file assignment epas

Ant-Like Persistence

USPTO pushes back the date to release “son of EPAS/ETAS”

(Update:  the migration has now been postponed for a third time, see blog article .)

On October 31, 2023, the USPTO announced that December 4, 2023 was the date upon which a new system called IPAS (Intellectual Property Assignment System) will replace EPAS (Electronic Patent Assignment System) and ETAS (Electronic Trademark Assignment System).  See screen shot at right.   But now the release date has been pushed back.  One wonders whether IPAS will disappoint its users, as will be discussed. 

The banner across the top of the EPAS (Electronic Patent Assignment System) has been quietly altered so that it now gives a new date of January 15, 2024 as the date that IPAS will replace … ETAS.  (Note that the banner does not say that IPAS will replace EPAS in addition to replacing ETAS.)  The new launch date of January 15, 2024 is six weeks later than the original launch date of December 4, 2023.

The USPTO has also posted a “News Brief” (USPTO link , archived at right) clarifying that indeed IPAS will not only replace ETAS but will also replace EPAS.

The USPTO’s plan to shut down EPAS and ETAS, succeeding those systems with IPAS, seems likely to be the explanation for a bug in Patent Center that was first reported on March 28, 2023 as CP128 :

When you are on the ack receipt page, you see an orange box at right that says:

The “file an assignment of ownership” link is temporarily broken.

(This link on the Patent Center ack receipt page had, by March of 2023, been “temporarily broken” for some six months.)

This orange box, which has been visible on the Patent Center ack receipt page for more than a year now, has recently been revised to say that the link is “temporarily unavailable” rather than “temporarily broken”, and now offers a link to EPAS.  This makes clear that whatever “File an Assignment of Ownership” means, it is not the same thing as EPAS.  It thus seems that the “File an Assignment of Ownership” system that had been alluded to in this orange box since September of 2022 is the newly named “Intellectual Property Assignment System”.

Users have been puzzled why this discussion of the “File an Assignment of Ownership” system has, for the past year, appeared in Patent Center only on the ack receipt page and not anywhere else in the Patent Center user interface.

The two things that the reader learns about this new IPAS system from the News Brief are that it will be “cohesive” and “modernized”.  While it is of course very helpful to learn that IPAS will be “cohesive” and “modernized”, conspicuously absent from the News Brief (and from any of USPTO’s earlier communications about IPAS) is any hint or suggestion of any of the following:

• any effort to ask users what features they are looking for in the IPAS system;
• any effort to ask users what, if anything, was wrong about EPAS or ETAS and that needed fixing;
• any commitment to ensuring that all of the functionalities of the EPAS/ETAS systems will be carried forward into the IPAS system;
• any indication that alpha or beta testing of IPAS by actual users ever took place;
• any indication of planning for a beta testing effort between now and launch day;
• any commitment that the legacy systems would remain in operation for some amount of time after the launch of the IPAS system, to permit continued use of the legacy systems if against all odds there turns out to be some defect in the newly launched IPAS system;
• any presentation (for example with screen shots or mock-ups) that shows what the IPAS is going to look like.

Meaningful preview.  One of the most glaring failures in EFS-Web, from its launch in 2002 to the present, is the “preview” function that supposedly allows the user to preview an uploaded PDF document to see what it will look like after the user clicks “submit”.   In EFS-Web, the promised “preview” is nothing of the sort — instead, if one clicks “preview”, the EFS-Web system merely hands back to the user the exact same PDF file that the user had uploaded moments earlier.  This tells the user nothing more than what the user could have learned simply clicking on the PDF file on the user’s own computer drive prior to doing the upload.

In EFS-Web, any uploaded PDF risks being “halftoned”, and if it gets halftoned, it may end up being fuzzy or illegible.  But the so-called “preview” in EFS-Web does not actually preview the halftoned document.

WIPO launched its ePCT system in 2013.  From its first day in service, the ePCT system offered a true “preview”.  The user could click “preview” and what would appear on the screen is a faithful preview of what would actually go into the system if the user were to click “submit”.  This permitted the user to consider whether the halftoning, if any, would harm the legibility of the document to an unacceptable extent.  The user could, if necessary, back off from the submission and could work with the source document to remedy the problem.  (Oppedahl Patent Law Firm LLC was the first entity, anywhere in the world, to e-file a PCT application in the then-new ePCT system.  Blog article. )

The designer of EPAS/ETAS got it right with its preview.  If a user uploads a document to be recorded, EPAS/ETAS offers a true preview, showing what the uploaded document really would look like (with halftoning, if any) if the user were to click “submit”.

