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602.01(c) Correction of Inventorship, Name of Inventor, and Order of Names in an Application

MPEP SECTION SUMMARY This section covers details concerning the correction of inventorship, name of inventor, and order of names in applications filed before and on or after September 16, 2012. Additionally, it discusses requests for correction of inventorship under 37 C.F.R. 1.48 and the correction of inventorship by filing a continuing application.

I.   NAMING INVENTORSHIP

 A.   Applications Filed on or After September 16, 2012

The inventorship of a nonprovisional application under 35 U.S.C. 111(a) is the inventor or joint inventors set forth in the application data sheet filed before or concurrently with the inventor’s oath or declaration.

• If the application data sheet is not filed before or concurrently with the inventor’s oath or declaration, the inventorship is the inventor or joint inventors set forth in the inventor’s oath or declaration (except as otherwise provided in 37 CFR 1.41(b)).
  
• Once an application data sheet or the inventor’s oath or declaration is filed in a nonprovisional application, any correction of inventorship must be pursuant to 37 CFR 1.48(a).
  

The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet.

• Once a cover sheet is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48.

 B.   Applications Filed Before September 16, 2012

Pre-AIA defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as otherwise provided.

• For applications filed prior to September 16, 2012, where the first-filed executed oath or declaration sets forth an inventive entity which is different from the inventive entity initially set forth at the time of filing of the application, the actual inventorship of the application will be taken from the executed oath or declaration.
• The inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet.

II.   REQUESTS FOR CORRECTION OF INVENTORSHIP UNDER 37 CFR 1.48

37 CFR 1.48 does not apply to reissue applications, whether correcting an inventorship error in the patent to be reissued or in the reissue application itself.

A request under 37 CFR 1.48 will not be required:

• Where an application is to issue with the correct inventorship based on the allowed claims even though the application may have been filed with an incorrect inventorship based on the claims as originally submitted; and
• Where a court has issued an order under 35 U.S.C. 256 for correction of the inventorship of a patent.

III.   CORRECTION OF INVENTORSHIP BY FILING CONTINUING APPLICATION

Correction of inventorship may also be obtained by the filing of a continuing application without the need for filing a request under 37 CFR 1.48.

A continuing application may claim the benefit of the filing date of a copending, previously filed, parent application provided there is inventorship overlap between the continuing application and the parent application.

• However, refiling to change inventorship could result in the loss of a benefit claim if there is no overlap in inventorship between the two applications.
• Note that a correction of inventorship may result in the loss of power of attorney.

For applications filed on or after September 16, 2012, if the power of attorney was granted by the originally named inventive entity, and an added inventor pursuant to 37 CFR 1.48 does not provide a power of attorney consistent with the power of attorney granted by the originally named inventive entity, the addition of the inventor results in the loss of that power of attorney upon grant of the 37 CFR 1.48 request.

For applications filed on or after September 16, 2012, the inventorship in the continuing application is the inventor or joint inventors specified in the ADS filed before or with the copy of the inventor’s oath or declaration from the earlier-filed application.

• If an ADS is not filed before or with the copy of the inventor’s oath or declaration, then the inventorship is the inventorship in the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a signed statement, stating the name of each inventor in the continuing application.
• Any new joint inventor named in the continuing application must execute an inventor’s oath or declaration, except as provided for in 37 CFR 1.64.
  
  

MPEP SECTION SUMMARY  This section covers the correction of inventorship in an application when the request is filed on or after September 16, 2012. It discusses four sections of 37 C.F.R. 1.48; a, b, c, and d. 37 C.F.R. 1.48(a) provides for an applicant to submit a request for correction of inventorship in a nonprovisional application. 37 C.F.R. 1.48(b) provides that an inventor may be added by submitting an oath or declaration or a substitute statement. 37 C.F.R. 1.48(c) provides that the proper fee is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application. 37 C.F.R. 1.48(d) provides for correcting inventorship in provisional applications.

 

A request filed on or after September 16, 2012 under 37 CFR 1.48 (a) or (d) will generally correct the inventorship in the application in which it is filed.

The ADS must identify information being changed with underlining and strike-through or brackets, as appropriate.

I.   37 CFR 1.48(a) - Nonprovisional Application

Under 37 CFR 1.48(a), an applicant may submit a request for correction of inventorship in a nonprovisional patent application once the inventorship has been established.

