patent assignment correction

Corrective Assignment: Everything You Need to Know

A corrective assignment is a way to rectify an error in a recorded document. 3 min read updated on February 01, 2023

A corrective assignment is a way to rectify an error in a recorded document. The Assignment Division will make the changes if an acceptable corrective document is turned in. Policies related to the recording of assignment documents are designed to maintain the history of any claimed interests in property.

For that reason, recorded assignment documents are not expunged, even if they are later determined to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm'r Pat. 1992) for more information. Once a document is recorded, the Assignment Services Division will not remove information from the record. See MPEP § 323.01(d) for specifics.

What Are the Components of a Corrective Assignment?

• The corrective document needs to include a copy of the original assignment paperwork with the requested changes noted.
• The party who wishes to convey the interest needs to initial the corrections and date them.
• A Recordation Form Cover Sheet (form PTO-1595) must accompany the corrective document. Refer to MPEP § 302.07 for more information. The new cover sheet should be clearly marked as a corrective document submission and refer to the reel and frame number of the recorded document that needs correcting.
• When the corrective document is recorded, it gets a new reel and frame number along with the date of recording.
• The original cover sheet should be included in the packet.
• The fee for this service is listed in 37 CFR 1.21(h). This recording fee must be paid for each application and each patent being corrected. Refer to MPEP § 302.06 for more information.
• You can make corrections to the original by marking out an application or patent number if you are completing a name change or merger. See MPEP § 314 for more information.

Correcting Assignment Cover Sheets at the United States Patent and Trademark Office

Sometimes the United States Patent and Trademark Office (USPTO) makes mistakes. Practitioners also make errors occasionally. While both sides strive for perfection, in reality, mistakes will happen. The USPTO recognizes this and provides processes and policies to fix issues like typographical errors and other clerical errors at different points in the process.

For some examples, refer to 37 CFR 1.76(c) Correction of ADS, PCT Rule 91.1 Rectification of Obvious Mistakes, 37 CFR 1.121(b) Amendments to Specification, 37 CFR 1.323 Certificate of Correction of Applicant's Mistake, and 37 CFR 3.34 Correction of Cover Sheet Errors.

Usually, these processes are sufficient. However, if a correction needs to be made on an assignment cover page, the MPEP instructions on how the USPTO should handle them appear to conflict with the way the Assignment Branch processes them. The MPEP 323.01(a); 37 CFR 3.34 lists the requirements to correct a cover sheet as:

• A copy of the original recorded document.
• A cover sheet that reflects the corrections.
• Payment for the fees.

You can file such a request by mail as described in MPEP 302.08 or by fax as described in MPEP 302.09. To use EPAS to file electronically, the MPEP instructions say to mark the box labeled "Other" under "Nature of Conveyance" and then fill in the reel and frame information and describe the correction.

Though this seems simple enough, what actually happens in practice is quite different. The USPTO Assignment Branch sometime rejects requests to correct Notices of Recordation of Assignment (NORA) without explanation. This happens whether the request was submitted via mail, fax, or electronically.

One possible explanation is an EPAS-centered process that makes the MPEP process impractical. The only way to fix a NORA cover page is by filing an application for a corrective assignment. This is different than choosing "Other."

This happens even though the EPAS is made just for requests such as this. Despite that, it cannot process a task so routine that it has a dedicated section in the MPEP. A simple solution would be a separate selection under "Nature of Conveyance" labeled "Correction to Cover Sheet." A text box could hold the necessary information.

This could help users see the option immediately and remove any vagueness in the rules or the processing of the requests. Also, the Assignment Branch should allow requests via mail and fax since these are specifically offered in the MPEP.

If you need help with a corrective assignment, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Content Approved by UpCounsel

• MPEP Intended Uses
• Trademark Assignment Recordation
• USPTO Trademark Assignment: Everything You Need To Know
• Patent Assignment
• Assignment Law
• Assignment Legal Definition
• Legal Assignment
• Patent Assignment Database
• Assignment Of Contracts
• What is an Assignment and Assumption Agreement

How Can I Correct An Assignment?

• Post author By Austen Zuege

Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document .

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b) ) and the U.S. Copyright Office (in Compendium 2308.1 ) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

• Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
• Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
• Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive ( nunc pro tunc ) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed ( nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

• Tags Assignments , Copyrights , Patent Prosecution , Trademark Prosecution

MPEP Q & A 117: Items a ‘Corrective Document’ Must Include?