When the USPTO announced the alpha testing in 2018 of its then-new Patent Center system, users begged the USPTO to follow the example of EPAS and ETAS and ePCT, and to avoid the defect in EFS-Web, in providing its “preview” function.  One of many disappointments with Patent Center is that when Patent Center was first revealed to its alpha testers, its “preview” was exactly as defective as the “preview” in the previous EFS-Web system.  Even now, after five years of further beta testing of Patent Center, the “preview” continues to be defective, merely handing back to the user the exact same PDF file that the user had uploaded moments earlier.

This raises the question of whether IPAS will have a defective “preview”, following in the footsteps of EFS-Web and Patent Center, or whether it will have a true preview, taking the examples of EPAS and ETAS and ePCT.

PCT application numbers.  As mentioned above, the USPTO has not asked the patent filing community anything about what the patent filing community might want in this new IPAS system, and has not asked the patent filing community anything about what, if, anything, is wanting about EPAS or ETAS and might need fixing in IPAS.

One of the defects in EPAS is that it fails to accept properly formatted PCT application numbers.  Instead, the user is only able to proceed by typing in a portion of the PCT application number.  For example if the PCT application number is PCT/US2022/012345, the user is not permitted to actually type in this PCT application number in EPAS.  Instead the user needs to somehow already know that what the user must type in is “US2212345”.  This secret alternative format is not indicated by any example on the screen where the “portion” might be explained.  One can learn of the needed format only by clicking on a link that brings up a ten-page document, on the seventh page of which is the answer to this question.

One hopes that in IPAS, the user will be permitted to type in the actual correctly formatted PCT application number such as PCT/US2022/012345.

Hague Agreement application numbers.  The same would be the case for a Hague Agreement application number.  The user ought to be able to type in the actual correctly formatted Hague Agreement application number such as DM/123456.

Next steps for the USPTO.  This brings us back around to the slippage of six weeks, unexplained by the USPTO, in the planned launch date of the new IPAS system, namely from December 4, 2023 to January 15, 2024.  One hopes that this newfound extra six weeks in the rollout process will permit the USPTO to do the right things:

• get in touch with actual users to provide a beta testing opportunity;
• get in touch with actual users to find out if there are things wrong with EPAS/ETAS that need fixing in IPAS;
• get in touch with actual users to find out what actual users would like to see in IPAS.

There is no doubt that the members of the Patent Center listserv   and the members of the e-Trademarks listserv  would be willing, and indeed eager, to assist the USPTO with these three things.

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4 replies to “uspto pushes back the date to release “son of epas/etas””.

So the PTO isn’t admitting that it’s delayed IPAS, much less giving a reason for doing so. “Oceania had always been at war with Eastasia.”

I can’t stand the liars at the USPTO, and my dislike for them grows more and more every day.

Every week I get emails about new programs run by the PTO that have nothing to do with patents.

How about just doing your job, and when it comes to software development, working with those of us use the software to make sure you get it right? And understanding that that’s an iterative process?

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29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

• Intellectual Property
• Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”). 

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent. 

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But  under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP,  implement strong hiring policies  that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an  employment agreement  that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

• Advance assignment of any IP created while employed by your company, or using your company’s resources
• An obligation to disclose any IP created while employed by your company, or using your company’s resources
• An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
• An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing  invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include  incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

• Independent contractors:  Some inventors may be self-employed, or they may be employed by one of your service providers.
• Joint collaborators:  Some inventors may be employed by, say, a subsidiary or service company instead of your company.
• Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should  also  get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

• The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
• Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you  can  execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

• Be in writing:  Oral agreements to assign patent rights are typically not enforceable in the United States
• Clearly identify all parties:  Include the names, addresses, and relationship of the assignor(s) and assignee
• Clearly identify the patent being assigned:  State the patent or patent application number, title, inventors, and filing date
• Be signed by the assignors
• Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases. 