• A request to correct the inventorship filed under 37 CFR 1.48(a) should identify the inventorship change and must be accompanied by a signed application data sheet (ADS) including the legal name, residence, and mailing address of the inventor or each actual joint inventor and the processing fee.

37 CFR 1.48(a) enables an applicant to correct inventorship where an application sets forth improper inventorship as well as where the prosecution of an application results in the need to add or delete one or more inventors (e.g., due to the addition or deletion of claims or an amendment to the claims).

II.   37 CFR 1.48(b) – Inventor’s Oath or Declaration for Added Inventor

37 CFR 1.48(b) provides that an oath or declaration or a substitute statement will be required for any actual inventor who has not yet executed such an oath or declaration.

For applications filed on or after September 16, 2012, the oath or declaration required by 37 CFR 1.48(b) must comply with 37 CFR 1.63 in effect for applications filed on or after September 16, 2012.

• A substitute statement in compliance with 37 CFR 1.64 is only available for applications filed on or after September 16, 2012.

For applications filed before September 16, 2012, the oath or declaration required by 37 CFR 1.48(b) for an added inventor must comply with pre-AIA 37 CFR 1.63 which remains in effect for applications filed before September 16, 2012.

III.   37 CFR 1.48(c) – Request filed after Office Action on the Merits

37 CFR 1.48(c) provides that the proper fee is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application.

• However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.

IV.   37 CFR 1.48(d) – Provisional Application

37 CFR 1.48(d) provides for correcting inventorship in provisional applications.

• Under 37 CFR 1.41(c), the inventorship of a provisional application is the inventor or joint inventors set forth in the cover sheet.
• Once a cover sheet is filed in a provisional application, any correction of inventorship must be pursuant to 37 CFR 1.48.
• If a cover sheet is not filed during the pendency of a provisional application, the inventorship is the inventor or joint inventors set forth in the application papers filed, unless the applicant files a paper, including the processing fee, supplying the name or names of the inventor or joint inventors.

37 CFR 1.48(d) provides a procedure for adding or deleting or correcting or updating the name of an inventor in a provisional application.

37 CFR 1.48(d) requires that the submission include:

• a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by his or her legal name; and
• the fee set forth in 37 CFR 1.17(q).

For provisional applications, it may not be necessary to correct the inventorship under 37 CFR 1.48 (d) unless there would be no overlap of inventors upon the filing of the nonprovisional application with the correct inventorship.

• The need to correct the inventorship in any U.S. nonprovisional or provisional application may in part be dependent upon whether a foreign filing under the Paris Convention will occur subsequent to the U.S. filing.

When an inventor is being added, applicants should file a corrected ADS or new cover sheet providing the residence of all inventors.

MPEP SECTION SUMMARY  This section covers correcting or updating an inventor's name using 37 C.F.R. 1.48(f) in requests filed on or after September 16, 2012.

 

The change in the order of the names of inventors in a provisional application is not provided for since provisional applications do not become application publications or patents.

As of September 16, 2012, it is no longer necessary to have distinct procedures for correction of inventorship and for correction to the name of an inventor or to the order of the names of the inventors.

37 CFR 1.48(f) permits an applicant to change or update a particular inventor’s name if his/her legal name has changed (e.g., due to marriage), or an inventor’s name contains an error (e.g., typographical or transliteration mistake or the reversal of family or given names) and allows an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent).

37 CFR 1.48(f) specifically provides that any request to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors, in a nonprovisional application must include:

• an application data sheet that identifies each inventor by his or her legal name in the desired order; and
• the processing fee.

In addition to the corrected application data sheet, the request should also identify the desired inventor name change.

MPEP SECTION SUMMARY  This section covers the correction of inventorship in an application when the request is filed prior to September 16, 2012. It discusses general information and applications filed under 37 C.F.R. 1.53(f) with no oath or declaration. In addition, it provides an extensive discussion of pre-AIA 37 C.F.R. 1.48 (a), (b), (c), (d), (e), and (f).

I.   GENERAL INFORMATION

Requests under 37 CFR 1.48 filed before September 16, 2012 are governed by the provisions of 37 CFR 1.48 in effect prior to September 16, 2012 (pre-AIA 37 CFR 1.48).