• November 21, 2017
• MPEP Q and A Podcast

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An error in a recorded assignment document will be corrected by the Assignment Division provided a “corrective document” is submitted. What items must the “corrective document” include?

The “corrective document” must include the following items:

• A copy of the original assignment document with the corrections made therein. The corrections must be initialed and dated by the party conveying the interest; and
• A new Recordation Form Cover Sheet

Chapter Details:

The answer to this question can be found in chapter 300 of the MPEP. This chapter covers Ownership and Assignment.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 323 of the MPEP.  The following is a brief summary of section 323.

323    Procedures for Correcting Errors in Recorded Assignment Document This section covers the procedures for the correction of errors in a recorded assignment. In order to correct errors in a recorded assignment, a correction document must be submitted. The requirements of this correction document are outlined in this section including correcting errors in recorded cover sheets, typographical errors in both the cover sheet and the document itself, changes to names of the recorded party, and expungement of assignment records.

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TMEP 503.06: Correction of Errors in Cover Sheet or Recorded Document

October 2017 Edition of the TMEP

TMEP Chapter Index Chapter 500: Change of Ownership 503 : Recording with Assignment Recordation Branch

Previous: §503.05 | Next: §503.06(a)

503.06    Correction of Errors in Cover Sheet or Recorded Document

37 c.f.r. §3.34  correction of cover sheet errors..

• (a) An error in a cover sheet recorded pursuant to §3.11 will be corrected only if:
• (1) The error is apparent when the cover sheet is compared with the recorded document to which it pertains, and
• (2) A corrected cover sheet is filed for recordation.
• (b) The corrected cover sheet must be accompanied by a copy of the document originally submitted for recording and by the recording fee as set forth in §3.41.

Once a document is recorded with the Assignment Recordation Branch, the Assignment Recordation Branch will not remove the document from the record relating to that application or registration. See TMEP §503.06(e) .

During the recording process, the Assignment Recordation Branch will check to see that a trademark cover sheet is complete and record the data exactly as it appears on the cover sheet.  Once the document is recorded, the USPTO will issue a notice of recordation.

The party recording the document should carefully review the notice of recordation.

Typographical errors made by the USPTO will be corrected promptly and without charge upon written request directed to the Assignment Recordation Branch.  For any other error, the party recording the document is responsible for filing the documents and paying the recordation fees necessary to correct the error, using the procedures set forth in TMEP §§503.06(a) through 503.06(d) .

In an application under §66(a) of the Trademark Act or a registered extension of protection, any request to correct an error in a document recorded with the IB must be corrected at the IB.  Such a request cannot be sent to the IB through the USPTO.  See TMEP §§1906.01-1906.01(i) for information about requests to record changes in the International Register.

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Registration of assignments and correction of assignment-related information.

From: Canadian Intellectual Property Office

This practice notice is intended to provide guidance on current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/right holder to decide how to proceed with respect to a particular application or other matter.

Registration

Assignments are often complex and diverse, frequently addressing matters reaching beyond IP rights. The complexity of these documents may necessitate a significant effort from the Patent Office in order to ensure that the documented changes in title are accurately reflected in Office records.

Therefore, in order to assist the Office in its effort to simplify and expedite the processing of assignments while maintaining a high quality standard, the Office has developed new forms for requesting the registration of assignments and strongly recommends their use.

The forms will be part of the record and will help ensure that all the required information has been submitted to the Office. The Office will use the content of the forms to assist with the registration of the assignment.

Please note that the assignments submitted will continue to be made available to the public. Parts of these documents may display personal information that is not relevant to the assignment being registered and the Office will accept that requesters omit or obscure any such information.

In the case where the forms are not used, the Office urges any requester to submit clear instructions. More specifically, in addition to the prescribed fee a request should include the following information, ideally on a cover sheet:

• the name of the assignor(s);
• the name and complete address of the assignee(s);
• the application or patent number against which the assignment is to be registered;
• specific information identifying which rights are being assigned and whether the interest in a right is being transferred in whole or in part.

