TAKEAWAY: Correcting a typographical error in a recorded assignment cover sheet is a straightforward process that requires only a few documents filed with the Assignment Recordation Branch of the USPTO. However, if the error affects title, the corrected recordation date may fall outside the statutory recording window, potentially exposing the assignee’s rights. Errors should therefore be identified and corrected as early as possible.
Under 35 U.S.C. § 261, patents have the attributes of personal property, and applications, patents, and any interest in them are assignable by a written instrument. An assignment, grant, or conveyance of these patent property interests is void against any subsequent purchaser or mortgagee for valuable consideration without notice unless it is recorded in the United States Patent and Trademark Office (USPTO) within three months from its date or before the subsequent purchase. To facilitate notice of patent interests, the USPTO maintains a register of interests in patents and applications, and records related documents upon request.
37 CFR § 3.11 provides the mechanism for publicly recording documents related to patent property interests. Particularly, assignments are to be accompanied by completed cover sheets pursuant to 37 CFR § 3.28 and § 3.31. Pursuant to MPEP § 301, recording assignments is merely a ministerial act and is not a determination of the validity of any assignments or ownership of patent property. In fact, the Assignment Recordation Branch does not compare information listed in an assignment and its related cover sheet, and only ensures the cover sheet is complete and simply records the data exactly as it appears.
In some cases, typographical errors may be introduced in the cover sheet, such as misspelled names or addresses for assignors and assignees. Thus, to ensure the public is properly on notice of the relevant ownership interests, it is best practice to confirm all relevant assignment records are correctly reflected on the USPTO register. Reviewing the notice of recordation as soon as it is received, while the three-month window under § 261 is still open, may be beneficial for this purpose. Typographical errors made by the Office, however, will be corrected promptly and without charge upon written request directed to the Assignment Recordation Branch. For a patent to issue to an assignee, the assignment must be recorded or filed for recordation.
37 CFR § 3.34 allows for correcting errors on the cover sheet, so long as such errors are apparent when comparing the recorded cover sheet with its related assignment document and a corrected cover sheet is filed for recordation, as detailed in MPEP § 323.01(a). The request should include (1) a copy of the originally recorded assignment, (2) a corrected cover sheet, and (3) the relevant fee under 37 CFR § 3.41 for each application or patent corrected. To help facilitate review a copy of the original cover sheet may be included for comparison. On the corrected cover sheet, the “Nature of Conveyance” may be identified as “Other” to state that the submission corrects a previously recorded cover sheet, with an identification of the reel / frame numbers (if known) and the nature of the correction. To help facilitate the Assignment Recordation Branch’s review and subsequent recordation, a marked-up copy of the originally recorded cover sheet may be included.
When the assignment document itself includes an inaccuracy (for example, the assignment lists the wrong application number), the party responsible for the erroneous document (e.g., the assignor) may either create and record a new document or make corrections to the original document for re-recording, pursuant to MPEP § 323.01(b).
The timing of a correction matters because of how it may affect the recordation date. If the error does not affect title, the original recordation date is maintained. A likely example of such an error may be a misspelled street address. If the error does affect title, the recordation date becomes the date the corrected cover sheet is received in the Office. A likely example of such an error may be an incorrect assignee name or application / patent number. If that date falls more than three months after the assignment, the assignee could lose priority to a subsequent purchaser or mortgagee for valuable consideration who acquired rights without notice in the interim.