37 C.F.R. § 3.73

Establishing right of assignee to take action

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(a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.

(b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:

(1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or

(2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

(c)(1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:

(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or

(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

(2) If the submission is by an assignee of less than the entire right, title and interest (e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:

(i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or

(ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties own the entire right, title and interest.

(3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine which, if any, purported assignee will be permitted to control prosecution of the application.

(d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

(1) Including a statement that the person signing the submission is authorized to act on behalf of the assignee;

(2) Being signed by a person having apparent authority to sign on behalf of the assignee; or

(3) For patent matters only, being signed by a practitioner of record.

[77 FR 48825, Aug. 14, 2012]

Notes of Decisions

Cited in 8 cases (2 in the last 5 years), 1997–2025 · leading case: SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010).

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SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010). “” 37 C.F.R. § 3.73 (a); see also Isr. Bio-Eng’g Project v.”

Honeywell Int'l Inc. v. United States, 81 Fed. Cl. 224 (Fed. Cl. 2008). “A Terminal Disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b). 2. Claims 1-7 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims of U.”

Mindscape, Inc. v. Media Depot, Inc., 973 F. Supp. 1130 (N.D. Cal. 1997). “Moreover, Mindseape granted power of attorney for the ’398 patent to Chan in July 1996, under 37 C.F.R. § 3.73 (b). Rose Deck, Exhs. F, I.”

Bell Semiconductor LLC v. Advanced Semiconductor Eng'g, Inc. (Fed. Cir. 2023). · cites it 3× “” 37 C.F.R. § 3.73 (c)(1); see also 37 C.F.”

Tristar Prods. Inc v. Telebrands Corp. (N.D. Fla. 2025). · cites it 2× “11 Anyone, not just the patent owner, may 10 Snow is specifically alleged to have represented to the Patent Office, under 37 C.F.R. 3.73(c), that Telebrands was “[t]he assignee of the entire right, title, and interest” in each of the ex parte reexamination requests.”

Mynette Tech., Inc. v. United States (Fed. Cl. 2018). “gov/pair/PublicPair (select “Application Number” and search “14/660,825”; then select “Image File Wrapper”; then select “Assignee showing of ownership per 37 CFR 3.73”) [hereinafter “Mynette Assignment, USPTO PUBLIC PAIR”].”

Tube-mac Indus., Inc. v. Campbell (W.D. Pa. 2020). “37 C.F.R. § 3.73 provides the way in which an assignee, in this case Tranzgaz, may take action before the USPTO with respect to a patent or patent application, pertinently by establishing ownership by way of submission of documentary evidence of assignment.”

Tube-Mac Indus., Inc. v. Campbell (E.D. Va. 2020). “37 C.F.R. § 3.73 provides the way in which an assignee, in this case Tranzgaz, may take action before the USPTO with respect to a patent or patent application, pertinently by establishing ownership by way of submission of documentary evidence of assignment.”

— 37 C.F.R. § 3.73(b) — 1 case

— 37 C.F.R. § 3.73(c) — 1 case

Tristar Prods. Inc v. Telebrands Corp. (N.D. Fla. 2025). “11 Anyone, not just the patent owner, may 10 Snow is specifically alleged to have represented to the Patent Office, under 37 C.F.R. 3.73(c), that Telebrands was “[t]he assignee of the entire right, title, and interest” in each of the ex parte reexamination requests.”

Annotations are extracted automatically from the opinions in the Syfert caselaw corpus and ranked by authority, recency, and treatment. Dots show Syfertize treatment of the citing case itself.