A copy of the document effecting the transfer and either an affidavit or another proof satisfactory to the Commissioner that the assignment has been signed and executed must be submitted as per sections 49 and 50 of the Patent Act . The following proofs are all considered to be satisfactory:

• with respect to a patent, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by all parties;
• with respect to a patent application, a statement from the requester stating that, to their knowledge, the document effecting the transfer has been signed and executed by the assignor;
• a similar statement of a witness;
• the signature of a witness or the presence of a corporate seal on the assignment document;
• a document showing that the assignment was registered in a patent office of another country.

Occasionally, an error is present in an assignment (in the document effecting the change in ownership) and/or an error is made in the entry of information in the Patent Office's records.

It is important to note that despite the fact that, as discussed below, many errors can be corrected; all documents that are registered by the Office will remain on record subject to a court order to the contrary.

Error introduced by the Office

Where the registered document provides the correct information but an error is introduced in the process of extracting the information from the document and reflecting it in Office records, the Office will correct the error upon receipt of a request from any person providing details about the error and referring to the registered document containing the accurate information. No fee will be required for the correction.

Error in an assignment document

In accordance with sections 49 and 50 of the Patent Act , the Office will proceed with the registration of an assignment provided that the request for registration complies with all procedural requirements. The Office takes the position, however, that an assignment may be registered without necessarily being recognized or, in other words, without being given effect. The Office will consequently not give effect to an assignment where it is satisfied that the assignment is invalid or where the assignor identified in the assignment does not correspond to the owner currently recognized by the Office.

Therefore, where a wrong document has been registered or where a registered document contains a mistake, Office records may be updated to reflect the correct situation following the receipt of:

• a request for the registration of a newly submitted correct assignment, which complies with all formal requirements for the registration of an assignment; and

To be considered acceptable, a request under b) must meet the following requirements:

• originate from one of the parties identified in the correct assignment; and
• contain a statement signed by the requester to the effect that the previously registered assignment contains a mistake and containing information describing the mistake.
• originate from one of the parties identified in the correct assignment;
• the assignee was incorrectly identified in the previously registered assignment;
• the error in the incorrect assignment was due to inadvertence or mistake without any intention to mislead; and
• the incorrectly identified assignee does not exist; or
• the incorrectly identified assignee is the same entity as the assignee identified in the correct assignment
• contain a statement signed by the mistakenly identified assignee to the effect that their name appeared in error on the incorrect assignment; and
• contain a statement signed by the assignee identified in the correct assignment to the effect that the error in the incorrect assignment was due to inadvertence or mistake without any intention to mislead

This mechanism cannot be used after the grant of a patent to correct errors that were introduced during the application stage.

Clerical errors

Certain errors in assignment documents may qualify as clerical errors that arose in the mechanical process of typewriting or transcribing.

These errors may be corrected under section 8 of the Patent Act rather than via the mechanism set out above. A request for a correction under section 8 of the Patent Act should be accompanied by the required supporting information and the prescribed fee.

The applicant must determine which correction mechanism applies to their particular situation and submit their request accordingly.

If a request for correction under section 8 of the Patent Act has already been submitted but is not the appropriate mechanism, a new request will be necessary and will have to refer explicitly to the appropriate mechanism.

Jurisdiction of the Federal Court

In order to obtain a change that will further alter the content of Office records, such as the removal of a previously registered document, a requester may need to seek an order from the Federal Court.

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REMINDER: Submit interest forms by March 31 for PTAB Moot Court Competition

Published on: 03/27/2024 14:07 PM

If you’re a law student interested in working in the intellectual property field, take advantage of the unique opportunity to participate in the Patent Trial and Appeal Board's (PTAB) Moot Court Competition . You'll develop and practice the written and oral advocacy skills needed to succeed in America Invents Act proceedings at PTAB. Interest forms are due by March 31.

This free, fully virtual program is open to teams of students who will be enrolled in law school full-time or part-time during the 2024-2025 academic year. It will begin in October 2024 and continue through April 2025. 

Participants will:  

• Work closely with a PTAB Administrative Patent Judge (APJ) coach 
• Get practical tips and gain experience in how to best present a case before the PTAB 
• Participate in live mock oral arguments before a panel of APJs  

Interested students should ask a professor or school administrator to submit the required information for them. You can f ind more information, including eligibility and form submission requirements, on the program webpage .

For questions, please email [email protected] . 

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