• However, for applications filed prior to September 16, 2012, where a 37 CFR 1.48 request is filed on or after September 16, 2012, the provisions of 37 CFR 1.48 in effect as of September 16, 2012 apply because it is the date of the request for correction that controls which version of the rule is applicable.
• If a request to correct inventorship filed before September 16, 2012 is deficient, any new request to correct the inventorship must comply with 37 CFR 1.48 as revised effective September 16, 2012.

The following gives an overview of Pre-AIA 37 CFR 1.48:

• Pre-AIA 37 CFR 1.48(a) is directed at correcting the inventorship in an application where the inventorship was improperly set forth in the executed oath or declaration filed in the application.
• Pre-AIA 37 CFR 1.48(b) is directed at correcting the inventorship where the executed oath or declaration had correctly set forth the inventorship but due to prosecution of the application, e.g., claim cancellation or amendment, fewer than all of the currently named inventors are the actual inventors of the remaining claims.
• Pre-AIA 37 CFR 1.48(c) is directed at correcting the inventorship where the executed oath or declaration had correctly set forth the inventorship but due to amendment of the claims to include previously unclaimed but disclosed subject matter, one or more inventors of the amended subject matter must be added to the current inventorship.
• Pre-AIA 37 CFR 1.48(d) is directed at provisional applications where an inventor is to be added.
• Pre-AIA 37 CFR 1.48(e) is directed at provisional applications where an inventor is to be deleted.
• Pre-AIA 37 CFR 1.48(f) operates to automatically correct the inventorship upon filing of a first executed oath or declaration under pre-AIA 37 CFR 1.63 by any of the inventors in a nonprovisional application or upon filing of a cover sheet in a provisional application.

II.   APPLICATIONS FILED UNDER 37 CFR 1.53(f) - NO OATH/DECLARATION

The Office will issue a filing receipt listing the inventors identified at the time of filing of the application even if the application was filed under 37 CFR 1.53(f) without an executed oath or declaration.

• A request under 37 CFR 1.48(a), (b), or (c) will not be necessary.

Where the first-filed executed oath or declaration was submitted prior to December 1, 1997 in an application filed without an executed oath or declaration, if the inventive entity identified on the executed oath or declaration differs from the inventive entity identified at the time of filing of the application, a request under 37 CFR 1.48(a) or (c) must also be submitted.

 

III.   37 CFR 1.48(a)

Under pre-AIA 37 CFR 1.48(a), if the correct inventor or inventors are not named in an executed oath or declaration under pre-AIA 37 CFR 1.63 in a nonprovisional application for patent, the application can be amended to name only the actual inventor or inventors so long as the error in the naming of the inventor or inventors occurred without any deceptive intention on the part of the person named as an inventor in error or the person who through error was not named as an inventor.

Pre-AIA 37 CFR 1.48(a) requires that the amendment be accompanied by:

• a request to correct the inventorship that sets forth the desired inventorship change;
• a statement from each person being added and from each person being deleted as an inventor that the error occurred without deceptive intention on his or her part;
• an oath or declaration by each actual inventor or inventors
• the fee; and
• the written consent of any existing assignee, if any of the originally named inventors has executed an assignment.

Correction may be requested in cases where the person originally named as inventor was in fact not an inventor or the sole inventor of the subject matter being claimed.

If such error occurred without any deceptive intention on the part of the inventor named and/or not named in error, the Office has the authority to substitute the true inventive entity for the erroneously named inventive entity.

• Instances where corrections can be made include changes from: a mistaken sole inventor to a different but actual sole inventor; a mistakenly identified sole inventor to different, but actual, joint inventors; a sole inventor to joint inventors to include the original sole inventor; erroneously identified joint inventors to different but actual joint inventors; erroneously identified joint inventors to a different, but actual, sole inventor.

A.   Statement of Lack of Deceptive Intention

Where a similar inventorship error has occurred in more than one application for which correction is requested wherein petitioner seeks to rely on identical statements, only one original set need be supplied if copies are submitted in all other applications with a reference to the application containing the originals.

• The statement required from each inventor being added or deleted may simply state that the inventorship error occurred without deceptive intention.
• The statement need not be a verified statement.

Note that if a request to correct inventorship filed before September 16, 2012 is deficient, any new request to correct the inventorship must comply with 37 CFR 1.48 as revised effective September 16, 2012.

