Patent
Seed IP partner Karl Hefter has authored an article entitled, "Protecting Inventor and Corporate Privacy in Previously Recorded Assignment Documents," as published by IP Watchdog, Inc. in its newsletter on October 7, 2024. IPWatchdog is a trusted source on intellectual property law, covering news and commentary on patents, innovation policy, trade secrets, copyrights and trademarks.
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Assignment documents recorded with the U.S. Patent and Trademark Office (USPTO) are available to the public. But recording an assignment document that contains personal or company sensitive information cannot be expunged, although there are procedures to limit the public’s ability to access to those documents.
Company employees invent every day. Longstanding U.S. law has been that inventions vest in the name of the inventor, i.e., the employee. As a result, companies are continuously trying to ensure that inventions made by their employees are assigned to the company. When joining a company, employees are often asked to sign an employment agreement. These agreements vary in length and scope, but generally include a patent or intellectual property section that assigns or obligates the employee to assign rights in their inventions conceived in the course of employment to the company.
When an employee conceives of an invention and becomes an inventor, the company, or its outside counsel, will prepare and file a patent application for the invention. Before or after the patent application is filed, counsel will ask the inventor to sign an assignment of the inventor’s rights in the invention to the company in accordance with the employment agreement. Best practice is to have the employee sign the assignment while still employed–there is little incentive for the inventor to sign the assignment after the inventor leaves the company.
Once signed, it is common practice to record the assignment with the USPTO to provide notice of the company’s rights in the invention to subsequent purchasers or mortgagees. 35 U.S.C. § 261 (2022).
If the inventor fails or refuses to sign the assignment, it is common to record the inventor’s employment agreement with the USPTO as evidence of the assignment or obligation to assign. Unfortunately, not all counsel consider the information within these employment agreements prior to recording them with the USPTO. For example, the employment agreement may contain specific details of the employee’s responsibilities, corporate insurance policy information, and even trade secrets. Moreover, some employment agreements include personal contact information, emergency contact information, social security numbers, or other personally identifiable information. Such personal and company sensitive information should be redacted prior to recordation. Failure to properly redact sensitive information can expose both the company and the employee to privacy breaches and potential legal risks.
The bad news is that once an assignment document is recorded with the USPTO, there is no way to completely expunge that document from USPTO records. See e.g., United States Patent and Trademark Office, Manual of Patent Examining Procedure § 323.01 (9th ed., rev. July 2022) [hereinafter MPEP]. The best you can do is to remove USPTO links and references to the recorded assignment document.
When an assignment document is recorded with the USPTO, the Patent Assignment Search portal–and in the future, Patent Center–is updated to identify the recorded assignment document, and thus link the recorded assignment document to the patent application file records. This identification and linking includes details of the assignor, assignee, and the reel/frame number indicating how to access the recorded assignment document. The application number or the reel/frame number can be used to access the recorded assignment document. If the recorded assignment document contains sensitive information, the link enables anyone to locate, access, and exploit this information.
The best option to protect and limit public access to sensitive information in a recorded assignment document is to request that the USPTO remove the information and links in the application file records that identify the recorded assignment document. To initiate the removal process, a petition must be filed under 37 C.F.R. § 1.182 (2022). The petition seeks to invalidate the recorded assignment document and requests expungement of links between the application file records and the recorded assignment document. Petitions under 37 C.F.R. § 1.182 (2022) require the USPTO fee set forth in 37 C.F.R. § 1.17(f) (2022).
The petition should include details as to what sensitive information is included in the recorded assignment document and why the recorded assignment document should be invalidated. For example, indicate that the recorded assignment document includes social security numbers of the inventors. It can be helpful to state that the expungement would protect the inventor’s or company’s privacy. Do not include the reel/frame number of the recorded assignment document that includes the sensitive information. Otherwise, the petition–which becomes a public record–will itself identify where to find the sensitive information and a subsequent petition to expunge the petition document would be needed.
Remember to be clear that the petition under 37 C.F.R. § 1.182 is requesting expungement of the links between the application file records and the recorded assignment document. Requesting explicit expungement of the recorded assignment document is likely to result in a denied petition.
The granting of the petition cannot affect the integrity of the assignment records. See MPEP § 323.01(d). Therefore, prior to filing the petition, a new assignment document that replaces the originally recorded assignment document must be recorded. Recording a copy of the original assignment document in which the sensitive information is redacted should satisfy this requirement. Be sure to indicate in the petition that this “new” assignment document has been recorded, along with its reel/frame number. Recording a redacted copy of the original assignment document prior to filing the petition ensures that there is no disruption in the notice provision under 35 U.S.C. § 261.
A granted petition under 37 C.F.R. § 1.182 will remove the links between the application file records and the recorded assignment document. Thus, the public will not be able to identify or locate the originally recorded assignment document through Patent Center or the Patent Assignment Search portal using the application number or patent number.
Unfortunately, the recorded assignment document will still be accessible to members of the public who can provide its reel/frame number. Thus, if a person obtained the reel/frame number of the recorded assignment document prior to expungement of the links between the application file records and the recorded assignment document, then that person can access the recorded assignment document.
Other filed documents accessible through Patent Center may also contain the reel/frame number of the recorded assignment document. For example, filing a Statement Under 37 C.F.R. § 3.73(c)–e.g., to change the applicant or change the power of attorney–shows the chain of title from the inventor to the current assignee. This chain of title is generally identified by the reel/frame numbers of the recorded assignment documents. If the reel/frame number of the recorded assignment document that includes sensitive information is identified in such a statement, then the public can obtain the reel/frame number and access the recorded assignment document.
If there are documents in the application file records that identify the reel/frame number of the recorded assignment document that includes the sensitive information, then a petition under 37 C.F.R. § 1.59 (2022) can be used to expunge those documents. This petition is different from the petition to remove the links in the application file records under 37 C.F.R. § 1.182, but it should include similar details. Likewise, a redacted version of the document being requested for expungement should be filed with or prior to the filing of the petition. Petitions under 37 C.F.R. § 1.59 require the USPTO fee set forth in 37 C.F.R. § 1.17(g) (2022).
When it comes to sensitive inventor or company information in assignment documents, care should be taken to not make such information publicly available through an uninformed assignment document recordation. If sensitive information is recorded in an assignment document, then it is possible to expunge links between the application file records and the recorded assignment document by filing a petition under 37 C.F.R. § 1.182 and to expunge other documents in the application file record that identify the recorded assignment document by filing a petition under 37 C.F.R. § 1.59.
Unfortunately, the recorded assignment document is still accessible to the public using the reel/frame number. But expungement of the links and other documents identifying the recorded assignment document can help separate the public from the sensitive information.
Although petitioning the USPTO to expunge links or documents from the application file record takes time and is costly, in many instances it is worth the effort to protect inventor and company privacy.
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Karl Hefter's practice focuses on U.S. patent prosecution of computer engineering and computer software matters. His expertise includes drafting and prosecuting utility and design patents in the United States. Karl has drafted and prosecuted patents in many different technical fields, including distributed systems and cloud computing, audiovisual content distribution and set-top boxes, automobile head units, smart signs, video encoding, wireless power systems, social networks, online content management and delivery, image processing, noise reduction/cancellation, drone technology, networks, telecommunications, email systems, video games, and other software/hardware related technologies.
Karl is admitted to the state bars of Washington and Colorado, and is registered to practice before the U.S. Patent and Trademark Office. He is a member of the Washington State Patent Law Association (WSPLA).
Learn more about Karl Hefter.
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