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We filed a patent application on Aug 27 2022 with Track One, Sep 07 2022 our agent filed an assignment form that transferred the rights from person to legal entity (I don`t know why he didn't claim legal entity as an applicant from the beginning) and we have USPTO NOTICE OF RECORDATION OF ASSIGNMENT DOCUMENT. In March we received the application publication document where no legal entity is mentioned. Can we correct it at this stage? Thanks for any help.

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  • Either the assignment didn’t happen or the publication section made a mistake. Do you want to be sure it is assigned or is there a reason you would like the application republished?
    – George White
    Apr 9, 2023 at 23:45
  • Thanks for your reply, George! I want to correct the mistake and get the right publication Apr 10, 2023 at 6:19

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Of course you could ask your agent, probably the best move, or you could post the publication number and someone on Ask Patents might look at the history of the application.

I understand you would like the published information to be correct but know that there is no legal consequence to the indication of assignee on the face of a published patent document. Patents can be bought and sold after they are granted and the face of the published patent document doesn’t change. No one can rely on that to know the assignee/owner at any point in time.

The recordation department can be notified of assignee changes and that information will be more current than the original publication. In fact their information may also be outdated since there is presently no requirement to officially record all ownership changes.

Look into the record

Since the application is published all of the communications between the applicant and the office are publicly available. You can look up the case at the PatentCenter and under the IFW tab and see, in reverse chronological order, all written communications between the applicant/agent and the examiner.

There is also an Assignment tab that should show the assignment. Besides recording with the recordation office (will not be in the file wrapper) the agent needed to file a document under 37 CFR 1.46 establishing the right for the assign to take action in the case. Missing that doesn’t change the facts of the recordation but might affect the publication department.

Applications can sometimes be republished for a fee to make corrections but this change has no legal effect and very little practical effect.

The important thing is to be sure the assignment is valid and correctly recorded with the recordation department. By the way, as a retired agent I can tell you that registered practitioners who are agents do not have authorization or qualifications to draft assignments. We can record them with the USPTO.

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  • Thanks for the response, George! Sure, our application number is 17/897,263 patentcenter.uspto.gov/applications/17897263/…. As I see, the recordation of the assignment was done on 09/07/2022, and our agent proposes to ask USPTO to republication for 450 USD official fees, but if there are just office mistakes, I think it isn`t the best move. Apr 18, 2023 at 12:37

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