recording fee must be paid for each application and each patent being corrected. Refer to MPEP § 302.06 for more information.
- You can make corrections to the original by marking out an application or patent number if you are completing a name change or merger. See MPEP § 314 for more information.
Correcting Assignment Cover Sheets at the United States Patent and Trademark Office
Sometimes the United States Patent and Trademark Office (USPTO) makes mistakes. Practitioners also make errors occasionally. While both sides strive for perfection, in reality, mistakes will happen. The USPTO recognizes this and provides processes and policies to fix issues like typographical errors and other clerical errors at different points in the process.
For some examples, refer to 37 CFR 1.76(c) Correction of ADS, PCT Rule 91.1 Rectification of Obvious Mistakes, 37 CFR 1.121(b) Amendments to Specification, 37 CFR 1.323 Certificate of Correction of Applicant's Mistake, and 37 CFR 3.34 Correction of Cover Sheet Errors.
Usually, these processes are sufficient. However, if a correction needs to be made on an assignment cover page, the MPEP instructions on how the USPTO should handle them appear to conflict with the way the Assignment Branch processes them. The MPEP 323.01(a); 37 CFR 3.34 lists the requirements to correct a cover sheet as:
- A copy of the original recorded document.
- A cover sheet that reflects the corrections.
- Payment for the fees.
You can file such a request by mail as described in MPEP 302.08 or by fax as described in MPEP 302.09. To use EPAS to file electronically, the MPEP instructions say to mark the box labeled "Other" under "Nature of Conveyance" and then fill in the reel and frame information and describe the correction.
Though this seems simple enough, what actually happens in practice is quite different. The USPTO Assignment Branch sometime rejects requests to correct Notices of Recordation of Assignment (NORA) without explanation. This happens whether the request was submitted via mail, fax, or electronically.
One possible explanation is an EPAS-centered process that makes the MPEP process impractical. The only way to fix a NORA cover page is by filing an application for a corrective assignment. This is different than choosing "Other."
This happens even though the EPAS is made just for requests such as this. Despite that, it cannot process a task so routine that it has a dedicated section in the MPEP. A simple solution would be a separate selection under "Nature of Conveyance" labeled "Correction to Cover Sheet." A text box could hold the necessary information.
This could help users see the option immediately and remove any vagueness in the rules or the processing of the requests. Also, the Assignment Branch should allow requests via mail and fax since these are specifically offered in the MPEP.
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