• Requests under 37 CFR 1.48 filed on or after September 16, 2012 do not require a “lack of deceptive intention” statement.

B.   Oath or Declaration

An oath or declaration under pre-AIA 37 CFR 1.63 by each actual inventor must be presented.

• While each inventor need not execute the same oath or declaration, each oath or declaration executed by an inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity.
• Where individual declarations are executed, they must be submitted as individual declarations rather than combined into one declaration.

Where an application is filed with an executed declaration under 37 CFR 1.63 naming an inventive entity that is in conflict with another paper filed in the application, such as the transmittal letter, the executed declaration will govern.

• However, where an executed declaration is never submitted and the application papers are in conflict as to the inventorship, each party identified as an inventor on filing will be considered to have been named as part of the inventive entity.

Applications filed with a petition under pre-AIA 37 CFR 1.47 and a request under pre-AIA 37 CFR 1.48(a) will be forwarded to the Office of Petitions, after mailing the filing receipt by the Office of Patent Application Processing (OPAP), for consideration of the petition and the request.

• In those instances wherein a request under pre-AIA 37 CFR 1.48(a) and a petition under pre-AIA 37 CFR 1.47 have both been filed in an application, the Office of Petitions may first issue a decision on the request under 37 CFR 1.48(a) so as to determine the appropriate oath or declaration under pre-AIA 37 CFR 1.63 required for the petition under pre-AIA 37 CFR 1.47.

The oath or declaration submitted subsequent to the filing date of an application filed under 37 CFR 1.53(b) must clearly identify the previously filed specification it is intended to execute.

C.   Fee

Where waiver under 37 CFR 1.183 is requested in relation to a requirement under pre-AIA 37 CFR 1.48(a), a processing fee and a petition fee are required.

• Similarly, where in addition to a request under 37 CFR 1.48, two petitions under 37 CFR 1.183 are presented, e.g., one requesting waiver of a requirement under pre-AIA 37 CFR 1.48 and the other requesting waiver of the reexecution of an oath or declaration under pre-AIA 37 CFR 1.64, three fees are required (one for the request filed under 37 CFR 1.48 and two for the petitions filed under 37 CFR 1.183).
• Where a similar error has occurred in more than one application a separate processing fee must be submitted in each application in which correction is requested.
• If the processing fee has not been submitted or authorized the request will be dismissed.

D.   Written Consent of Assignee

The written consent of every existing assignee of the original named inventors must be submitted.

• Pre-AIA 37 CFR 1.48(a) does not limit assignees to those who are recorded in the U.S. Patent and Trademark Office records.

Where no assignee exists requester should affirmatively state that fact.

• If the file record including the request is silent as to the existence of an assignee it will be presumed that no assignee exists.

The individual signing on behalf of the assignee giving its consent to the requested inventorship correction, should specifically state that he or she has the authority to act on behalf of the assignee.

• In the absence of such a statement, the consent will be accepted if it is signed by an appropriate official of the assignee (e.g., president, vice president, secretary, treasurer, or derivative thereof) if the official’s title has been made of record.
• A general statement of authority to act for the assignee, or on the specific matter of consent, or the appropriate title of the party signing on behalf of the assignee should be made of record in the consent.
• However, if it appears in another paper of record, e.g., small entity assertion, it is also acceptable.

E.   Continuing Applications

35 U.S.C. 120 permits a continuing application to claim the benefit of the filing date of a copending, previously filed, parent application provided there is inventorship overlap between the continuing application and the parent application.

• If the inventive entity of a continuing application includes an inventor named in the parent application, the inventorship overlap required by 35 U.S.C. 120 is met.
  
  

On filing a continuing application it should not be assumed that an error in inventorship made in a parent application was in fact corrected therein in response to a request under pre-AIA 37 CFR 1.48(a) unless a decision from the U.S. Patent and Trademark Office to that effect was received by the requester.

• A continuing application naming the additional inventor can be filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) with a newly executed oath or declaration by the new inventive entity along with a request for benefit under 35 U.S.C. 120 without the need for a decision on the request under pre-AIA 37 CFR 1.48 filed in the parent application.

