At the beginning of the year, the United States Patent and Trademark Office (USPTO) dropped the filing fee for recording patent assignments online. As a result, in 2014 there has been an increase in the number of patent assignments filed online. There have also been a number of significant changes to both the Patent and Trademark Assignment websites.
Differences between Paper and Online Filings
Patent assignment filings can be filed online using the Electronic Patent Assignment System (EPAS). Trademark assignments are filed using the Electronic Trademark Assignment System (ETAS). The process for filing assignments online involves entering information about the underlying assignment on several screens (mostly information that is contained on the paper cover sheet used for over-the-counter filings, but with some important differences), then uploading an electronic version of the document.
When filing either type of assignment online at the USPTO, the first screen you encounter involves the Conveyance Type, where you select the nature of the conveyance of the assignment. If you are used to filing by hand and using the paper Recordation Form Cover Sheet, you will notice right away that there are many more conveyance options online.
For patents, the paper form offers seven choices for the type of conveyance (Assignment, Security Agreement, Joint Research Agreement, Government Interest Assignment, Executive Order 9424 Confirmatory License, Merger and Change of Name) and “Other,” where you can fill in the blank with a conveyance type not listed. Online, EPAS offers twenty conveyance types, in addition to “Other.”
For Trademarks, the difference is even more stark: the paper form includes only five conveyance types (Assignment, Merger, Security Agreement, Change of Name, and Other), and online, ETAS offers twenty-one options.
If you are filing assignments online at the USPTO, you should use the available options for Nature of Conveyance whenever possible, because selecting “Other” may result in the USPTO’s Current Owner database not being updated. To this point, a note next to the “Other” option on the ETAS website reads:
“If the nature of conveyance is an ‘Assignment,’ ‘Merger,’ ‘Change of Name,’ or ‘Nunc Pro Tunc,’ do not use this box. Please check the appropriate conveyance box above. Entering your conveyance as ‘Other’ will prevent the automatic update of your ownership information in our trademark database.”
There is also a disagreement between the paper forms and the online options regarding security agreements. The paper forms for both Patents and Trademarks offer the option of “Security Agreement” as a conveyance type. Online, the option is “Security Interest,” which can cause confusion for filers. Up until earlier this year, EPAS offered the option of “Security Agreement,” but this was replaced by “Security Interest.”
Also new this year, both EPAS and ETAS began including new text at the bottom of the Conveyance Type screen that allows filers to identify multiple assignments with the same execution date. The text reads:
“Are there any properties in your filing today that are the subject of multiple assignments with the same execution date that you will be filing today or that you have already filed? If yes, in the sequence of transfers for that property, what number is this transaction i.e. first (1); second (2); third (3), etc.? (please just identify the numerical order in which this assignment should appear).”
This sequencing allows filers to prioritize multiple assignments and could be very useful when working with complex transactions.
As more and more intellectual property assignments are recorded online, it is critical to be aware of the differences between filing online versus over-the-counter, especially since the USPTO continues to change its online interface. One should also realize that the USPTO does not read, examine or verify the assignments filed with them or conduct a title search prior to recordation. The USPTO considers its role to be a “ministerial function” without any legal determination and recordation is simply the act of placing the relevant information submitted by the filer in the public record.This article is provided for informational purposes only and should not be considered, or relied upon, as legal advice.