So the patent owner (the Assignee) should should record the assignment through the  USPTO’s Assignment Recordation Branch . They can use the  Electronic Patent Assignment System (EPAS)  to file a  Recordation Cover Sheet  along with a copy of the actual patent assignment agreement.

They should submit this paperwork  within three months  of the assignment’s date. If it’s recorded electronically, the USPTO  won’t charge a recordation fee .

Need to check who owns a patent?  The USPTO website  publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a  continuation-in-part , or in a non-provisional application that adds new matter to a  provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an   employee agreement ,  company policy ,  invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation. 

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An  experienced patent professional  can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments —  contact us now  to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

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Mozilla Foundation Security Advisory 2024-18

Security vulnerabilities fixed in firefox 125.

• Firefox 125

# CVE-2024-3852: GetBoundName in the JIT returned the wrong object

Description.

GetBoundName could return the wrong version of an object when JIT optimizations were applied.

• Bug 1883542

# CVE-2024-3853: Use-after-free if garbage collection runs during realm initialization

A use-after-free could result if a JavaScript realm was in the process of being initialized when a garbage collection started.

• Bug 1884427

# CVE-2024-3854: Out-of-bounds-read after mis-optimized switch statement

In some code patterns the JIT incorrectly optimized switch statements and generated code with out-of-bounds-reads.

• Bug 1884552

# CVE-2024-3855: Incorrect JIT optimization of MSubstr leads to out-of-bounds reads

In certain cases the JIT incorrectly optimized MSubstr operations, which led to out-of-bounds reads.

• Bug 1885828

# CVE-2024-3856: Use-after-free in WASM garbage collection

A use-after-free could occur during WASM execution if garbage collection ran during the creation of an array.

• Bug 1885829

# CVE-2024-3857: Incorrect JITting of arguments led to use-after-free during garbage collection

The JIT created incorrect code for arguments in certain cases. This led to potential use-after-free crashes during garbage collection.

• Bug 1886683

# CVE-2024-3858: Corrupt pointer dereference in js::CheckTracedThing<js::Shape>

It was possible to mutate a JavaScript object so that the JIT could crash while tracing it.

• Bug 1888892

# CVE-2024-3859: Integer-overflow led to out-of-bounds-read in the OpenType sanitizer

On 32-bit versions there were integer-overflows that led to an out-of-bounds-read that potentially could be triggered by a malformed OpenType font.

• Bug 1874489

# CVE-2024-3860: Crash when tracing empty shape lists

An out-of-memory condition during object initialization could result in an empty shape list. If the JIT subsequently traced the object it would crash.

• Bug 1881417

# CVE-2024-3861: Potential use-after-free due to AlignedBuffer self-move

If an AlignedBuffer were assigned to itself, the subsequent self-move could result in an incorrect reference count and later use-after-free.

• Bug 1883158

# CVE-2024-3862: Potential use of uninitialized memory in MarkStack assignment operator on self-assignment

The MarkStack assignment operator, part of the JavaScript engine, could access uninitialized memory if it were used in a self-assignment.

• Bug 1884457

# CVE-2024-3863: Download Protections were bypassed by .xrm-ms files on Windows

The executable file warning was not presented when downloading .xrm-ms files. Note: This issue only affected Windows operating systems. Other operating systems are unaffected.

• Bug 1885855

# CVE-2024-3302: Denial of Service using HTTP/2 CONTINUATION frames

There was no limit to the number of HTTP/2 CONTINUATION frames that would be processed. A server could abuse this to create an Out of Memory condition in the browser.

• Bug 1881183
• VU#421644 - HTTP/2 CONTINUATION frames can be utilized for DoS attacks

# CVE-2024-3864: Memory safety bug fixed in Firefox 125, Firefox ESR 115.10, and Thunderbird 115.10

Memory safety bug present in Firefox 124, Firefox ESR 115.9, and Thunderbird 115.9. This bug showed evidence of memory corruption and we presume that with enough effort this could have been exploited to run arbitrary code.

• Memory safety bug fixed in Firefox 125, Firefox ESR 115.10, and Thunderbird 115.10

# CVE-2024-3865: Memory safety bugs fixed in Firefox 125

Memory safety bugs present in Firefox 124. Some of these bugs showed evidence of memory corruption and we presume that with enough effort some of these could have been exploited to run arbitrary code.

• Memory safety bugs fixed in Firefox 125