Attachment 26 - DCB 2019-01 (3).docx

D a t a C a p t u r e B u l l e t i n

Number 2019-4 March 19, 2019

PTAB CERTIFICATES: REVISED INSTRUCTIONS FOR ASSIGNEE NAME

The information in this bulletin will be included in the 2020 revisions of

DATA ENTRY MANUAL FOR NON-UTILITY PATENT DOCUMENTS,

OTHER THAN PATENT APPLICATION PUBLICATIONS.

***This bulletin is effective immediately.***

In DATA ENTRY MANUAL FOR NON-UTILITY PATENT DOCUMENTS, OTHER THAN PATENT APPLICATION PUBLICATIONS, see Section XIX. PATENT TRIAL AND

APPEAL BOARD CERTIFICATES,

Front-Page Bibliographic Data, Assignee Name, When assignee name was not changed by trial.

The bulleted sub-section beginning “The Abstract of Title when it is present” (down to, but not including, the paragraph beginning “NOTE: Only one data source”) is superseded by what is shown next.

· The Abstract of Title when it is present as an attachment in the TRIAL.CERT documents:

The assignee name(s) to be printed on the certificate will be the Assignee or Assignees in the most recently dated assignment in which the Conveyance is ASSIGNMENT OF ASSIGNORS INTEREST, ASSIGNMENT OF AN UNDIVIDED FRACTIONAL INTEREST, or CHANGE OF NAME.

In assignments with other conveyance types—like SECURITY AGREEMENT, SECURITY INTEREST, CHANGE OF ADDRESS, CHANGE OF ADDRESS OF THE ASSIGNEE, CORRECTIVE ASSIGNMENT TO CORRECT THE APPLICATION NUMBER, CONFIRMATORY LICENSE, and RELEASE BY SECURED PARTY—the Assignee or Assignees names will not be printed on the certificate.

EXCEPTIONS: In some circumstances—see Example 3 and Example 4 below—the corporate Assignor name will be printed as the assignee on the certificate. In some circumstances—see Example 2 and Example 4 below—more than one assignee name will be printed.

QUERY: If the PaDaCap contractor has problems about identifying the assignee name to be printed, the contractor should direct an e-mail query to ODM (as of this writing, Charles.Hall@uspto.gov), who will forward the question to the Board.

In a given numbered assignment, there are one or more Assignors, and for each Assignor an Exec Dt (execution date) will be shown:

If there are multiple Assignors, the same Exec Dt may be shown for all:

or each Assignor may show a different Exec Dt:

The most recently dated assignment is the assignment with the most recent execution date (if there is one Assignor) or the most recent group of execution dates (if there are multiple Assignors).

Example 1

The Abstract of Title shows one assignment record:

The assignee name to be printed on the certificate is THINK COMPUTER CORPORATION.

Example 2

The Abstract of Title shows four assignment records:

Inventor Grillo-Lopez assigned to IDEC PHARMACEUTICALS CORPORATION, which changed its name to BIOGEN IDEC INC., and then to BIOGEN INC. Inventors Curd and Kunkel assigned to GENENTECH, INC. The assignee names to be printed on the certificate are BIOGEN INC. and GENENTECH, INC.

Example 3

The Abstract of Title shows two assignment records:

The assignee name to be printed on the certificate is AUDATEX NORTH AMERICA, INC., the corporate owner of the patent who has not assigned the patent to anyone else.

Example 4

The Abstract of Title shows three assignment records:

PAICE LLC has assigned a fractional interest to THE ABELL FOUNDATION, INC. Both names will be printed as assignees on the certificate.

Example 5

The Abstract of Title shows two assignment records:

The assignee name to be printed on the certificate is THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS.

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