Should an error in inventorship in a parent application be discovered, whether it is the need to add and/or to delete inventors, when preparing to file a continuing application, the continuing application may be filed under 37 CFR 1.53(b) with the correct inventive entity without the need for a request under pre-AIA 37 CFR 1.48(a) in the parent or continuing application provided the parent application is to be abandoned on filing of the continuing application.

• In filing a continuation or divisional application, a copy of an oath or declaration from the prior application can only be used where inventors are to be deleted, but not where inventors are to be added. Where inventors are to be added, a newly executed oath or declaration must be submitted.

In a continued prosecution application (CPA), a request under pre-AIA 37 CFR 1.48(a) or (c) to add an inventor to a parent application that was not acted on (e.g., filed after final rejection) will be automatically considered in the CPA.

• Until the request is granted, the inventorship remains the same as the prior application.
• Note, however, that effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications.
• If the application is a design application, after discovery of an inventorship error, the application can also be refiled under 37 CFR 1.53(d)(4) as a CPA where inventors are only to be deleted.

In filing a continuing application to correct the inventorship, it is important to recognize that 37 CFR 1.78 requires for purposes of claiming the benefit of the prior application that the prior application must have had the filing fee paid within the proper period so as to establish copendency.

• The basic filing fee must be paid within the pendency of a nonprovisional application in order to permit benefit of the application to be claimed in a subsequent nonprovisional or international application.

Should a continuation or divisional application be filed where a copy of the oath or declaration from the prior application is utilized (or under 37 CFR 1.53(d) as a CPA if the prior application is a design application) purporting to add an inventor, the inventorship of the prior application will be retained in the continuing application as addition of an inventor is not permitted in these instances.

• The absence of a request to correct the inventorship submitted with the continuing application will not affect the filing date of the continuing application. 
• However, the retained inventorship must then be corrected by the filing of a request under pre-AIA 37 CFR 1.48(a) in the continuation or divisional application stating that the error in failing to name the additional inventor in the prior application was without deceptive intention.
• Where an inventor is to be added, it is recommended that a continuation or divisional application be filed with a newly executed oath or declaration and not be filed with a copy of the oath or declaration from the prior application.
• This procedure eliminates the need for a request under pre-AIA 37 CFR 1.48.

An inventorship error discovered while prosecuting a continuing application that occurred in both an abandoned parent application and the continuing application can be corrected in both applications by filing a single request in the continuing application (e.g., A + B named in parent, B + C named in continuing application, actual inventorship is C + D thereby eliminating inventorship overlap and resulting loss of benefit claim under 35 U.S.C. 120 if the error is not corrected in abandoned parent application as well as in continuation application).

• Absent such loss of inventorship overlap, correction need not be made in the abandoned application.

IV.   Pre-AIA 37 CFR 1.48(b)

Pre-AIA 37 CFR 1.48(b) provides for deleting the names of persons originally properly included as inventors, but whose invention is no longer being claimed in a nonprovisional application.

• Such a situation would arise where claims have been amended or deleted during prosecution because they are unpatentable or as a result of a requirement for restriction of the application to one invention, or for other reasons.
  
  

A request under pre-AIA 37 CFR 1.48(b) to delete an inventor would be appropriate prior to an action by the TC where it is decided not to pursue particular aspects of an invention attributable to some of the original named inventors.

Pre-AIA 37 CFR 1.48(b) requires that the amendment be accompanied by:

• a request including a statement identifying each named inventor who is being deleted and acknowledging that the inventor’s invention is no longer being claimed in the application; and
• a fee.

The statement may be signed by applicant’s registered attorney or agent who then takes full responsibility for ensuring that the inventor is not being improperly deleted from the application.

• Written consent of any assignee is not required for requests filed under 37 CFR 1.48(b).

V.   Pre-AIA 37 CFR 1.48(c)

Pre-AIA 37 CFR 1.48(c) provides for the situation where a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application when an executed declaration under pre-AIA 37 CFR 1.63 was first filed.

• In such a situation, the nonprovisional application may be amended pursuant to pre-AIA 37 CFR 1.48(c) to add claims directed to the originally unclaimed but disclosed subject matter and also to name the correct inventors for the application based on the newly added claims.
• Any claims added to the application must be supported by the disclosure as filed and cannot add new matter.
  
