S+B - May 04, 2018

The difference between theoretically and practically: Correcting Assignment Coversheets at the USPTO

Mistakes happen. Either on the USPTO’s side or the practitioner’s side, the quest for perfection is an asymptote: mistakes can only be minimized but never entirely reduced to zero.

This is why the USPTO rules and guidelines provide procedures to correct mistakes, in particular typos and other mistakes of clerical nature at various stages of the prosecution (see, for examples, 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).

These procedures typically work well unless one has to deal with correction of assignment cover pages. In those situations, a user is faced with an apparent disconnect between how the MPEP instructs that the USPTO handle requests for a correction to an assignment coversheet and how the USPTO Assignment Branch actually handles those requests.

In theory (i.e., MPEP 323.01(a); 37 CFR 3.34), the requirements for correcting a cover sheet are to provide a) a copy of the originally recorded assignment document, b) a corrected cover sheet, and c) the payment of a fee. Also the request can be filed by mail (see MPEP 302.08) or fax (see MPEP 302.09). If you want to file the correction electronically with EPAS, the MPEP instructs to check the box marked “other” under “nature of conveyance” and fill in reel/frame and the nature of the correction. Simple, right?

Not quite.

In practice, requests for correction of Notices of Recordation of Assignment (NORA) by mail and fax and request filed by EPAS checking the box marked “other” in accordance with the MPEP procedure can be inexplicably rejected by the USPTO Assignment Branch.

It appears from exchanges with the USPTO Assignment Branch Examiners that the main reason is the presence of a de facto EPAS-centered procedure at the USPTO Assignment Branch and an EPAS configuration that makes the option indicated by the MPEP impractical.

In particular, it appears that the only practical way to perform the correction of a NORA incorrect due to information of the cover page, is to file the related request as a request for a “corrective assignment”, which is a different option than “other” and refers to a completely different situation (an error in the recorded assignment, see MPEP 323).

This is inexplicable because EPAS is a system that is specifically tailored for Assignment Branch requests, and yet EPAS cannot handle a type of request that is so common that the request has its own MPEP section.

There should be no difficulty in having a separate button under “nature of conveyance” labeled “Correction to Cover Sheet” with text fields for the required information, just like the “Corrective Assignment” button.

This would aid the public in having an evident-on-its-face selection for addressing that specific request and it would aid the Assignment Branch in removing the ambiguity in the rules regarding how they should process such requests.

Regardless, USPTO Assignment Branch’s practice should allow Applicants to file requests by mail and/or fax as these routes are specifically indicated in the MPEP.

If that turned out to be impractical, a modification of the USPTO guidance, rules (MPEP and CFR) and/or practice so that they align and clearly address different situations (such as a correction of a cover page and a correction of an assignment) would also help users and Examiners.

Meanwhile, it seems that the best way to handle these corrections is to communicate with the USPTO Assignment Branch to ensure streamlining of a procedure that should only be a minor bump on the road.

We surely hope to soon see an improved EPAS system for a speedy processing of recordation requests in line with the USPTO rules.