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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

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 without an executed oath or declaration.

• Correction of inventorship may be requested under 37 CFR 1.48 or may be obtained by filing a continuing application under 37 CFR 1.53.
  
  

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.

» 602.02 New Oath or Substitute for Original