  

Pre-AIA 37 CFR 1.48(c) requires that the amendment must be accompanied by:

• a request to correct the inventorship that sets forth the desired inventorship change;
• a statement from each person being added as an inventor that the amendment is necessitated by an amendment to the claims and that the inventorship error occurred without deceptive intention on his or her part;
• an oath or declaration by each actual inventor;
• the fee; and
• the written consent of any assignee of the original named inventors.

VI.   Pre-AIA 37 CFR 1.48(d)

Pre-AIA 37 CFR 1.48(d) provides a procedure for adding the name of an inventor in a provisional application, where the name was originally omitted without deceptive intent.

Pre-AIA 37 CFR 1.48(d) requires that the amendment be accompanied by:

• a request to correct the inventorship that sets forth the desired inventorship change;
• a statement that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and
• the fee.

The statement of lack of deceptive intent may be included in the request and may be signed by a registered attorney or agent.

• A statement of lack of deceptive intent is not required from any of the original or to be added inventors.

VII.   Pre-AIA 37 CFR 1.48(e)

Pre-AIA 37 CFR 1.48(e) provides a procedure for deleting the name of a person who was erroneously named as an inventor in a provisional application.

Pre-AIA 37 CFR 1.48(e) requires that the amendment be accompanied by:

• a request to correct the inventorship that sets forth the desired inventorship change;
• a statement of lack of deceptive intent by the person whose name is being deleted establishing that the error occurred without deceptive intention on his or her part;
• the fee; and
• the written consent of any assignee.

Under 35 U.S.C. 119(e), a later filed nonprovisional application that is filed within twelve months of an earlier provisional application may claim benefits based on the earlier filed provisional application so long as both applications have at least one inventor in common.

• An error in not naming or in naming a person as an inventor in a provisional application would not require correction under either pre-AIA 37 CFR 1.48(d) (to add an inventor) or pre-AIA 37 CFR 1.48(e) (to delete an inventor) in the provisional application so long as the nonprovisional application naming the correct inventorship would contain an overlap of at least one inventor with the provisional application.

The existence of inventorship overlap would prevent the original inventorship error from having any effect upon the ability of the provisional application to serve as a basis for a benefit claim under 35 U.S.C. 119(e) with the U.S. Patent and Trademark Office.

• If, however, applicant chooses to correct the inventive entity of a provisional application, for example, to permit the provisional application to serve as the basis of a priority claim in a foreign country, pre-AIA 37 CFR 1.48(d) and (e) set forth the procedures for adding one or more actual inventors and for deleting one or more erroneously named inventors respectively.

In the situation where an inventor was not named in a provisional application and an inventor was also erroneously named in the same provisional application and correction is desired, a request under pre-AIA 37 CFR 1.48(d) and a request under pre-AIA 37 CFR 1.48(e) would be required.

Where an inventorship error in a provisional application is desired to be corrected after expiration of twelve months from the filing date of the provisional application, a request under 37 CFR 1.48(d) and/or 37 CFR 1.48(e) may still be filed with OIPE, which handles requests under pre-AIA 37 CFR 1.48(d) and (e), to correct the inventorship in provisional applications.

VIII.   Pre-AIA 37 CFR 1.48(f)

Pre-AIA 37 CFR 1.48(f)(1) and (f)(2) will act to automatically correct an earlier identification of inventorship in a nonprovisional application by the filing of an initial executed oath or declaration and in a provisional application by the filing of an initial cover sheet.

• A request and fee is not required for the inventorship correction to occur.
  
  

The provision in pre-AIA 37 CFR 1.48(f)(1) for changing the inventorship only applies if an executed oath or declaration has not been submitted by any of the inventors.

• In this situation, the submission of an executed oath or declaration by any of the inventors is sufficient to correct an earlier identification of inventorship.

A first-filed oath or declaration executed by less than all of the inventors initially identified will, under pre-AIA 37 CFR 1.48(f)(1), determine the inventorship in the application.

• Any subsequent oath or declaration filed by a different inventive entity will not be effective under pre-AIA 37 CFR 1.48(f)(1) to correct the inventorship that was specified in the first-filed oath or declaration.

Pre-AIA 37 CFR 1.48(f)(1) is not applicable for national stage applications where the inventorship has been erroneously named in the international application.

• Accordingly, if the inventorship set forth in the oath or declaration filed in the national stage application differs from the inventorship specified in the international application, the requirements of 37 CFR 1.497(d) must be satisfied.

 

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