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The Top Five Errors on Patent and Trademark Filing Cover Sheets

By: Dwayne C. Houston, COGENCY GLOBAL INC. on Mon, Apr 27, 2015
Patent assignment filing and trademark assignment filing When working with a service company, the careful preparation of Patent and Trademark Office (PTO) cover sheets is important because it provides the service company with the information they need to quickly and accurately update the ETAS (Electronic Trademark Assignment System) and EPAS (Electronic Patent Assignment System) online filing systems. Many filings are completed without issues while other patent and trademark assignment filings require additional information. Often, more information is needed because the cover sheet is incomplete or the information on the cover sheet does not reflect what appears in the agreement. The five most common errors on cover sheets for patent and trademark assignment filings are listed below, along with tips for how to avoid each issue. Preventing these common errors and oversights will result in more timely and accurate recordation of your patent and/or trademark assignment filings when working with a service company.  

 

5. Additional names of conveying/receiving party(ies) are not indicated by checked box or the parties are not listed.
Some filings have additional names for the conveying or receiving parties and the filer does not indicate additional parties by checking the corresponding box or by writing the party names in the space for party names. If the filer does not review the agreement, this can easily be missed. If the box is checked, it alerts the filer to look in the agreement for additional party names.

 

4. Nature of Conveyance section is incomplete.
Some assignment filings have long titles that do not fit within the “other” field provided in the Nature of Conveyance section (Section 3). For example, “Notice and Confirmation of Grant of Security Interest in Patents (Second Lien).” This is a commonly used long title and will not fit in the “other” field provided on the form yet needs to be on the cover sheet. When working with a service company, make sure that the full title appears somewhere on the cover sheet or on an attached addendum. This will ensure that an incomplete title is not entered and will prevent unnecessary delays.

 

3. Erroneously omitting the type of conveying or receiving party(ies) in Sections 1 and 2.
Occasionally, the box is left unchecked for the type (i.e. individual, corporation, etc..) of conveying or receiving party in Sections 1 and/or 2. If this happens, the online system will prompt you to select a type. It is not an option to bypass this field. Choose one from the list or manually enter one that is not provided if “other” is selected. An example of a common entity that would be entered under the “other” option is “Bank”.

 

2. Omitting the Citizenship information in the Conveying and Receiving Parties sections (Sections 1 and 2) of the Trademark Cover Sheet.
Like number three above, another common error on the Trademark cover sheet is when the party type box is checked in Sections 1 and 2 but the Citizenship information is not entered. The system will prompt you from a drop down menu to choose a state or a country. If it is not already on the cover sheet, consult the agreement and you may find what you need. For example, in the agreement, you may find “XYZ Company, a Delaware Limited Liability Company.” In this example, Delaware is the state of citizenship for this this company. To avoid an error, make the selection on the cover sheet.

 

And the Number 1 Challenge with PTO cover sheets is… Missing cover sheet!
When working with a service provider, the PTO cover sheet provides all of the key information needed to file the assignment efficiently and accurately online through the ETAS and EPAS systems. Without a cover sheet, your filing may be delayed. To ensure that your trademark or patent assignment filing is filed correctly, quickly and without delay, make sure to take your time and carefully complete all of the required information on the cover sheet.

 

This article is provided for informational purposes only and should not be considered, or relied upon, as legal advice.

Topics: Intellectual Property Due Diligence