To File or Not to File As An Applicant-Assignee: That Is the Question

One of the recent changes under the AIA allows for an assignee, an obligated assignee (e.g., a person with an assignment clause in their employment agreement), or a person who otherwise shows sufficient proprietary interest in the matter to file and prosecute a patent application as the “applicant.” This definitional change no longer makes the “applicant” synonymous with the inventor(s) and harmonizes the term more with international conventions. It also leads to the question:  are there any reasons to or not to file as the applicant-assignee? 

Here are some considerations when determining whether to file as the applicant-assignee: 

• When the assignee is the applicant, the assignee may grant the power of attorney without having to establish a right to take action. 
• Even though an assignee may file and prosecute the application, the inventor(s) must still execute an oath or declaration (except in limited circumstances). 
• For an assignee or obligated assignee, evidence of ownership (e.g., an assignment or an employment agreement) should be recorded no later than when the issue fee is paid. 
• If an assignment is not executed prior to filing (and there is no obligation to assign or proprietary interest in the matter), care should be taken if filing as the applicant-assignee and consideration should be given to filing in the names of the inventors. A party having less than the entire right, title, and interest may not on their own file the patent application.
• Juristic entities (e.g., organizational assignees) must be represented by a patent practitioner and can no longer act pro se. 
• In continuing applications (with a parent application having a filing date on or after September 16, 2012), a new power of attorney is not necessary. The assignee can file the power of attorney filed in the parent application, even if a new inventor is added as long as that inventor assigns or is under an obligation to assign to that same assignee and the assignment is recorded. 
• When you nationalize a PCT application in the United States, the applicant identified at the international stage will now be the applicant at the national stage. Thus, one can file at the international stage in the name of the inventors and once assignments have been signed, file a request for change at the international stage to the assignee. This allows for nationalizing in the United States as the applicant-assignee.